Bedford Fair Apparel, Inc. v. Henry Chan
Claim Number: FA0305000157322
Complainant is
Bedford Fair Apparel, Inc., Tucson, AZ, USA (“Complainant”) represented
by Kristin Page-Iverson of Lewis and Roca, LLP. Respondent is
Henry Chan, Hung Hom, CHINA (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <willowridgecatolog.com> registered with Iholdings.com, Inc.
d/b/a Dotregistrar.com.
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.
Honorable Paul A. Dorf
(Ret.) as Panelist.
Complainant submitted a
Complaint to the National Arbitration Forum (the "Forum")
electronically on May 14, 2003; the Forum received a hard copy of the Complaint
on May 16, 2003.
On May 19, 2003, Iholdings.com,
Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain
name <willowridgecatolog.com> is registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of
the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that
Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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 May 20, 2003, a
Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of June 9, 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@willowridgecatolog.com by e-mail.
Having received no
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 June 16, 2003,
pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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 Response from Respondent.
Complainant requests
that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <willowridgecatolog.com>
domain name is confusingly similar to Complainant’s WILLOW RIDGE mark.
2. Respondent does not have
any rights or legitimate interests in the <willowridgecatolog.com>
domain name.
3. Respondent registered
and used the <willowridgecatolog.com> domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant owns a
trademark registration with the United States Patent and Trademark Office
(“USPTO”) for the WILLOW RIDGE mark (Reg. No. 1,349,496 registered on July 16,
1985) in relation to clothing, namely, dresses, blouses, skirts, shorts, pants,
jackets, suites, T-shirts, sweaters, one-piece suits, lingerie, pajamas, robes
and belts. Complainant distributes a catalog under the WILLOW RIDGE mark,
amassing $50 million in advertising costs in the past three years. Since April
1, 2002, Complainant has maintained a website at <willowridge.com>, which
has averaged 1.5 million viewings per month and resulted in over $6 million in
sales.
Respondent registered
the <willowridgecatolog.com> domain name on March 3, 2003.
Respondent is using the disputed domain name to divert Internet traffic to a
portal website that consists of links to a number of other websites, including
websites that directly compete with Complainant.
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
established its rights in the WILLOW RIDGE mark through registration with the
USPTO and continuous use in commerce since 1983.
Respondent’s <willowridgecatolog.com>
domain name is confusingly similar to Complainant’s WILLOW RIDGE mark because
the disputed domain name appropriates Complainant’s entire mark and simply adds
the nonsensical word “catolog” to the end of the mark. The word “catolog” is
presumably a misspelling of the word “catalog,” which is a term that directly
relates to Complainant’s business. The addition of a misspelling of a generic
term that directly relates to Complainant’s business does not sufficiently
differentiate the disputed domain name from Complainant’s mark with regard to
Policy ¶ 4(a)(i). 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 the 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).
Accordingly, the Panel
finds that Complainant has established Policy ¶ 4(a)(i).
Respondent has neglected
to respond to the Complainant’s allegations. Thus, the Panel is permitted to
accept all reasonable allegations and inferences in the Complaint as true. See
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure
of a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertion in this regard”); see
also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding
that failing to respond allows a presumption that Complainant’s allegations are
true unless clearly contradicted by the evidence).
Furthermore, Respondent
has failed to invoke any circumstances that could demonstrate rights to and
legitimate interests in the disputed domain name. When Complainant asserts a prima
facie case against Respondent, the burden of proof shifts to Respondent to
show that it has rights to or legitimate interests pursuant to Policy ¶
4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar.
9, 2000) (finding that by not submitting a Response, Respondent has failed to
invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name); see also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond).
Respondent is using the <willowridgecatolog.com>
domain name to divert Internet traffic to a commercial website that provides
links to websites in direct competition with Complainant’s business.
Respondent’s use of the disputed domain name demonstrates neither a bona fide
offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co.
v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding
that Respondent’s commercial use of the domain name to confuse and divert
Internet traffic is not a legitimate use of the domain name); see also Big
Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding
no legitimate use when Respondent was diverting consumers to its own website by
using Complainant’s trademarks).
Moreover, Respondent has
proffered no proof and there is no evidence in the record that indicates
Respondent is commonly known by WILLOW RIDGE CATOLOG or <willowridgecatolog.com>.
Therefore, Respondent has failed to establish its rights to or legitimate
interests in the disputed domain name with regard to Policy ¶ 4(c)(ii). See
MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003)
(noting that “the disputed domain
name does not even correctly spell a cognizable phrase” in finding that
Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>);
see also 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").
The Panel finds that Complainant
has established Policy ¶ 4(a)(ii).
Respondent is using the <willowridgecatolog.com>
domain name to divert Internet traffic to a commercial, portal website that
offers links to websites in competition with Complainant. Respondent’s attempt
to attract Internet users to its website for commercial gain by creating a
likelihood of confusion with Complainant’s mark as to the source, sponsorship,
affiliation or endorsement of Respondent’s website is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas
v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad
faith where Respondent registered the domain name <bigtex.net> to
infringe on Complainant’s goodwill and attract Internet users to Respondent’s
website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668
(Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered
and used an infringing domain name to attract users to a website sponsored by
Respondent).
Moreover, Respondent has
engaged in a practice called “typosquatting.” Typosquatting involves the
registration of misspellings of words in domain names to divert Internet users
to the typosquatter’s website for commercial gain. Typosquatting itself
evidences bad faith registration and use under Policy ¶ 4(a)(iii). See Nat’l
Ass’n of Prof’l Baseball Leagues v.
Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the
intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is inherently parasitic and of itself evidence of
bad faith.”); see also Black & Decker Corp. v. Azra Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name
was registered to “ensnare those individuals who forget to type the period
after the “www” portion of [a] web-address,” evidence that the domain name was registered
and used in bad faith).
The Panel finds that
Policy ¶ 4(a)(iii) has been established.
Having established all
three elements required under ICANN Policy, the Panel concludes that relief
shall be GRANTED.
Accordingly, it is
Ordered that the <willowridgecatolog.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf
(Ret.), Panelist
Dated: June 20, 2003