Jeffrey P. Thompson and Book Thongs, Inc.
v. Brigitta Zimmer d/b/a Skippin Stones
Claim
Number: FA0308000190625
Complainants are Jeffrey P. Thompson and Book Thongs, Inc., Wheaton, IL (hereinafter “Complainant”)
represented by Brent E. Ohlmann.
Respondent is Brigitta Zimmer d/b/a Skippin Stones, Westbrook, CT (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <bookthong.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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 27, 2003; the Forum received a hard copy of the
Complaint on August 27, 2003.
On
August 28, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <bookthong.com> 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
September 8, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of September 29, 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@bookthong.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
October 15, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Sandra Franklin 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 Book
Thongs, Inc.
A. Complainant makes the following assertions:
1. Respondent’s <bookthong.com>
domain name is confusingly similar to Complainant’s BOOK THONGS mark.
2. Respondent does not have any rights or
legitimate interests in the <bookthong.com> domain name.
3. Respondent registered and used the <bookthong.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
the owner of the BOOK THONGS trademark. Complainant filed for a registration of
the mark on the Principal Register of the U.S. Patent and Trademark Office on
January 22, 2001, and obtained registration of the mark on April 29, 2003.
Complainant coined the BOOK THONGS mark for use on beaded string bookmarks, a
product that it began selling in commerce on August 9, 2000.
Respondent,
Brigitta Zimmer d/b/a Skippin Stones, registered the <bookthong.com>
domain name on March 19, 2002. According to Respondent’s advertising (as
submitted in Complainant’s Exhibits) it has been known as Echo Trading Company
since 1995, and uses the disputed domain name to sell products that are
identical to Complainant’s products under the name “Book Thong.”
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’s
2001 filing for the BOOK THONGS mark came before Respondent’s registration of
the disputed domain name in 2002. As Complainant’s trademark application was
subsequently approved by the U.S. Patent and Trademark Office, the relevant
date for showing “rights” in the mark for the purposes of Policy ¶ 4(a)(i)
dates back to Complainant’s filing date. Thus, Complainant has established
rights in the BOOK THONGS mark through registration of the mark on the
Principal Register of the U.S. Patent and Trademark Office. See FDNY Fire Safety Educ. Fund, Inc. v.
Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) finding that
Complainant’s rights in the FDNY mark relate back to the date that its
successful trademark registration was filed with the U.S. Patent and Trademark
Office; see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption.
Respondent’s <bookthong.com>
domain name is confusingly similar
to Complainant’s BOOK THONGS mark. The disputed domain name merely eliminates
the “s” after the word THONGS, which does not dispell any confusing similarity
between Complainant’s mark and the domain name. See Universal
City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000)
finding that deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS STORE
mark did not change the overall impression of the mark and thus made the
disputed domain name confusingly similar to it; see also Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) finding that
by misspelling words and adding letters to words a Respondent does not create a
distinct mark but nevertheless renders the domain name confusingly similar to
Complainant’s marks.
Accordingly, the
Panel finds that the <bookthong.com> domain name is confusingly similar to Complainant’s BOOK THONGS mark
under Policy ¶ 4(a)(i).
Respondent uses
the disputed domain name to offer goods that are identical to those offered by
Complainant under the BOOK THONGS mark, going as far as to market its goods
under the term “Book Thong.” As Respondent is using Complainant’s registered
mark without authorization, to offer goods identical to Complainant’s BOOK
THONGS branded goods, Respondent is making neither a bona fide offering of
goods or services nor a noncommercial or fair use of the domain name, thus
rendering Policy ¶¶ 4(c)(i) and (iii) inapplicable in this dispute. See Yahoo! Inc. v. Web Master,
FA 127717 (Nat. Arb. Forum Nov. 27, 2002) finding that Respondent’s use of a
confusingly similar domain name to operate a pay-per-click search engine, in
competition with Complainant, was not a bona fide offering of goods or
services; see also Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
holding that Respondent’s appropriation of Complainant’s mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services.
As the evidence
before the Panel indicates that Respondent is known as Echo Trading Company,
the Panel finds that Respondent is not “commonly known by” the disputed domain
name for the purposes of Policy ¶ 4(c)(ii), making this provision inapplicable
in this dispute as well. See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply; see also 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.
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<bookthong.com> domain
name under Policy ¶ 4(a)(ii).
Respondent
registered a domain name that is nearly identical to Complainant’s BOOK THONGS
mark, and is using the domain name to provide goods that are identical to
Complainant’s BOOK THONGS-branded goods. Given the similarity between
Respondent’s website and domain name vis a vis Complainant’s goods and
registered trademark, Respondent’s use of the <bookthong.com> domain name creates a likelihood of confusion
as to whether Complainant is the source or sponsor of Respondent’s website.
Respondent’s creation of this confusion for commmercial gain evidences bad
faith use and registration of the domain name pursuant to Policy ¶ 4(b)(iv). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) finding
that Respondent’s use of the <saflock.com> domain name to offer goods
competing with Complainant’s illustrates Respondent’s bad faith registration
and use of the domain name, evidence of bad faith registration and use pursuant
to Policy 4(b)(iv); see also Identigene, Inc. v. Genetest Lab.,
D2000-1100 (WIPO Nov. 30, 2000) finding bad faith where Respondent's use of the
domain name at issue to resolve to a website where similar services are offered
to Internet users is likely to confuse the user into believing that Complainant
is the source of or is sponsoring the services offered at the site.
The Panel thus
finds that Respondent registered and used the <bookthong.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <bookthong.com> domain name be TRANSFERRED
from Respondent to Complainant Book Thongs, Inc.
Sandra Franklin, Panelist
Dated:
October 27, 2003
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