Smartbargains.com, L.P. v. Universal
Banner
Claim
Number: FA0412000373634
Complainant is Smartbargains.com, L.P. (“Complainant”),
represented by Seán F. Heneghan, 31 Reading Hill Avenue, Melrose, MA
02176. Respondent is Universal Banner (“Respondent”), 7095
Hollywood Blvd. #772, Los Angeles, CA 90046.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <smartbargainsdirect.com>, <smartbargainsshop.com>,
<esmartbargains.com>, <buysmartbargains.com>, <onlinesmartbargains.com>
and <shopsmartbargains.com>, registered with Go Daddy Software,
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
30, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 3, 2004.
On
December 1, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <smartbargainsdirect.com>,
<smartbargainsshop.com>, <esmartbargains.com>, <buysmartbargains.com>,
<onlinesmartbargains.com> and <shopsmartbargains.com>
are registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the names. Go Daddy Software, Inc. has verified that Respondent
is bound by the Go Daddy Software, 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
December 6, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of December 27, 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@smartbargainsdirect.com,
postmaster@smartbargainsshop.com, postmaster@esmartbargains.com,
postmaster@buysmartbargains.com, postmaster@onlinesmartbargains.com and
postmaster@shopsmartbargains.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 30, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Tyrus R. Atkinson, Jr., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <smartbargainsdirect.com>,
<smartbargainsshop.com>, <esmartbargains.com>, <buysmartbargains.com>,
<onlinesmartbargains.com> and <shopsmartbargains.com>
domain names are confusingly similar to Complainant’s SMARTBARGAINS mark.
2. Respondent does not have any rights or
legitimate interests in the <smartbargainsdirect.com>, <smartbargainsshop.com>,
<esmartbargains.com>, <buysmartbargains.com>, <onlinesmartbargains.com>
and <shopsmartbargains.com> domain names.
3. Respondent registered and used the <smartbargainsdirect.com>,
<smartbargainsshop.com>, <esmartbargains.com>, <buysmartbargains.com>,
<onlinesmartbargains.com> and <shopsmartbargains.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
SmartBargains.com, L.P., is a wholly owned subsidiary of SmartBargains,
Inc. Since as early as June 2, 2000,
Complainant has used the SMARTBARGAINS mark in connection with online retail
store services, offering high-quality, brand-name merchandise at discount
prices. Complainant specializes in a
wide range of products, from apparel and accessories to fine jewelry,
electronics and home furnishings. Complainant
is the owner of the SMARTBARGAINS mark by and through assignment from its
predecessor in interest, SmartBargains, Inc., who registered the mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. Nos. 2,672,735 issued
January 7, 2003; 2,606,658 issued August 13, 2002; 2,676,170, issued January
21, 2003). Complainant also owns
trademark registration rights for its SMARTBARGAINS mark in the European Union
(Reg. No. 1,960,558 issued May 6, 2002).
Respondent
registered the <smartbargainsdirect.com>, <smartbargainsshop.com>,
<esmartbargains.com>, <buysmartbargains.com>, <onlinesmartbargains.com>
and <shopsmartbargains.com> domain names on May 29, 2004. Respondent’s domain names resolve to a
websites that feature retail services that directly compete with Complainant’s
online retail 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 rights in the SMARTBARGAINS mark through registration with the
USPTO and continuous use of the mark in commerce. 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.).
Respondent’s <smartbargainsdirect.com>,
<smartbargainsshop.com>, <buysmartbargains.com>, <onlinesmartbargains.com>
and <shopsmartbargains.com> domain names are confusingly similar
to Complainant’s SMARTBARGAINS mark because they incorporate the mark in its
entirety and merely add various generic marketing terms, such as “direct,”
“shop,” “buy,” “online” and “shop.” The
mere addition of these generic “buzzwords” does not negate the confusing
similarity between Respondent’s domain names and Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of
Complainant combined with a generic word or term); see also Broadcom Corp. v. Domain Depot, FA 96854
(Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain
name is confusingly similar to Complainant’s BROADCOM mark); see also State Farm Mut. Auto. Ins. Co. v. Kaufman,
FA 94335 (Nat. Arb. Forum Apr. 24, 2000) (finding that <statefarmdirect.com>
is confusingly similar to Complainant’s registered mark); see also Westfield Corp. v. Hobbs, D2000-0227
(WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name
confusingly similar because the WESTFIELD mark was the dominant element).
Furthermore, the
addition of the letter “e” before Complainant’s mark in Respondent’s <esmartbargains.com>
domain name is insufficient to negate a finding of confusing similarity between
the domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct.
19, 2000) (finding that the domain names <ecanadiantire.com> and
<e-canadiantire.com> are confusingly similar to Canadian Tire’s
trademarks); see also Int’l Data
Group, Inc. v. Maruyama & Co., Ltd.,
D2000-0420 (WIPO June 26, 2000) (finding that the domain name
<ecomputerworld.com> is confusingly similar to Complainant’s mark,
COMPUTERWORLD).
Moreover, the
mere addition of the generic top-level domain “.com” is not enough to overcome
a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space,
SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶
4(a)(i) analysis”); see also Kioti
Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept all of complainant’s reasonable allegations and inferences as
true); see also Wells Fargo & Co. v. Shing, FA
205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a
complaint allows a panel to make reasonable inferences in favor of a
complainant and accept complainant’s allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests in the disputed domain names. 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.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain names. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s marks.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii). 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 Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate
interests where (1) Respondent is not a licensee of Complainant; (2)
Complainant’s prior rights in the mark precede Respondent’s registration; (3)
Respondent is not commonly known by the domain name in question).
Moreover,
Respondent has used the disputed domain names to direct Internet users
to competing retail websites. Such
competing use of domain names confusingly similar to Complainant’s
SMARTBARGAINS mark 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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t
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
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that Respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and used the disputed domain names in bad faith pursuant to Policy ¶
4(b)(iii) by registering domain names that are confusingly similar to
Complainant’s mark and using them to operate competing retail services
websites. See EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation
from Complainant's marks suggests that Respondent, Complainant’s competitor,
registered the names primarily for the purpose of disrupting Complainant's
business); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business).
Additionally,
the Panel finds that Respondent had actual or constructive knowledge of
Complainant’s SMARTBARGAINS mark when registering the disputed domain names
because Complainant had registered the mark with the USPTO. Moreover, the fact that Respondent uses the
domain names to operate competing retail service websites is further evidence
that Respondent had actual or constructive knowledge of Complainant’s mark when
registering the disputed domain names.
Therefore, Respondent registered and used the domain names in bad faith
pursuant to Policy ¶ 4(a)(iii). See
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 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 Orange Glo Int’l
v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”).
Furthermore, Respondent
uses the disputed domain names to operate retail service websites that directly
compete with Complainant. Such
commercial use of the domain names is evidence of bad faith registration and
use 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 Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000)
(finding that Respondent acted in bad faith by registering the
<fossilwatch.com> domain name and using it to sell various watch brands
where Respondent was not authorized to sell Complainant’s goods).
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 <smartbargainsdirect.com>, <smartbargainsshop.com>,
<esmartbargains.com>, <buysmartbargains.com>, <onlinesmartbargains.com>
and <shopsmartbargains.com> domain names be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
January 13, 2005
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