Heidi Weisel,
Inc. v. Jerry DeSantis
Claim Number: FA0107000097870
PARTIES
Complainant is Heidi Weisel, Inc., New York, NY, (“Complainant”) represented by Stephen J. Rojas. Respondent is Jerry DeSantis, Cohasset, MA, (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <heidiweisel.com>, registered with Network Solutions, Inc.
PANEL
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 6, 2001; the Forum received a hard copy of the Complaint on July 9, 2001.
On July 10, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <heidiweisel.com> 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. 4.0 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 July 24, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 2001 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@heidiweisel.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On August 16, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant contends that the <heidiweisel.com> domain name is confusingly similar to its HEIDI WEISEL NEW YORK mark. Complainant asserts that Respondent does not have any rights or legitimate interests in the <heidiweisel.com> domain name. Complainant further claims that Respondent's registration and use of the <heidiweisel.com> domain name are in bad faith.
B. Respondent did not submit a response.
The record establishes the following findings:
1. Complainant designs, manufactures, distributes and sells women's apparel and related accessories.
2. Complainant was founded and incorporated in 1990 by Heidi Weisel.
3.
Complainant uses the HEIDI WEISEL NEW YORK mark on its
products and in connection with the promotion of its products and
services.
4.
Complainant filed for a registration of its HEIDI WEISEL NEW
YORK mark with the United States Patent and Trademark Office on August 19, 1999
based on its use in commerce since as early as 1990.
5.
Complainant obtained a registration of its HEIDI WEISEL NEW
YORK mark with the United States Patent and Trademark Office on June 6, 2000,
Registration No. 2,355,312.
6.
Complainant's founder and incorporater, Heidi Weisel, has
built a reputation as a leader in women's designer apparel within the fashion
industry.
7.
Respondent registered the <heidiweisel.com> domain name on September 28, 1999.
8.
Respondent has not made any use of the <heidiweisel.com> domain name since
its registration.
9.
Respondent offered to sell the domain name to Complainant for
various sums, all exceeding the cost of registration of the disputed domain
name.
DISCUSSION
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Complainant has rights;
(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 has
demonstrated it has rights to the HEIDI WEISEL NEW YORK mark through its
continued and extensive use of the mark as well as its intent to obtain a
federal registration of the mark. See SeekAmerica Networks Inc. v. Masood
& Solo Signs, 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. Rights in the mark can be established by pending
trademark applications).
Additionally, Complainant has common law rights
to the HEIDI WEISEL mark because its owner has achieved a reputation such that
her name has developed a secondary meaning within her industry. See Roberts v. Boyd, D2000-0210 (WIPO May
29, 2000) (finding that trademark registration was not necessary and that the
name “Julia Roberts” has sufficient secondary association with the Complainant
that common law trademark rights exist); see
also Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept.
28, 2000) (finding that a “person may acquire such a reputation in his or her
own name as to give rise to trademark rights in that name at common law”).
The <heidiweisel.com> domain name is confusingly similar to Complainant's HEIDI WEISEL NEW YORK mark in that it incorporates the distinguishing features of Complainant's mark. For the purposes of Policy ¶ 4(a)(i), such a contruction of a domain name is confusingly similar. E.g., Maple Leaf Sports & Entertainment Ltd. v. Toronto Maple Leafs!, D2000-1510 (Jan. 24, 2001) (finding that the domain name <leafs.com> is confusingly similar to Complainant’s marks, where Complainant holds many trademarks that contain the term “LEAFS”).
The <heidiweisel.com> domain name is identical to Complainant's founder's HEIDI WEISEL name. It is well established that the addition of a TLD does nothing to defeat a claim that a domain name is identical to a mark. E.g., Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “net” or “com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has shown its entitlement to prevail by satisfying the burden of Policy ¶ 4(a)(i).
Complainant has also established that it has rights to and legitimate interests in the domain name that is contained in its entirety in the domain name in issue. Respondent has failed to submit a response to refute Complainant's allegations that Respondent lacks any rights or legitimate interests in the <heidiweisel.com> domain name. In the absence of a response, the Panel is permitted to make a determination that Respondent lacks rights or legitimate interests based on Complainant's allegations. E.g., Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from Respondent’s failure to reply to the complaint).
Respondent has not made a legitimate use of the <heidiweisel.com> domain name and holding it without making a use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). Nor could Respondent's non-use demonstrate a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Rather, Respondent's passive holding of the disputed domain name creates further evidence that Respondent lacks rights to or legitimate interests in the domain name. See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).
Moreover, Complainant has demonstrated that it has not authorized Respondent to use its mark and that the Respondent could not be known by Complainant's HEIDI WEISEL NEW YORK mark pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
For all the forgoing reasons, the Panel finds that Complainant has made the necessary showing to prevail under Policy ¶ 4(a)(ii).
Respondent offered to transfer the <heidiweisel.com> domain name to Complainant for a valuable consideration well in excess of the out-of-pocket costs directly related to the registration of the disputed domain name. It is well settled that registering and subsequently offering a confusingly similar and/or identical domain name for sale to the mark holder in excess of registration costs demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i). E.g., Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith).
Accordingly, the Panel finds that Complainant made the necessary showing to prevail under Policy ¶ 4(a)(iii).
DECISION
Having established
all three elements under the ICANN Policy, the Panel concludes that the
requested relief should be granted. Accordingly, it is Ordered that the <heidiweisel.com> domain name be
transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 28, 2001.
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