TXDC, L.P. v.
James Northcott
Claim
Number: FA0302000144650
Complainant is
TXDC, L.P., Irving, TX, USA (“Complainant”) represented by
Kristy B. Mothersbaugh, of Thompson & Knight LLP. Respondent is
James Northcott, Winnipeg, MB, Canada (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <zalesdiamond.com>, <zalesdiamonds.com>,
<zalesdiamondstore.com>, and <zalesdiamondstores.com>,
registered with Enom, Inc.
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 (the "Forum")
electronically on February 6, 2003; the Forum received a hard copy of the
Complaint on February 10, 2003.
On
February 7, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain
names <zalesdiamond.com>, <zalesdiamonds.com>, <zalesdiamondstore.com>,
and <zalesdiamondstores.com> are registered with Enom, Inc. and
that Respondent is the current registrant of the names. 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
February 19, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 11, 2003 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@zalesdiamond.com,
postmaster@zalesdiamonds.com, postmaster@zalesdiamondstore.com and
postmaster@zalesdiamondstores.com by e-mail.
Having
received no formal 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
March 14, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 formal Response from Respondent.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <zalesdiamond.com>,
<zalesdiamonds.com>, <zalesdiamondstore.com> and <zalesdiamondstores.com>
domain names are confusingly similar to Complainant’s ZALES and ZALES THE
DIAMOND STORE marks.
2. Respondent does not have any rights or
legitimate interests in the <zalesdiamond.com>, <zalesdiamonds.com>,
<zalesdiamondstore.com>, and <zalesdiamondstores.com>
domain names.
3. Respondent registered and used the domain
names in bad faith.
B. Respondent failed to submit a formal
Response in this proceeding.
Complainant,
TXDC, through its sole general partner, Zale Delaware, Inc., which is a wholly
owned subsidiary of Zale Corporation, holds numerous trademarks and service
marks featuring the ZALES mark. More specifically, Complainant holds U.S.
Patent and Trademark Office (“USPTO”) Reg. No. 720,467 for the ZALES mark
registered on August 22, 1961 and listed on the Principal Register. Complainant
also holds USPTO Reg. No. 1,050,371 for the ZALES THE DIAMOND STORE mark
registered on October 12, 1976. Complainant uses the ZALES family of marks in
connection with jewelry and retail jewelry stores across the United States and
throughout the world.
Complainant operates
more than 2,300 retail jewelry locations throughout North America. Among the
retail stores operated by Complainant and its partner, Zale Corporation, is
Zales Jewelers, which was founded in 1924. Complainant operates more than 700
Zales Jewelers store locations in the United States and Puerto Rico, in
addition to an online store at <zales.com>.
Respondent,
James Northcott, registered all four domain names on January 16, 2002.
Complainant’s investigation of Respondent’s use of the subject domain names
indicates that Respondent initially used the domain names to redirect Internet
traffic to third-party websites for commercial profit. Complainant’s submission
reveals that Respondent has subsequently placed the four domain name
registrations for sale. Additionally, Complainant’s evidence includes e-mail
correspondence from Respondent indicating that the domain name registrations
were for sale (e.g., the Subject line of one of the messages reads:
“HTTP://WWW.ZALESDIAMONDSTORES.COM FOR SALE! FOR SALE!”).
Although
Respondent has failed to formally respond to Complainant’s assertions,
Respondent has issued an informal response that states: “We would like to
transfer any and all domains that we have pertaining to Zales Diamonds to the
rightful owners.”
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.
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 has
demonstrated rights in the ZALES and ZALES THE DIAMOND STORE marks through
registration with the USPTO and subsequent continuous use of the marks. See
The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept.
16 2002) (“Under U.S. trademark law, registered marks hold a presumption that
they are inherently distinctive and have acquired secondary meaning”).
Respondent’s <zalesdiamond.com>,
<zalesdiamonds.com>, <zalesdiamondstore.com>, and <zalesdiamondstores.com>
domain names are confusingly similar to Complainant’s ZALES and ZALES THE
DIAMOND STORE marks. Complainant’s marks represent the dominant portion of
Respondent’s second-level domains. Further, the addition of words (such as “diamond”)
that have a significant relationship to Complainant’s business fails to create
distinguishable domain names for the purposes of the Policy. Respondent’s
deletion of introductory phrases (such as “the”) also represents an
inconsequential deviation from Complainant’s registered marks. Because
Respondent’s domain names incorporate Complainant’s ZALES mark in its entirety,
they are rendered confusingly similar under a Policy ¶ 4(a)(i) analysis. See
Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with a
generic word or term); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive word . . . nor the suffix
‘.com’ detract from the overall impression of the dominant part of the name in
each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see
also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business).
Additionally,
Respondent’s deletion of the spaces in Complainant’s ZALES THE DIAMOND STORE
mark is immaterial because spaces are not allowed in domain names, and
therefore must be deleted. Respondent’s addition of a top-level domain (such as
“.com”) to the domain names represents a mandatory addition that does not
create distinguishable characteristics under the Policy. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7,
2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as
spaces are impermissible in domain names and a generic top-level domain such as
‘.com’ or ‘.net’ is required in domain names”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
presented a prima facie case before the Panel, comprised of evidence
supporting its assertions and inferences. Because Respondent did not submit a
formal Response in this proceeding, it has failed to propose any set of
circumstances that would suggest it has rights or interests in the domain names
under Policy ¶ 4(a)(ii). Complainant’s assertions have gone unopposed and
unrefuted. Therefore, it is proper for the Panel to accept all reasonable
inferences made by Complainant as true. See 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); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant
asserts that Respondent has no rights or legitimate interests with respect to
the domain name, the burden shifts to Respondent to provide credible evidence
that substantiates its claim of rights and legitimate interests in the domain
name).
Respondent’s
apparent willingness to transfer the domain name registrations to Complainant,
as stated in the informal Response, indicates that it does not have rights or
legitimate interests in the domain names under Policy ¶ 4(a)(ii). See Marcor Int’l v. Langevin, FA 96317 (Nat.
Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the domain name
at issue indicates that it has no rights or legitimate interests in the domain
name in question); see also Colgate-Palmolive
Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001)
(Respondent’s willingness to transfer the domain name at issue to Complainant,
as reflected in its Response, is evidence that it has no rights or legitimate
interests in the domain name).
Uncontested
evidence indicates that Respondent attempted to sell its rights in the domain
names to Complainant. Respondent’s registration of domain names, which
incorporate another’s marks, with the intent of marketing the domain names to
the owner of the marks, does not represent rights or legitimate interests under
Policy ¶¶ 4(c)(i) or (iii). See Wal-Mart
Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding
Respondent’s conduct purporting to sell the domain name registration suggests
it has no legitimate use); see also Hewlett-Packard
Co. v. High Perf. Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000)
(finding no rights or legitimate interests where Respondent registered the
domain name with the intention of selling its rights).
No evidence
before the Panel indicates that Respondent is commonly known by the domain
names, or that Respondent is using the domain names in pursuit of a legitimate
interest or bona fide offering. The contents contained in Respondent’s informal
Response permit the inference that Respondent concedes that the domain names
infringe on Complainant’s rights. Thus, Respondent fails to establish rights in
the domain names under Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s bad
faith registration and use of the domain names is articulated under Policy ¶
4(b)(i). Specifically, Respondent is seeking to sell its rights in the domain
names through a third-party broker. Unrefuted evidence indicates that on
January 27, 2003, Respondent invited Complainant to “make [him] an offer . . .
within the market range” and he would be “willing to part with” all four of the
domain name registrations. Respondent’s acquisition of domain names for the
purpose of selling, renting or transferring the registrations to Complainant
constitutes bad faith registration and use under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where Respondent offered domain names for sale); see also Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”); see also 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).
Additionally,
there is a legal presumption of bad faith when Respondent was aware, actually
or constructively, of Complainant’s famous and distinctive trademarks.
Respondent’s targeted attempts to sell the domain name registrations to
Complainant allows the inference that Respondent was aware of Complainant’s
rights in the ZALES family of marks. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can infer an intent to confuse").
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <zalesdiamond.com>, <zalesdiamonds.com>,
<zalesdiamondstore.com>, and <zalesdiamondstores.com>
domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
March 19, 2003
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