Belk Stores Services, Inc. v.
Belks Media
Claim Number: FA0808001222121
PARTIES
Complainant is Belk Stores Services, Inc. (“Complainant”), represented by Brian
M. Davis, of Alston & Bird, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <belks.com>, registered with Onlinenic,
Inc.
PANEL
The undersigned certify that they have acted independently and impartially
and to the best of their knowledge have no known conflict in serving as
Panelists in this proceeding.
Chair Richard DiSalle, Mark McCormick, and Sandra J. Franklin, as
Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 26, 2008; the
National Arbitration Forum received a hard copy of the Complaint on September 2, 2008.
On September 23, 2008, Onlinenic, Inc. confirmed by e-mail to the
National Arbitration Forum that the <belks.com> domain name is registered
with Onlinenic, Inc. and that the
Respondent is the current registrant of the name. Onlinenic,
Inc. has verified that Respondent is bound by the Onlinenic, 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 September 23, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 14, 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@belks.com by e-mail.
A Response was received on October 14,
2008. It was determined to be
deficient pursuant to ICANN Rule 5 because it was received only in electronic
form.
On October 22, 2008, pursuant to Complainant’s
request to have the dispute decided by a
three-member Panel, the National
Arbitration Forum appointed
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Belk
Stores Services, Inc. is a corporation duly organized and existing under the
laws of the State of
Complainant (through its licensee, Belk, Inc. and/or
its predecessors-in-interest) has offered retail store services in the
The services of Belk, Inc. have been and are being advertised and promoted extensively under the BELK mark and trade name in various forms of media, including the Internet. Complainant also owns the <belk.com> domain name. The <belk.com> domain name is used to direct users to Complainant’s website. This website is an important part of Complainant’s marketing program and is used to promote and sell the goods and services offered under the BELK mark.
Although Complainant’s mark and trade name is BELK, Complainant is often referred to by the consuming public as “Belk’s” or “Belks”. Respondent is using the subject domain name to direct individuals seeking Complainant’s website to a website that resolves from the domain name <belks.com>. This website provides links to numerous third-party websites that purport to offer a variety of goods and services through links to third-parties identified by such terms as “Womens [sic] Clothing,” “Shoes,” etc. These links take the users to the websites of some of Belk’s competitors. This website is not affiliated with or sponsored by Belk.
The accused domain name is strikingly similar to Complainant’s mark. In fact, it is identical to Complainant’s mark except that it contains the additional letter “s” and therefore reflects a common misspelling or mispronunciation of the BELK mark.
Although Respondent registered the subject domain name under the name Belks Media, Respondent has no apparent preexisting rights in “Belks” as a trademark or service mark. Further, no website promoting “Belks Media” has been accessible through the subject domain name since its registration over six years ago, and an Internet investigation did not locate any references to “Belks Media.” The subject domain name is being “used” inasmuch as an active website is accessible via the domain name. The evidence also indicates that Respondent did not register the subject domain name until April 10, 2002, over a hundred years after Complainant’s BELK mark had acquired its fame.
B. Respondent
The domain name is not identical or
confusingly similar to a trademark or service mark in
which the Complainant has rights.
In accordance with Complainant’s allegation that
"BELK" is a trademark, is not a generic word, therefore the trademark
“BELK” with suffix “S”, that is, “BELKS” has no clear meaning, BELKS is
different than BELK and easy to distinguish.
Respondent has rights or legitimate interests in
respect of the domain name. “BELKS is
the business name of Respondent which is organized and existing under the laws
of the Hong Kong Special Special Administrative Region of the People's Republic
of
The domain name has been registered and is being
used in good faith. In terms of
registration in bad faith, Respondent was not aware of such a company and its trademark until
receiving Complaint, so the registration of the domain name was not
intentional.
Respondent has not acted in selling or renting this
domain name. Complainant’s business has
been reflected very well through use of the <belk.com> domain
name. Respondent’s domain name did not
infringe Complainant’s trademark rights.
FINDINGS
(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.
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.
The Response was not received in hard copy prior to the Response deadline. Therefore it was deficient pursuant to ICANN Rule 5. The Panel has decided to consider the deficient Response. See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Feb. 28, 2007) (deciding to consider the Respondent’s response even though it was deficient because it provided useful information to the panel in making its decision); see also Mattel, Inc. v. Yoon, FA 967843 (Nat. Arb. Forum June 4, 2007) (deciding to consider a deficient response because of the need to resolve the dispute between the parties, and because ruling the response inadmissible due to formal deficiencies would not be consistent with the basic foundations of due process).
The Panel finds that pursuant to Policy ¶ 4(a)(i) Complainant has sufficiently
established rights in the BELK mark through registration of the mark with the
United States Patent and Trademark Office (“USPTO”) for retail department store
services (Reg. No. 876,226 issued Sept. 2, 1969). See SDC Media, Inc. v. SCMedia, FA
960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark
registration [with the USPTO] establishes Complainant’s rights in the mark
pursuant to Policy ¶ 4(a)(i).”); see also
Koninklijke KPN N.V. v. Telepathy
Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not
require that the mark be registered in the country in which the Respondent
operates; therefore it is sufficient that the Complainant can demonstrate a
mark in some jurisdiction).
The disputed domain name contains Complainant’s
BELK mark in its entirety followed by the letter “s” and the generic top-level
(“gTLD”) “.com.” Such a minor difference
as the addition of one letter does not serve to distinguish the disputed domain
name. Moreover, the inclusion of a gTLD
is typically not considered in a Policy ¶ 4(a)(i)
analysis. Therefore, the Panel finds
that the <belks.com> domain name is
confusingly similar to Complainant’s BELK mark pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive).
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then
the burden shifts to Respondent to show it does have rights or legitimate
interests. See Hanna-Barbera Prods., Inc. v. Entm’t
Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the Complainant must
first make a prima facie case that the Respondent lacks rights and
legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. Once Complainant satisfies its burden, then
the burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Although Respondent has registered the <belks.com>
domain name under the name “Belks Media,” it has not demonstrated any
rights to a “Belks” or “Belks Media” mark.
Further, at no time has the <belks.com> domain name
resolved to a web page promoting or otherwise providing
information about a “belks” or “belks media” mark or business. Moreover, although Respondent states its
“Belks Media” business began operations in 2005, Respondent admits that the
disputed domain name was registered in 2002.
Accordingly, Respondent could not have been commonly known by the “Belks
Media” name until after it registered the disputed domain name. Additionally, although Respondent contends
that it is a business operating under the name “belks” or “Belks Media,” it has
provided no evidence of this business.
Respondent’s allegations are insufficient without any affirmative
evidence and therefore Respondent is not commonly known by the <belks.com>
domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly
known by the domain name prior to registration of the domain name to
prevail"); see also Yoga Works, Inc. v. Arpita, FA
155461 (Nat. Arb. Forum June 17, 2003)
(finding that the respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”).
Complainant states that the disputed domain
name resolves to a website displaying links to various third-parties, many of
whom are direct competitors of Complainant.
The Panel finds that this use alone does not constitute either 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). See Expedia, Inc. v. Compaid, FA
520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of
the <expediate.com> domain name to redirect Internet users to a website
featuring links to travel services that competed with the complainant 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)).
As noted, the disputed domain name resolves to a website that displays a series of links to various third-parties, many of whom offer products and services in direct competition with those offered by Complainant under its BELK mark. The Panel finds that this demonstrates Respondent’s bad faith registration and use of the <belks.com> domain name pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the Complainant and to Complainant’s competitors, as well as by diverting Internet users to several other domain names).
Respondent either
was or should have been aware of Complainant’s rights in the BELK mark, since
Complainant has been operating under the BELK mark for well over one hundred
years. Moreover, the disputed domain
name resolves to a website advertising goods and services substantially similar
to those offered under Complainant’s mark.
The Panel determines that Respondent, with actual knowledge of
Complainant’s rights in the Belk mark, registered and is using the disputed
domain name in order to attempt to profit from the goodwill associated with
Complainant’s mark. This provides further
grounds to find that Respondent is acting in bad faith pursuant to Policy ¶ 4(a)(iii). See
Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”).
DECISION
The Complainant having established all three elements required under
the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <belks.com> domain name be TRANSFERRED
from Respondent to Complainant.
Richard DiSalle, Chair
Mark McCormick, Panelist
Sandra J. Franklin, Panelist
Dated:
November 21, 2008
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