Anne Geddes v. Cayman Trademark Trust
Claim
Number: FA0404000257938
Complainant is Anne Geddes (“Complainant”), represented
by Lawrence J. Turner, 9200 Sunset Boulevard, Suite 701,
Los Angeles, CA 90069. Respondent is Cayman Trademark Trust (“Respondent”),
P.O. Box 908, George Town, Grand Cayman, GT KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <anngeddes.com>, registered with Bulkregister,
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 21, 2004; the Forum received a hard copy of the
Complaint on April 26, 2004.
On
April 22, 2004, Bulkregister, Llc. confirmed by e-mail to the Forum that the
domain name <anngeddes.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
May 3, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 24, 2004 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@anngeddes.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 2, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Louis E. Condon 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 <anngeddes.com>
domain name is confusingly similar to Complainant’s ANNE GEDDES mark.
2. Respondent does not have any rights or
legitimate interests in the <anngeddes.com> domain name.
3. Respondent registered and used the <anngeddes.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Anne Geddes, is a children’s photographer who distributes paper goods, plush
toys, software, and other products associated with her photographs. Complainant holds numerous trademark
registrations with the United States Patent and Trademark Office for the ANNE
GEDDES mark (including Reg. No. 2,268,954, issued August 10, 1999, Reg. No.
2,121,153, issued December 16, 1997, and Reg. No. 2,324,554, issued February
29, 2000) as well as registrations in the European Community.
Complainant has
used the ANNE GEDDES mark in association with its sale of paper goods since as
early as June 1996. Complainant owns
registrations for several domain names, including <annegeddes.com>,
<annegeddes.net>, and <annegeddes.org>.
Respondent
registered the <anngeddes.com> domain name on February 20,
2002. Respondent is using the domain
name to divert Internet users to a website that provides links to commercial
websites and displays banner and “pop up” advertisements related to numerous
products and services.
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 with extrinsic proof in this proceeding that it has rights in the
ANNE GEDDES mark through registration with the United States Patent and
Trademark Office and by continuous use of its mark in commerce for at least the
last eight years. 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.”); 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).
The domain name
registered by Respondent is confusingly similar to Complainant’s ANNE GEDDES
mark because the disputed domain name differs from Complainant’s mark only in
its spelling of the name “Ann.” The
disputed domain name appears and sounds the same as Complainant’s mark except
for the lack of the letter “e.” The
misspelling of Complainant’s mark does not negate the confusing similarity of
the disputed domain name with Complainant’s mark. See Victoria's
Secret v. Internet Inv. Firm Trust, FA
94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name
<victoriasecret.com> to be confusingly similar to Complainant’s
trademark, VICTORIA’S SECRET); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec.
1, 2000) (holding that the deliberate introduction of errors or changes, such
as the addition of a fourth “w” or the omission of periods or other such
generic typos do not change respondent’s infringement on a core trademark held
by Complainant); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002)
(finding that the domain name <compq.com> is confusingly similar
to Complainant’s COMPAQ mark because the omission of the letter “a” in the
domain name does not significantly change the overall impression of the mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the disputed
domain name. Due to Respondent’s
failure to respond to the Complaint, the Panel will assume that Respondent
lacks rights and legitimate interests in the disputed domain name. In fact, once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to show that it does have such rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding
that where Complainant has asserted that Respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on Respondent to come
forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”); 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, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name).
Moreover, where
Respondent does not respond to the Complaint, the Panel may accept all
reasonable allegations and inferences in the Complaint as 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 Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in the allegations of Complainant to be deemed true).
Respondent is
using the <anngeddes.com> domain name to redirect Internet users
to a website that features advertising for a variety of goods and services
unrelated to Complainant’s business.
Respondent’s use of a domain name that is confusingly similar to
Complainant’s ANNE GEDDES mark to redirect Internet users interested in Complainant’s
products to a website that offers links to and advertisements for commercial
websites is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Bank of America Corp. v. Out
Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (finding that
Respondent’s use of infringing domain names to direct Internet traffic to a
search engine website that hosted pop-up advertisements was evidence that it
lacked rights or legitimate interests in the domain name); see also Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the
disputed domain name to host a series of hyperlinks and a banner advertisement
was neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name).
Moreover,
Respondent offered no evidence and no proof in the record suggests that
Respondent is commonly known by the <anngeddes.com> domain
name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark and never applied for a
license or permission from Complainant to use the trademarked name); 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the <anngeddes.com> domain name for commercial
gain. Respondent’s domain name diverts
Internet users wishing to search under Complainant’s well-known mark to
Respondent’s commercial website through the use of a domain name confusingly
similar to Complainant’s mark.
Respondent’s practice of diversion, motivated by commercial gain,
through the use of a confusingly similar domain name evidences bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp.
v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith
where the domain name in question is obviously connected with Complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain); see also eBay,
Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001)
(finding bad faith where Respondent is taking advantage of the recognition that
eBay has created for its mark and therefore profiting by diverting users
seeking the eBay website to Respondent’s site).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of a domain name, additional factors
can also be used to support findings of bad faith registration and use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel must look at the “totality of
circumstances”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b)
are intended to be illustrative, rather than exclusive”).
Respondent’s
registration of the <anngeddes.com> domain name that incorporates
a slightly misspelled version of Complainant’s well-known ANNE GEDDES mark
suggests that Respondent knew of Complainant’s rights in the ANNE GEDDES mark
at the time of registration.
Furthermore, the misspelling of the domain name is likely a common
mistake of Internet users searching for Complainant’s mark. Thus, it is not unlikely that a user
searching for Complainant’s mark might actually be directed to Respondent’s
website. Thus, the Panel finds that
Respondent likely chose the <anngeddes.com> domain name based on
the distinctive and well-known qualities of Complainant’s mark. 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”); see also Ty Inc.
v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s
registration and use of an identical and/or confusingly similar domain name was
in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent
should have been aware of it).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <anngeddes.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
June 15, 2004