Hancock Fabrics, Inc. v. Active
Advantage, Inc.
Claim Number: FA0310000204111
Complainant is Hancock Fabrics, Inc. (“Complainant”), 3406
West Main Street, Tupelo, MS, 38801. Respondent is Active Advantage, Inc., PO
Box 7593, Nashua, NH 03060 (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <hancockfabric.com> registered with Bulkregister,
LLC.
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 October 22, 2003; the Forum received a hard copy of the
Complaint on October 23, 2003.
On
October 23, 2003, Bulkregister, LLC confirmed by e-mail to the Forum that the
domain name <hancockfabric.com> is registered with Bulkregister,
LLC and that Respondent is the current registrant of the name. Bulkregister,
LLC has verified that Respondent is bound by the Bulkregister, LLC 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
October 24, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 13, 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@hancockfabric.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
November 21, 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 Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hancockfabric.com>
domain name is confusingly similar to Complainant’s HANCOCK FABRICS mark.
2. Respondent does not have any rights or
legitimate interests in the <hancockfabric.com> domain name.
3. Respondent registered and used the <hancockfabric.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for the HANCOCK FABRICS mark (Reg. No. 2,161,840 registered on
June 2, 1998) in relation to retail fabric store services and wholesale
services, featuring fabrics, home sewing accessories, notions, patterns,
trimmings, crafts, and the like. Complainant has been in business for 46 years
and operates 432 stores in 42 states. Complainant operates an Internet store at
its two domain names, <hancockfabrics.com> and <homedecoratingaccents.com>.
Respondent
registered the <hancockfabric.com> domain name on February 29,
2000. Respondent is using the disputed domain name to redirect Internet traffic
to a website at the <textjokes.com> domain name that contains a selection
of jokes.
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 its rights in the HANCOCK FABRICS mark through registration with
the USPTO. See Men’s Wearhouse, Inc. v. 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”).
Complainant
argues that the <hancockfabric.com> domain name is confusingly
similar to Complainant’s HANCOCK FABRICS mark because the disputed domain name
appropriates Complainant’s mark and merely omits the letter “s” from the end of
the mark. The omission of this letter does not sufficiently distinguish the
domain name from the mark for purposes of Policy ¶ 4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Try
Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that
the domain name <statfarm.com> is confusingly similar to Complainant’s
STATE FARM mark); see also Reuters
Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding
that a domain name which differs by only one letter from a trademark has a
greater tendency to be confusingly similar to the trademark where the trademark
is highly distinctive).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not come forward to challenge Complainant’s allegations. Therefore, the Panel
accepts all reasonable allegations and inferences in the Complaint to be true. See 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”); 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 or legitimate interests in the disputed domain name. When Complainant
asserts a prima facie case
against Respondent, the burden shifts to Respondent to show that it has rights
to or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Canadian Imperial Bank of Commerce v.
D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed); see
also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding
that Respondent has no rights or legitimate interests in the domain name
because Respondent never submitted a response or provided the Panel with
evidence to suggest otherwise).
Respondent is
using the <hancockfabric.com> domain name to redirect Internet
traffic to a website at the <textjokes.com> domain name that contains a
selection of jokes. Respondent’s use 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 Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck
surfers into a site sponsored by Respondent hardly seems legitimate”); see
also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use).
Moreover,
Respondent has offered no evidence and there is no indication in the record
that Respondent is commonly known by HANCOCK FABRIC or <hancockfabric.com>. Thus, the Panel finds that Respondent
has failed to demonstrate any rights to or legitimate interests in the disputed
domain name pursuant to 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 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").
Accordingly, the
Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent’s use
of the <hancockfabric.com> domain name, a domain name confusingly
similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to
a website that provides a selection of jokes demonstrates Respondent’ bad faith
use of the disputed domain name because Respondent has created a likelihood of
confusion as to the source, sponsorship, affiliation or endorsement of
Respondent’s website, which evidences bad faith registration and use under
Policy ¶ 4(b)(iv). See
MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000)
(finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked
<drmath.com>, which contains Complainant’s Dr. Math mark, to a website
run by Respondent, creating confusion for Internet users regarding the
endorsement, sponsorship, of affiliation of the website); see also Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) ("While an
intent to confuse consumers is not required for a finding of trademark
infringement, intent to deceive is strong evidence of a likelihood of
confusion").
Furthermore, Respondent’s
registration of a domain name that differs by only one letter from
Complainant’s federally registered trademark suggests that Respondent had
actual or constructive knowledge of Complainant’s mark when the domain name was
registered. The registration of a domain name that appropriates another’s
trademark, despite actual or constructive knowledge of the mark holder’s rights
in its mark, demonstrates bad faith registration and use pursuant to Policy ¶
4(a)(iii). 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 Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”).
The Panel finds
that Policy ¶ 4(a)(iii) has been established.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <hancockfabric.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
December 4, 2003
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