WeddingChannel.com Inc. v. NOLDC, Inc
Claim Number: FA0408000310971
Complainant is WeddingChannel.com Inc. (“Complainant”),
represented by Monica Riva, of Finnegan Henderson Farabow Garrett &
Dunner L.L.P., 1300 I Street NW, Washington, DC 20005. Respondent is NOLDC, Inc (“Respondent”),
838 Camp Street, Apt. C, New Orleans, LA 70130.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <macys-weddingchannel.com>,
registered with Intercosmos Media Group.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 10, 2004; the Forum received a hard copy of the
Complaint on August 11, 2004.
On
August 12, 2004, Intercosmos Media Group confirmed by e-mail to the Forum that
the domain name <macys-weddingchannel.com>
is registered with Intercosmos Media Group and that Respondent is the current
registrant of the name. Intercosmos Media Group has verified that Respondent is
bound by the Intercosmos Media Group 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
August 12, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 1, 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@macys-weddingchannel.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
September 9, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed James A. Carmody, Esq.,
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 <macys-weddingchannel.com> domain name is confusingly similar
to Complainant’s WEDDING CHANNEL and WEDDINGCHANNEL.COM marks.
2. Respondent does not have any rights or
legitimate interests in the <macys-weddingchannel.com>
domain name.
3. Respondent registered and used the <macys-weddingchannel.com> domain
name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
offered wedding planning, gift registry, and communication services at the
domain name <weddingchannel.com> since July 1997. Complainant’s proprietary and integrated
online registry service offers consumers access to the largest aggregation of
gift registries of major department and specialty stores, such as Macy’s, Bon-Macy’s,
Burdines-Macy’s, Goldsmith’s-Macy’s, Lazarus-Macy’s, Rich’s-Macy’s, among
others. In connection therewith,
Complainant owns the domain name registration for
<macysweddingchannel.com>, which it uses in collaboration with its
partner Macy’s for a specialized website that prominently displays Macy’s
Bridal and Gift Registry. Complainant
has a limited license to use its partner’s MACY’S mark, which is owned by
Federated Western Properties, Inc., a subsidiary of Federated Department
Stores, Inc.
In 2003 alone,
more than $99,000,000 worth of bridal registry gifts were purchased through
Complainant’s website, and Complainant’s total revenue in that time was more
than $29,000,000. Moreover,
Complainant’s website is one of the top two wedding planning websites on the
Internet according to Jupiter Media Metrix, and is the winner of the 1999
WebAward for Best Online Community from the Web Marketing Association.
Complainant owns
numerous U.S. registrations for its WEDDING CHANNEL mark, including
registration numbers 2,508,302 (issued Nov. 20, 2001, in connection with
“advertising agencies and business marketing consulting services”), and
2,519,435 (issued Dec. 18, 2001, in connection with “providing information by
means of a global computer network in the field of wedding party planning
consultation services”). Complainant
also owns several U.S. registrations for its WEDDINGCHANNEL.COM mark, including
registration numbers 2,564,964 (issued Apr. 30, 2002, in connection with
“providing information by means of a global computer network in the field of
wedding planning consultation services”) and 2,590,287 (issued July 9, 2002, in
connection with “advertising agencies and business marketing consulting
services [and] computerized on-line search and ordering service”).
Respondent
registered the domain name <macys-weddingchannel.com>
on December 6, 2003. Respondent
uses the disputed domain name for a website that offers Internet search
services relating to wedding preparation and events, including a search link
entitled “Wedding Channel.” The website offers a variety of other links
entitled “Wedding Planning,” “Wedding Gift,” “Wedding Photographer,” “Wedding
Band,” “Wedding Party Favor,” “Wedding Camera,” and “Wedding Invitation.” Respondent’s website source code indicates
that its search links are provided by Overture, a pay-per-click search engine
company.
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.
Under the
Policy, a complainant establishes rights in a mark upon demonstrating it has
registered the mark with an appropriate governmental authority. Here, Complainant has registered its WEDDING
CHANNEL and WEDDINGCHANNEL.COM marks with the United States Patent and
Trademark Office, which establishes Complainant’s rights in the marks under the
Policy.
See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that the 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); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
Another’s trademark that is
added to a complainant’s mark within a domain name, and that directly relates
to the complainant’s goods or services, does not vanquish the confusing
similarity that is created by the incorporation of the mark. In the instant case, the domain name <macys-weddingchannel.com>
incorporates
Complainant’s WEDDING CHANNEL and WEDDINGCHANNEL.COM marks in their entireties
and has merely added the MACY’S mark. Complainant
has a limited license to use the MACY’S mark from its business partner. See G.D. Searle & Co. v. Paramount Mktg.,
FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other
well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the
capacity of the disputed domain name to confuse Internet users, but actually
“adds to the potential to confuse”); 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 fact that
Respondent has inserted a hyphen to separate the MACY’S mark from Complainant’s
WEDDINGCHANNEL.COM mark is immaterial under the Policy in determining the
confusing similarity that may exist between a mark and domain name. See
Chernow Commun. Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“[T]he use
or absence of punctuation marks, such as hyphens, does not alter the fact that
a name is identical to a mark."); see
also Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) ( “[The]
addition of a hyphen to the registered mark is an insubstantial change. Both
the mark and the domain name would be pronounced in the identical fashion, by
eliminating the hyphen."); see also
InfoSpace.com v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“The domain name
‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The
addition of a hyphen and .com are not distinguishing features.”).
Therefore,
Complainant has established Policy ¶ 4(a)(i).
In the absence
of a Response, the Panel may accept all reasonable allegations set forth in the
Complaint as true. See Vert. 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); 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).
In addition, the
absence of a Response may be construed as an implicit admission that Respondent
lacks rights and legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’
failure to respond can be construed as an admission that they have no
legitimate interest in the domain names); see
also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s reasonable
allegations are true.”).
There is no evidence in the
record that indicates Respondent is commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and
its failure to imply that Respondent is commonly known by the disputed domain
name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); 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").
Respondent has
registered a domain name that is confusingly similar to Complainant’s marks for
the purpose of hosting a website that offers a variety of links to third-party
websites offering similar goods and services as those offered under
Complainant’s marks. Such use is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See 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); see also Coryn
Group, Inc. v. Media Insight,
FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that respondent was not using domain names for a bona fide
offering of goods or services nor a legitimate noncommercial or fair use
because Respondent used the names to divert Internet users to a website that
offered competing services with those offered by the complainant under its
marks); see also Ultimate
Electronics, Inc. v. Nichols,
FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that respondent's “use of the domain name (and Complainant's mark) to
sell products in competition with Complainant demonstrates neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
name”).
Therefore, Complainant has
established Policy ¶ 4(a)(ii).
Policy ¶
4(b)(iv) is established when a respondent has registered and used a domain name
to intentionally attempt to attract Internet users to its website for
commercial gain by creating a likelihood of confusion with a complainant’s
mark. The act of hosting a website
establishes that a respondent has intentionally attempted to attract Internet
users to its website. Respondent’s website
source code has indicated that the links attached to Respondent’s website are
provided by Overture, a well-known pay-per-click search engine company. Therefore, it is reasonable to assume in the
absence of a Response that Respondent is commercially gaining from the use of
the domain name. The fact that
Respondent registered a domain name confusingly similar to Complainant’s marks
and used it to host a website that offers links to third-party sites that offer
similar goods and services as those offered by Complainant under its marks is
sufficient to find that Respondent has created a likelihood of confusion with
Complainant’s marks. Therefore,
Respondent has violated 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 Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally
attempted to attract Internet users to his website for commercial gain by
creating a likelihood of confusion with Complainant’s mark and offering the
same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc.,
D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv)
where Respondent initially used the domain name at issue to resolve to a
website offering similar services as Complainant into the same market); see also 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 TM Acquisition Corp. v. Carroll,
FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent
used the domain name, for commercial gain, to intentionally attract users to a
direct competitor of Complainant).
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <macys-weddingchannel.com>
domain name be TRANSFERRED from
Respondent to Complainant.
James A. Carmody, Esq.,
Panelist
Dated:
September 21, 2004
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