Sterling Jewelers Inc. v. Online Management
Claim Number: FA1404001552091
Complainant is Sterling Jewelers Inc. (“Complainant”), represented by John J. Cunniff of Hahn Loeser + Parks LLP, Ohio, USA. Respondent is Online Management (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kayjewelersengagementrings.com>, registered with GODADDY.COM, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2014; the National Arbitration Forum received payment on April 1, 2014.
On April 2, 2014, GODADDY.COM, LLC confirmed by email to the National Arbitration Forum that the <kayjewelersengagementrings.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 April 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kayjewelersengagementrings.com. Also on April 4, 2014, 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 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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
Complainant operates over 1,300 jewelry stores throughout the United States, including stores that operate using the KAY JEWELERS mark, which has been in use since at least 1916. Complainant asserts that the mark has become well known through many years of use, advertising, and promotion. Complainant contends that the disputed domain name <kayjewelersengagementrings.com> is identical or confusingly similar to its KAY JEWELERS mark. Complainant further contends that Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent registered and is using the domain name in bad faith. In support thereof, Complainant states that the domain name was registered on December 9, 2013; that the domain name resolves to a pay-per-click link farm parking page that promotes businesses directly competitive with Complainant and that contains a banner stating that the domain name is for sale; that Respondent has not been commonly known by the domain name, and is neither licensed nor authorized by Complainant to use its mark; that Respondent registered the domain name with knowledge of Complainant’s trademark rights; and that Respondent is a notorious and serial cybersquatter, having defaulted in numerous previous proceedings under the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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."
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.
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.”).
The disputed domain name combines Complainant’s registered trademark with the term “engagement rings,” which refers to an item sold by Complainant, and the top-level domain suffix “.com”. These additions do not substantially distinguish the domain name from Complainant’s mark. See, e.g., Neil Lane Enterprises, Inc. v. Giorgi Charkviani, D2011-0906 (WIPO Aug. 8, 2011) (finding <neillaneengagementrings.com> confusingly similar to NEIL LANE); Harry Winston Inc., Harry Winston, S.A. v. Private Whois Service / SveinungSkoglund.com, Sveinung Skoglund, D2010-1222 (WIPO Sept. 27, 2010) (finding <harrywinstonengagementrings.com> confusingly similar to HARRY WINSTON). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant’s mark without authorization, and it is being used to display links to Complainant’s competitors. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Paragraph 4(b) of the Policy sets forth the following circumstances as evidence of bad faith:
(1) registration of the domain name primarily for the purpose of selling or renting it to Complainant or a competitor of Complainant at a profit;
(2) registration of the domain name to prevent Complainant from reflecting its trademark in a corresponding domain name, together with a pattern of such conduct;
(3) registration of the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) use of the domain name in an intentional attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on the site.
Respondent here registered the domain name in December 2013 and promptly began using it to display pay-per-click links to competitors of Complainant, and a banner indicating that the domain name is for sale. A cursory search of previous Panel decisions under the Policy reveals numerous proceedings in which Respondent has been determined to have registered and used domain names in bad faith. See, e.g., Sterling Jewelers Inc. v. Online Management, FA 1542610 (Nat. Arb. Forum Mar. 10, 2014); see also Nationstar Mortgage LLC v. Online Management, FA 1534127 (Nat. Arb. Forum Jan. 8, 2014) (noting a pattern of abusive domain name registrations by Online Management). There is evidence indicative of bad faith under all four of the examples set forth in Paragraph 4(b) of the Policy. The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kayjewelersengagementrings.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 29, 2014
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