Hancock Fabrics, Inc. v. Forum LLC
Claim
Number: FA0503000447259
Complainant is Hancock Fabrics, Inc. (“Complainant”),
represented by Bruce Smith, One Fashion Way, Baldwyn, MS
38824. Respondent is Forum LLC (“Respondent”), Cpothall, PO
Box 2331, Roseau, Roseau 00152 DM.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <handcockfabrics.com>, registered with Fabulous.com
Pty Ltd.
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.
Hon. Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 29, 2005.
On
March 28, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National
Arbitration Forum that the domain name <handcockfabrics.com> is
registered with Fabulous.com Pty Ltd. and that Respondent is the current
registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is
bound by the Fabulous.com Pty Ltd. 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
March 30, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 19, 2005 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@handcockfabrics.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
April 22, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <handcockfabrics.com>
domain name is confusingly similar to Complainant’s HANCOCK FABRICS mark.
1. Respondent does not have any rights or
legitimate interests in the <handcockfabrics.com> domain name.
2. Respondent registered and used the <handcockfabrics.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
used the HANCOCK FABRICS mark since 1961.
The mark has been used in connection with a variety of retail fabric
store services. On June 2, 1998,
Complainant registered the mark with the U.S. Patent and Trademark Office (Reg.
No. 2,161,840). The mark was registered
in connection with:
retail fabric store services featuring
fabrics, home sewing accessories, notions, patterns, trimmings, crafts, and the
like; wholesale services featuring fabrics, home sewing accessories, notions,
patterns, trimmings, crafts, and the like; and for consulting services related
to the establishment and operation of retail fabric stores.
Respondent
registered the <handcockfabrics.com> on June 9, 2002. The domain name resolves to a website that
links Internet users to a variety of different websites. Various hyperlinks are posted at the
resolved website including “fabrics” and “curtains.” When Internet users click on these hyperlinks they are directed to
other commercial websites related to these categories.
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
(1) Respondent has no rights or legitimate
interests in respect of the domain name; and
(2) the domain name has been registered and
is being used in bad faith.
The registration
of a mark with a legitimate governmental authority establishes a presumption of
valid rights in the mark pursuant to Policy ¶ 4(a)(i). Complainant has registered the HANCOCK
FABRICS mark with the U.S. Patent and Trademark Office. Therefore, Complainant has established a
presumption of valid rights in the HANCOCK FABRICS mark pursuant to Policy ¶
4(a)(i). 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).
Panels have found that a
domain name is confusingly similar to a complainant’s mark where the domain
name incorporates a complainant’s mark in its entirety and simply adds a single
letter to the mark. In the instant
case, the <handcockfabrics.com> domain name incorporates
Complainant’s HANCOCK FABRICS mark in its entirety and has simply added the
letter “d” to the mark. Consistent with
prior decisions under the Policy, and in light of Respondent’s failure to
respond, the Panel finds that the disputed domain name is confusingly similar
to Complainant’s mark. See Am.Online,
Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that
Respondent’s domain name, <americanonline.com>, is confusingly similar to
Complainant’s famous AMERICA ONLINE mark); see also Am. Airlines, Inc. v. Data Art Corp., FA 94908 (Nat. Arb. Forum July 11, 2000)
(finding <americanairline.com> "effectively identical and certainly
confusingly similar" to Complainant's AMERICAN AIRLINES registered marks).
Complainant has established
Policy ¶ 4(a)(i).
Respondent’s
failure to respond is construed as an implicit admission that it 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.”).
Additionally, in
the absence of a response, the Panel may accept all reasonable allegations in
the Complaint, unless clearly contradicted by the evidence. 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 the complainant’s reasonable allegations and inferences
as 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).
Domain names
that are identical or confusingly similar to a complainant’s mark, which are
used to market goods or services that compete with those offered under the
complainant’s mark, are not being used in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i). In the instant case, the <handcock.com>
domain name resolves to a website that contains links to third-party
websites that market products relating to “fabrics” and “curtains.” Complainant’s HANCOCK FABRICS mark is used
in connection with retail fabric store services. See USPTO
Reg. No. 2,161,840. Since Respondent’s
domain name is used to market fabrics, which Complainant’s mark is used in
connection with, the disputed domain name is not being used for a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i). 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).
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. Lee 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 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 is
using the disputed domain name in a commercial manner. Therefore, Policy ¶ 4(c)(iii) does not
apply. See Schering Corp. v. NGS Enters., LTD,
FA 198013 (Nat. Arb.
Forum Nov. 7, 2003) (“[T]he Panel
concludes that Respondent's use…is plainly commercial in nature, such that
Policy ¶ 4(c)(iii) is in fact inapplicable to this dispute.”); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan. 10,
2003) (“Evidence indicates that Respondent is profiting
from the use of Complainant's mark, therefore Policy ¶ 4(c)(iii)’s
'noncommercial or fair use' criteria are inapplicable.”).
Complainant has
established Policy ¶ 4(a)(ii).
If a
respondent uses a domain name, and has intentionally attempted to attract, for
commercial gain, Internet users to its web site or other on-line location, by
creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship, affiliation, or endorsement of its web site, bad faith
registration and use may be established pursuant to Policy ¶ 4(b)(iv).
In the
instant case, Respondent registered a domain name that is confusingly similar
to Complainant’s mark. Respondent then
used that confusingly similar domain name to resolve to a website that marketed
products that compete with Complainant’s services offered under its HANCOCK
FABRICS mark, presumably for commercial gain.
Respondent has also failed to rebut Complainant’s assertion that
Respondent, in fact, registered and used the disputed domain name in bad
faith. In these circumstances, and
consistent with prior decisions under the Policy, the Panel finds that
Respondent is in violation of Policy ¶ 4(b)(iv). See 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 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 pursuant to Policy ¶ 4(b)(iv)).
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 <handcockfabrics.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
May 3, 2005