Specialty Merchandise Corp. v.
Claim Number: FA0611000853698
Complainant is Specialty Merchandise Corp. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <worldofproducts.com>, registered with Network Solutions, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 28, 2006.
On November 28, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <worldofproducts.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 29, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 19, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@worldofproducts.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 23, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <worldofproducts.com> domain name is identical to Complainant’s WORLD OF PRODUCTS mark.
2. Respondent does not have any rights or legitimate interests in the <worldofproducts.com> domain name.
3. Respondent registered and used the <worldofproducts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Specialty Merchandise Corp., has continuously used the WORLD OF PRODUCTS mark since 1982 in relation to a mail-order catalog offering various products. Complainant has registered the WORLD OF PRODUCTS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,558,138).
Respondent registered the <worldofproducts.com> domain name on August 31, 1998. The disputed domain name resolves to a website displaying Complainant’s WORLD OF PRODUCTS mark and selling the products of Complainant and its competitors.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant’s trademark registration with the USPTO does not predate Respondent’s domain name registration in 1998. However, the Panel finds Complainant need not hold a valid trademark registration in order to demonstrate its rights in the WORLD OF PRODUCTS mark under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
Through continuous use of the WORLD OF PRODUCTS mark since
1982 in connection with its catalog offering various products, Complainant’s
mark has acquired secondary meaning sufficient for Complainant to establish
common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Quality Custom Cabinetry, Inc. v. Cabinet
Wholesalers, Inc., FA
115349 (Nat. Arb. Forum
Sept. 7, 2002) (finding that the complainant established common law rights in
the mark through continuous use of the mark since 1995 for the purpose of
Policy ¶ 4(a)(i)); see also Fishtech,
Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that
the complainant has common law rights in the mark FISHTECH that it has used
since 1982).
Moreover, Respondent’s <worldofproducts.com> domain name is confusingly similar to Complainant’s WORLD OF PRODUCTS mark because the disputed domain name contains the entire mark and merely eliminates the spaces between terms. The mere elimination of spaces between terms does not sufficiently distinguish the disputed domain name from Complainant’s mark. As a result, the Panel finds the <worldofproducts.com> domain name to be confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Croat. Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark); see also W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant claims that Respondent lacks rights and
legitimate interests in the <worldofproducts.com> domain
name. Complainant must first make a prima
facie case in support of its allegations, and then the burden shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii).
See Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270
(WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the
Complainant prove the presence of this element (along with the other two), once
a Complainant makes out a prima facie showing, the burden of production
on this factor shifts to the Respondent to rebut the showing by providing
concrete evidence that it has rights to or legitimate interests in the Domain
Name.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000) (holding that, where the complainant has asserted that the
respondent has no rights or legitimate interests with respect to the domain
name, it is incumbent on the respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <worldofproducts.com>
domain name. See Am. Online, Inc. v.
AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate
interests where the respondent fails to respond); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “
Moreover, Respondent’s <worldofproducts.com> domain name, which includes Complainant’s WORLD OF PRODUCTS mark, resolves to a website selling Complainant’s products and the products of its competitors. In Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003), the panel found that the respondent’s use of a domain name to divert Internet users to a website selling goods and services similar to the services the complainant offered was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Because Respondent is also operating a website selling competing products, as well as Complainant’s products, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s domain name, which is identical to
Complainant’s WORLD OF PRODUCTS mark, resolves to the website displaying
Complainant’s mark and selling the products of Complainant and its
competitors. In Ticketmaster Corp. v.
DiscoverNet, Inc., D2001-0252 (WIPO Apr. 11, 2001), the
respondent registered the <ticketmaster.net> domain name, which included
the complainant’s TICKETMASTER mark, and was using it to redirect Internet
users to a competing website at the <ticketpro.com> domain name. The panel found that such use constituted bad
faith registration and use, because “[s]uch actions clearly manifest an intent of the [r]espondent to commercially benefit from
the ensuing confusion of Internet users” who enter the disputed domain name
attempting to reach the complainant’s website but are instead directed to the
respondent’s website.
In addition, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii) because Respondent’s redirecting of Internet users to websites competing with Complainant suggests that Respondent is attempting to disrupt Complainant’s business under the WORLD OF PRODUCTS mark. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <worldofproducts.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 3, 2007
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