Mason Companies, Inc. v. Monet c/o Shame Sad
Claim Number: FA1004001319688
Complainant is Mason Companies, Inc. (“Complainant”), represented by William
D. Schultz, of Merchant & Gould, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <shoemall.me>, registered with eNom, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on April 16, 2010.
On April 16, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <shoemall.me> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 April 21, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@shoemall.me. Also on April 21, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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:
Complainant holds a trademark
registration for its SHOE MALL mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,605,442, issued August 6, 2002) in connection with
computerized online retail services involving footwear.
Respondent registered the
disputed domain name on February 4, 2009.
Respondent’s <shoemall.me> domain name is substantively identical to Complainant’s SHOEMALL mark.
The disputed domain name resolves to a website featuring information about Complainant’s products, thus tarnishing Complainant’s mark.
Respondent is not commonly known by the disputed domain name, and Respondent has not received permission to use Complainant’s mark.
Respondent does not have any rights to or legitimate interests in the <shoemall.me> domain name.
Respondent’s use of the disputed domain name disrupts Complainant’s business.
Respondent registered and uses the <shoemall.me> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of
the SHOE MALL mark with the USPTO is sufficient evidence of its rights in the
mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <shoemall.me>domain name incorporates the entirety of Complainant’s mark, merely deleting the space between the terms in the mark and adding the Montenegro country-code top-level domain (“ccTLD”) “.me.” These are distinctions without a difference, so that the domain name is substantively identical to Complainant’s mark under Policy ¶ 4(a)(i). This is true in part because spaces between characters are impermissible in domain names. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark in forming a domain name rendered the <gwbakeries.mobi> domain name identical to a complainant’s GW BAKERIES mark); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
Similarly, the addition of a ccTLD to a mark in forming a
domain name is irrelevant to a Policy ¶ 4(a)(i)
analysis. See Europcar
Int’l SA v. New Media Research in
Respondent’s <europcar.ro> domain name is identical to
Complainant’s EUROPCAR mark. Respondent’s domain name incorporates
Complainant’s mark in its entirety, and only deviates with the addition of the
Romanian country-code of “.ro.” Because
top-level domains are required of domain name registrants, their addition is
inconsequential under Policy ¶ 4(a)(i).
See also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003): “The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain name. Complainant must first make out a prima facie case in support of its allegations, at which point the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain name. See, for example, Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:
complainant must first
make a prima facie case that
respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it
does have rights or legitimate interests.
To the same effect, see also AOL LLC v. Gerberg, FA 780200 (Nat.
Arb. Forum Sept. 25, 2006) (finding that once a complainant satisfies its prima facie burden, “then the burden
shifts to the respondent to show that it does have rights or legitimate
interest in the subject domain names.”)
Complainant has established a prima facie case in support of its contentions under this head of
the Policy, and Respondent has failed to submit a Response to these proceedings. The Panel can infer from Respondent’s failure
to respond that it lacks rights to or legitimate interests in the disputed
domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed
domain name.
Nonetheless, we elect to examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent
does not deny, that Respondent is not commonly known by the disputed domain
name, and Respondent has not received permission to use Complainant’s
mark. Moreover, the WHOIS information
for the disputed domain name indicates only that the registrant is “Monet c/o Shame Sad.”
On this record, we conclude that Respondent is not commonly known by the
disputed domain name so as to have demonstrated rights to or legitimate
interests in the contested domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the relevant WHOIS information and other evidence in the
record); see also Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that a respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the relevant WHOIS
information, suggesting that that respondent was commonly known by the disputed
domain name).
We also observe
that there is no dispute as to Complainant’s allegation that the disputed
domain name resolves to a website featuring information on Complainant’s
products in the online retail shoe business, thus tarnishing Complainant’s
mark. Respondent’s use of the disputed
domain name in the manner alleged is neither a bona fide offering of
goods and services under Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am.
Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb.
Forum Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).
See also Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003): “Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent’s use of the disputed
domain name disrupts Complainant’s business.
Respondent does not object to this assertion. Respondent’s domain name resolves to a
website featuring information about Complainant’s online retail footwear business. Complainant lacks control over the content
and quality of the information about its products and services that Respondent
displays on the resolving website, which has the capacity to harm Complainant’s
business. Respondent’s use of the
disputed domain name disrupts Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v.
calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007)
(finding that a respondent’s registration and use of a disputed domain name,
which displayed a website virtually identical to a complainant’s, constituted
bad faith registration and use of a domain name pursuant to Policy ¶ 4(b)(iii)).
Respondent is using the disputed domain name to redirect Internet users seeking information on Complainant’s goods and services to Respondent’s own website. Respondent’s use of the domain name in the circumstances here presented may cause Internet users to become confused as to the possibility that Complainant is the source, sponsor or an affiliate of the disputed domain name. This is further evidence of bad faith registration and use of the contested domain name by Respondent. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where a respondent's use of a domain name to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that a complainant is the source of or is sponsoring the services offered at the site); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that a respondent engaged in bad faith registration and use of domain names by using domains that were identical or confusingly similar to a complainant’s mark to redirect Internet users to a website offering services similar to those offered by that complainant).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <shoemall.me> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 2, 2010
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