WeddingChannel.com Inc. v. Albert Jackson
Claim
Number: FA0405000273990
Complainant is WeddingChannel.com Inc. (“Complainant”),
represented by Monica Riva Talley, of Finnegan Henderson Farabow Garrett &
Dunner, L.L.P., 1300 I
Street NW, Washington, DC 20005.
Respondent is Albert Jackson (“Respondent”),
PO BOX 2014, George Town, Grand Cayman, KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <macysweddingchanel.com>, registered with Iholdings.com.
d/b/a Dotregistrar.com.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 19, 2004; the Forum received a hard copy of the Complaint
on May 20, 2004.
On
May 24, 2004, Iholdings.com d/b/a Dotregistrar.com confirmed by e-mail to the
Forum that the domain name <macysweddingchanel.com> is registered
with Iholdings.com d/b/a Dotregistrar.com and that Respondent is the current
registrant of the name. Iholdings.com d/b/a Dotregistrar.com has verified that
Respondent is bound by the Iholdings.com 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 25, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 14, 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@macysweddingchanel.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 22, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed the Honorable Charles K. McCotter,
Jr. (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.
Respondent’s <macysweddingchanel.com>
domain name incorporates the WEDDING CHANNEL mark of
Complainant, WeddingChannel.com Inc., and the MACY’S mark owned by Federated
Western Properties, Inc. (“FWP”), a subsidiary of Federated Department Stores,
Inc. (“FDS”). Complainant has a limited license to use
the MACY’S mark. Complainant
also has permission from FWP and FDS to file this Complaint against Respondent
requesting the transfer of the <macysweddingchanel.com>
domain name to Complainant.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <macysweddingchanel.com>
domain name is confusingly similar to Complainant’s WEDDING CHANNEL mark.
2. Respondent does not have any rights or
legitimate interests in the <macysweddingchanel.com> domain name.
3. Respondent registered and used the <macysweddingchanel.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
WeddingChannel.com, offers wedding planning, gift registry, and communications
services. Complainant began offering
its services in July of 1977.
Complainant is one of the top two wedding planning websites on the
Internet and is the only online wedding resource endorsed by the Association of
Bridal Consultants.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office for the WEDDING CHANNEL mark (Reg. No. 2,508,302, issued
November 20, 2001, Reg. No. 2,519,453, issued December 18, 2001) and the
WEDDINGCHANNEL.COM mark (Reg. No. 2,564,964, issued July 9, 2002, Reg. No.
2,590,287, issued July 9, 2002, Reg. No. 2,641,605, issued October 29, 2002,
Reg. No. 2,763,090, issued September 16, 2003).
Complainant owns
registrations for the <weddingchannel.com> and
<macysweddingchannel.com> domain names, where consumers can access
Complainant’s services online.
Complainant has
used the WEDDING CHANNEL mark and <weddingchannel.com> domain
continuously and extensively in connection with its wedding services since
1997. Thus, Complainant’s marks are
well known to the public.
Complainant
promotes the gift registries of its partners such as Macy’s via specialized
WEDDINGCHANNEL home pages that are accessible via domain names incorporating
the partner’s mark. Notably,
Complainant owns the domain name <macysweddingchannel.com>, and uses that
domain name jointly with its partner Macy’s for a specialized WEDDINGCHANNEL
home page prominently featuring Macy’s Bridal and Gift Registry.
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 that it has rights in the WEDDING CHANNEL mark through registration
with the United States Patent and Trademark office and through continued use of
its marks in commerce for the last seven 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, <macysweddingchanel.com>, is confusingly
similar to Complainant’s WEDDING CHANNEL mark because the only difference
between the two is the typographical misspelling of Complainant’s domain by the
omission of one letter, namely, the letter “N” in the word “channel” and the
addition of Complainant’s partner’s MACY’S mark. The mere omission of one letter and the addition of the mark do
not significantly distinguish Respondent’s domain name pursuant to Policy ¶
4(a)(i). See 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); see
also 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 Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30,
2000) (finding the domain name <hewlitpackard.com> to be identical or
confusingly similar to Complainant’s HEWLETT-PACKARD mark). See also G.D. Searle & Co. v. Pelham,
FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other
drug names does not create a distinct mark capable of overcoming a claim of
confusing similarity, “it merely creates a domain name with severe potential to
confuse Internet users as to the source, sponsorship and affiliation of the
domain”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the domain
name. Due to Respondent’s failure to
respond to the Complaint, it is assumed that Respondent lacks rights and
legitimate interests in the disputed domain name. The burden shifts to Respondent to show that it does have rights
or legitimate interests once Complainant establishes a prima facie case
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 Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that under certain circumstances the mere assertion by
Complainant that Respondent has no right or legitimate interest is sufficient
to shift the burden of proof to Respondent to demonstrate that such a right or
legitimate interest does exist).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted a Response. 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 <macysweddingchanel.com> domain name to redirect
Internet users to a website that features advertising for a variety of services
and that hosts a popular search engine to link viewers to a variety of
websites, including sites that offer the same type of services that Complainant
offers. Respondent’s use of a domain
name that is confusingly similar to Complainant’s WEDDING CHANNEL mark to redirect
Internet users interested in Complainant’s services is not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or
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 Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (finding that “it would be unconscionable to
find a bona fide offering of services in a respondent’s operation of web-site using
a domain name which is confusingly similar to the Complainant’s mark and for
the same business”); see also Geoffrey, Inc. v. Toyrus.com, FA 150406
(Nat. Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the disputed
domain name, a simple misspelling of Complainant’s mark, to divert Internet
users to a website that featured pop-up advertisements and an Internet
directory, 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 <macysweddingchanel.com>
domain name. Nothing in the record,
including the WHOIS domain name registration information suggests that
Respondent is known by the 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); see also 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered a domain name that contains in its entirety
Complainant’s well-known mark and did so for Respondent’s commercial gain. Respondent’s domain name diverts Internet
users who seek Complainant’s WEDDING CHANNEL mark to Respondent’s commercial
website through the use of a domain name that is confusingly similar to
Complainant’s mark. Moreover,
Respondent is unfairly and opportunistically benefiting from the goodwill
associated with Complainant’s WEDDING CHANNEL mark. Respondent’s practice of diversion, motivated by commercial gain,
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website); 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,
Respondent registered the domain name for the primary purpose of disrupting
Complainant’s business by redirecting Internet traffic intended for Complainant
to Respondent’s website that competed with Complainant. Registration of a domain name for the
primary purpose of disrupting the business of a competitor is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb.
Forum Dec. 23, 2000) (concluding that domain names were registered and used in
bad faith where Respondent and Complainant were in the same line of business in
the same market area); see also Hewlett
Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding
that Respondent registered and used the domain name primarily for the purpose
of disrupting the business of Complainant by offering personal e-mail accounts
under the domain name <openmail.com> which is identical to Complainant’s
services under the OPENMAIL mark).
The Panel finds
that Policy ¶ 4(a)(iii) has been 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 <macysweddingchanel.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
July 6, 2004
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