Mason Companies, Inc. v.
Leroy Chan
Claim Number: FA0807001216166
PARTIES
Complainant is Mason Companies, Inc. (“Complainant”), represented by Andrew
S. Ehard, of Merchant & Gould, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shoemall.biz>, registered with Melbourne It
Ltd.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Joel M. Grossman, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 18, 2008; the
National Arbitration Forum received a hard copy of the Complaint on July 21, 2008.
On July 21, 2008, Melbourne It Ltd confirmed by e-mail to the
National Arbitration Forum that the <shoemall.biz> domain name is
registered with Melbourne It Ltd and that
the Respondent is the current registrant of the name. Melbourne It
Ltd has verified that Respondent is bound by the Melbourne It Ltd 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, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 13, 2008 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@shoemall.biz by e-mail.
A timely Response was received and determined to be complete on August 13, 2008.
A timely Additional Submission was received from Complainant on August
15, 2008.
A timely Additional Submission was received from Respondent on August
21, 2008.
On August 20, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Joel M. Grossman, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
First, Complainant asserts that it has obtained trademark registration
for its SHOEMALL mark, and has been
using the mark in commerce since 1997. Additionally, Complainant asserts that
Respondent’s domain name is identical to, or confusingly similar to its mark,
since the name wholly incorporates the mark, as the top level domain “.biz” is
ignored for purposes of determining confusion. Thus, Complainant asserts that
the domain name is identical to or confusingly similar to a mark in which
Complainant has rights.
Next Complainant asserts that Respondent has no rights or legitimate
interests in the name. Complainant states that Respondent is not commonly known
by the name, and is not using the name for the bona fide offering of goods or services, in that Respondent has
never provided any products or services in connection with the retail sale of
footwear or clothing. In fact, Complainant asserts that Respondent is using the
name to confuse Internet users who are interested in utilizing Complainant’s
services and redirecting them to Respondent’s website which provides links to
Complainant’s competitors. Complainant has not authorized Respondent to use its
mark in any manner.
Finally, Complainant asserts that Respondent registered, and is using
the domain name in bad faith. Complainant contends that Respondent had
constructive, if not actual, notice of the mark since it was a registered
trademark. Moreover, the name is used in bad faith because it redirects
Internet users seeking Complainant’s products to a website featuring links to
Complainant’s competitors, namely other online shoe retailers.
B. Respondent
Respondent does not specifically discuss the issue of whether its name
is identical to or confusingly similar to Complainant’s mark. Respondent states
that it cannot imagine that the term “shoemall” could obtain trademark
registration, given that it is merely descriptive. Respondent appears to be
arguing that because the two words which form the mark are generic, Complainant
cannot protect the mark and Respondent is free to use it. Respondent notes that
during the trademark application process, the examining attorney questioned the
registration of Complainant’s mark because it is descriptive. Respondent also
asserts that its intention is not to redirect Internet users from Complainant’s
site to Respondent’s site. Respondent points out that each site has
comparatively little traffic compared to larger online shoe retailers such as
Zappos.com. Finally, Respondent asserts that it cannot be acting in bad faith
since it was unaware of Complainant’s mark at the time the name was registered,
and its sole purpose was to build a website for Internet users seeking to
purchase shoes.
C. Additional Submissions
In its Additional Submission Complainant points out that Respondent has
not contested Complainant’s assertion that Respondent’s name is identical or
confusingly similar to Complainant’s mark. Further, Complainant points out that
while Respondent mentions that the examining attorney in the USPTO had
questions about registering the mark due to the descriptive nature of the mark,
at the end of the day the examining attorney was overruled and the mark was
registered. Complainant further points out that in its Response, Respondent
does not contest the Complainant’s assertions that Respondent is not commonly
known by the name, Complainant has not licensed Respondent to use its mark, and
that the registration of the mark preceded Respondent’s registration of the
domain name. Complainant asserts that Respondent’s claim of lack of knowledge
of the mark is unavailing, since the trademark registration provides
constructive knowledge to persons such as Respondent, and that the failure to
conduct a trademark search can be viewed as evidence of bad faith. Finally,
Complainant restates its position that the website is being used in bad faith
because it is redirecting Internet users to Respondent’s website, which
contains links to Complainant’s competitors. Complainant points out that in a
survey conducted by Respondent set forth in the Response, Respondent concedes
that in 5 instances an Internet user seeking Complainant’s website was
redirected to Respondent’s site.
In its Additional Submission Respondent directly challenges some of the
points made in Complainant’s Additional Submission. Respondent again asserts
that at the time it registered the name it had never heard of the SHOEMALL
mark. In response to Complainant’s assertion that Respondent had constructive
notice of the mark, Respondent said that such a position must fail, because if
Complainant is correct then “everyone is on constructive notice for any domain
name….” Respondent also points out that although its survey showed five
Internet users who were searching for Complainant’s site but were redirected to
Respondent’s site, this is a very small percentage of the users seeking
Complainant’s site. Respondent contends that the overwhelming number of users
enter a shoe brand name, not Complainant’s mark, as a search term.
FINDINGS
The Panel finds that: (a) the domain name is
identical to, or confusingly similar to a mark in which Complainant has rights;
(b) Respondent has no rights or legitimate interests in the name; and (c) the
name was registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
There is no doubt that the name is identical
to or confusingly similar to Complainant’s mark, since it wholly incorporates
the mark. For purposes of this inquiry, the TLD “.biz” is ignored. See Trip Network Inc. v Alviera, FA
914943 (Nat. Arb. Forum Mar. 27, 2007). The Panel also concludes that
Complainant’s trademark registration of its mark provides ample basis to
conclude that it has rights in the mark.
The Panel finds that Complainant has made a prima facie showing that Respondent lacks
rights or legitimate interests in the name. Thus, the burden shifts to
Respondent to demonstrate that it does have such rights or interests. Complainant
asserts—and Respondent does not contest—that Respondent is not commonly known
by the name and was not licensed by Complainant to use the name. Therefore the
Panel concludes that Respondent is not commonly known by the name. See Braun Corp. v. Loney, FA 699652
(Nat. Arb. Forum July 7, 2006). On the issue of whether Respondent is using the
name to provide a bona fide of goods
or services, the Panel concludes that it is not. Respondent is using the name
to redirect Internet users to its website which has links to Complainant’s
shoe-selling competitors, presumably to earn pay-per-click fees. Such use is
not legitimate. See Royal Bank of Scot.
Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006). See also Bond & Co. Jewelers, Inc. v.
Registering a domain name with knowledge of
an identical or confusingly similar mark is evidence of bad faith registration.
While Respondent argues that it never heard of the mark at the time it
registered the name, such knowledge is imputed when Respondent should have
conducted a reasonable search. The Panel concludes that Respondent had at least
constructive knowledge of Complainant’s mark at the time of the registration of
the name, and therefore registered the name in bad faith. See Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002). Once the name was registered, Respondent
used the name in bad faith, in that the name is identical to Complainant’s mark
and was used to confuse Internet users and redirect them to Respondent’s site,
presumably so that these users would shop at Complainant’s competitor’s
websites and those competitors would pay referral fees to Respondent. Such use
is in bad faith. Respondent admits in its Response that at least 5 confused
Internet users were redirected to its site while searching for Complainant’s
site. There is no minimum number of confused users that is required for a Panel
to conclude that for commercial gain Respondent used an identical or confusingly
similar name to redirect users to its site, and thereby acted in bad faith. See AOL
LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007). Finally, the
Panel does not question Respondent’s assertion that it lacked actual knowledge
of the Complainant’s mark at the time it registered the name. But, Respondent
fails to grasp the significance of the legal concept of constructive knowledge,
and fails to acknowledge that before registering the domain name it had some
obligation to perform a diligent search to determine whether the name might
infringe another’s intellectual property. For all of the foregoing reasons, the
Panel concludes that the name was registered and is being used in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shoemall.biz> domain name be TRANSFERRED
from Respondent to Complainant.
Joel M. Grossman, Panelist
Dated: September 4, 2008
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