Nautica Apparel, Inc. v. Domain Tech Enterprises / Domain Administrator
Claim Number: FA1103001376406
Complainant is Nautica Apparel, Inc. (“Complainant”), represented by John M. Rannells of Baker and Rannells PA, New Jersey, USA. Respondent is Domain Tech Enterprises / Domain Administrator (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nauticafurniture.com>, registered with Power Brand Center Corp.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2011; the National Arbitration Forum received payment on March 7, 2011.
On March 15, 2011, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <nauticafurniture.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2011 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@nauticafurniture.com. Also on March 21, 2011, 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 April 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <nauticafurniture.com> domain name is confusingly similar to Complainant’s NAUTICA mark.
2. Respondent does not have any rights or legitimate interests in the <nauticafurniture.com> domain name.
3. Respondent registered and used the <nauticafurniture.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nautica Apparel, Inc., owns the NAUTICA mark and has used the mark since 1983 in connection with a number of products including apparel, fragrances, eyewear, bedding, and furniture, to name a few. Complainant holds numerous trademark registrations for its NAUTICA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No., 1,862,585 issued November 15, 1994) and in Chile with the Department of Industrial Property (“DIP”) (Reg. No., 650,903 issued December 3, 2002).
Respondent, Domain Tech Enterprises / Domain Administrator, registered the <nauticafurniture.com> domain name on September 17, 2004. The disputed domain name resolves to a directory website which lists third-party commercial links, most of which compete with Complainant’s furniture business.
Respondent has been the subject of at least two prior UDRP proceedings that resulted in the transfer of the domain names to the respective complainants. See See Capital One Fin. Corp. v Domain Tech Enters. / Domain Adm’r, FA 1375034 (Nat. Arb. Forum April 5, 2011); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Domain Tech Enters. c/o Domain Adm’r, FA 1369407 (Nat. Arb. Forum Feb, 25, 2011).
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 argues that it has established rights in its NAUTICA mark. Previously, panels have found that a complainant can establish rights in a mark by registering with a federal trademark authority. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”) Here, Complainant holds trademark registrations for its NAUTICA mark with the USPTO (Reg. No., 1,862,585 issued November 15, 1994) and in Chile, the country of Respondent, with the DIP (Reg. No., 650,903 issued December 3, 2002). Therefore, the Panel finds that Complainant has demonstrated its rights in the NAUTICA mark, under Policy ¶ 4(a)(i), according to its registrations of the NAUTICA mark with trademark authorities around the world.
Complainant alleges that Respondent’s <nauticafurniture.com> domain name is confusingly similar to its NAUTICA mark. The disputed domain name incorporates Complainant’s mark in its entirety and varies from the mark only by adding the descriptive word “furniture” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding a generic word which relates to Complainant’s business, in this case to Complainant’s venture in furniture sales, does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The Panel also finds that the application of a gTLD does not remove the disputed domain name from the area of confusing similarity. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s NAUTICA mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant maintains that Respondent lacks rights and legitimate interests in the <nauticafurniture.com> domain name. In Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), the panel held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name. Here, Complainant has presented a prima facie case for its allegations against Respondent. Respondent did not submit a Response to the Complaint. The Panel may interpret the lack of a response as evidence that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). In this case, however, the Panel will examine the record to find whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <nauticafurniture.com> domain name. The WHOIS information indicates Respondent is “Domain Tech Enterprises/Domain Administrator,” which is not similar to the disputed domain name. Complainant additionally states that Respondent is acting without Complainant’s authorization, consent, or permission to use its NAUTICA mark within the domain name. Complainant argues that Respondent owns no trademark registrations for the NAUTICA mark. Given this information, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent uses the disputed domain name to operate a directory website featuring links to third-party websites, most of which are furniture related and directly compete with Complainant’s furniture business. Respondent likely collects click-though fees from these links. The Panel finds that Respondent’s use of a confusingly similar disputed domain name to reroute Internet users to Complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant contends that Respondent exhibits a pattern of bad faith registration and use as it has been the subject of prior UDRP proceedings that resulted in findings of bad faith and transfer of the disputed domain names. See Capital One Fin. Corp. v Domain Tech Enters. / Domain Adm’r, FA 1375034 (Nat. Arb. Forum April 5, 2011); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Domain Tech Enters. c/o Domain Adm’r, FA 1369407 (Nat. Arb. Forum Feb, 25, 2011). The Panel finds that Respondent’s prior UDRP proceedings resulting in findings of bad faith are evidence that Respondent has registered and is using the current disputed domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
Complainant alleges that Respondent’s disputed domain name disrupts its business. Respondent’s <nauticafurniture.com> domain name resolves to a website featuring a variety of third-party links, most of which directly compete with Complainant’s furniture business. Internet users intending to purchase Complainant’s goods and products may find Respondent’s website due to the confusingly similar domain name and purchase similar goods and products from a competing business as a result. The Panel finds that Respondent’s use of the domain name does disrupt Complainant’s business within the furniture industry, which is evidence of bad faith use and registration according to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel gathers that Respondent receives click-through fees from the aforementioned third-party links. Respondent uses the <nauticafurniture.com> domain name to display these links. Internet users searching online for Complainant may find Respondent’s website instead. Due to the use of Complainant’s mark within the disputed domain name, there is a strong likelihood of confusion and users will be misled as to Complainant’s association with, or sponsorship of, the resolving website and featured links. Respondent tries to capitalize off this confusion through the receipt of click-through fees. The Panel finds such use constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nauticafurniture.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 28, 2011
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