Zier, Inc. v. Domain Deluxe
Claim
Number: FA0504000465204
Complainant is Zier, Inc. (“Complainant”), represented
by David A. Gast, of Malloy and Malloy, P.A.,
2800 S.W. Third Avenue, Miami, FL 33129. Respondent is Domain Deluxe (“Respondent”), 16/F Cheung Kong Center, Hong Kong,
HK.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <uauniform.com> and
<uniformsadvantage.com>, registered with The Registry At Info
Avenue d/b/a IA Registry.
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 electronically on April
19, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 22, 2005.
On
April 26, 2005, The Registry At Info Avenue d/b/a IA Registry confirmed by
e-mail to the National Arbitration Forum that the domain names <uauniform.com>
and <uniformsadvantage.com> are registered with The Registry
At Info Avenue d/b/a IA Registry and that Respondent is the current registrant
of the names. The Registry At Info Avenue d/b/a IA Registry has verified that
Respondent is bound by the The Registry At Info Avenue d/b/a IA Registry 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
April 27, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 17, 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@uauniform.com and postmaster@uniformsadvantage.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
May 23, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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 <uauniform.com> and
<uniformsadvantage.com> domain names are confusingly similar to
Complainant’s UA and UNIFORM ADVANTAGE marks.
2. Respondent does not have any rights or
legitimate interests in the <uauniform.com> and <uniformsadvantage.com>
domain names.
3. Respondent registered and used the <uauniform.com>
and <uniformsadvantage.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Zier Inc., is one of the largest retail clothing store chains in the United States.
Complainant maintains twenty-two brick and mortar stores, plus a robust online
and mail order business. Complainant first began using the UNIFORM ADVANTAGE
mark in commerce in 1996, and in 1998, began aggressively advertising and
promoting the abbreviated UA mark. Complainant has spent hundreds of thousands
of dollars on advertising, promoting both its UNIFORM ADVANTAGE and UA marks.
Complainant
has registered the UNIFORM ADVANTAGE mark (Reg. No. 2,344,829 issued April 25,
2000) with the United States Patent and Trademark Office (“USPTO”). Complainant
has also filed an application of the UA mark with the USPTO (Serial No.
76,180,233 filed December 14, 2000.
Respondent
registered the <uauniform.com> domain name on May 8, 2003
and <uniformsadvantage.com> domain name on May 8, 2003.
Respondent’s domain names resolve to a website featuring site search results
and menu listings of vendors offering competing products and services. In
addition, Respondent’s website features pop-up advertisements offering competing
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 rights in the UNIFORM ADVANTAGE mark through registration of the
mark with the USPTO. 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. The respondent has the
burden of refuting this assumption).
Respondent’s <uniformsadvantage.com>
domain name is confusingly similar to Complainant’s UNIFORM ADVANTAGE mark.
Respondent’s <uniformsadvantage.com> domain name incorporates
Complainant’s UNIFORM ADVANTAGE mark in its entirety and merely adds the letter
“s” in the middle of Complainant’s mark. Such a change is not enough to
overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See
Universal City Studios, Inc. v.
HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the
letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark did not change the
overall impression of the mark and thus made the disputed domain name
confusingly similar to it); see also Blue
Cross & Blue Shield Ass’n v. InterActive Communications, Inc.,
D2000-0788 (WIPO Aug. 28, 2000) (finding that a domain name which merely adds
the letter ‘s’ to Complainant’s mark is sufficiently similar to the mark to
cause a likelihood of confusion among the users of Complainant’s services and
those who were to view a web site provided by Respondent accessed through the
contested domain name).
Furthermore, the
addition of the generic top-level domain “.com” is insufficient to negate the
confusing similarity between Respondent’s domain name and Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[T]he
addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without
legal significance since use of a gTLD is required of domain name
registrants.”); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied with regard to the <uniformsadvantage.com>
domain name.
However, with
respect to the <uauniform.com> domain name, the Panel finds that
Complainant has failed to satisfactorily meet its burden. Complainant asserts
that it has established rights in the UA mark through the filing of an
application with the USPTO. The Panel finds that the mere filing of a trademark
application is insufficient to establish rights to a trademark for the purposes
of the Policy. See Amsec Ent. v.
McCall, D2001-0083 (WIPO Apr. 3, 2001) (finding that Complainant’s pending
trademark applications do not establish any enforceable rights to the mark
until a trademark registration is issued); see also Razorbox, Inc. v.
Torben Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (finding that Complainant did not
establish the requisite trademark or common law rights to grant Complainant the
necessary standing for the Panel to find in its favor as Complainant’s pending
trademark application did not, in and of itself, demonstrate trademark rights
in the mark applied for).
A common law
mark is established when a complainant’s mark becomes distinctive and acquires
secondary meaning. See Molecular Nutrition, Inc. v. Network News and
Publ’ns., FA 156715 (Nat. Arb. Forum June 24, 2003) (approving of
and applying the principals outlined in prior decisions that recognized “common
law” trademark rights as appropriate for protection under the Policy “if the
complainant can establish that it has done business using the name in question
in a sufficient manner to cause a secondary meaning identifiable to
Complainant's goods or services.”). Complainant has not submitted sufficient
evidence to show that the public identifies Complainant as the source of
particular products.
Thus, the Panel
determines that Complainant has failed to produce sufficient evidence that it
holds common law rights in the UA mark. See Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284 (eResolution
Sept. 9, 2000) (finding that marks classified as descriptive cannot be
protected unless secondary meaning is proven and to establish secondary meaning
Complainant must show that the public identifies the source of the product
rather than the product itself); see also
Cyberimprints.com, Inc. v. Alberga,
FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that Complainant failed to
prove trademark rights at common law because it did not prove the
CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods
or services or that there was strong customer identification of the mark as
indicating the source of such goods or services).
Furthermore, the
<uauniform.com> domain name Respondent is using, is neither
identical nor confusingly similar to Complainant’s UNIFORM ADVANTAGE mark. Respondent’s
<uauniform.com> domain name combines the letters “ua” and the
generic term “uniform” which is not enough to establish confusing similarity. See
All American Semiconductor, Inc. v. Vasquez FA 434117 (Nat. Arb.
Forum Apr. 15, 2005) (holding that the
fact that the Complainant had rights in the ALL AMERICAN mark did not impute
rights to the subsequent “aa” abbreviation); see also Copart, Inc. v. SalvageNow, D2000-0417 (WIPO June 28, 2000)
(finding that the domain name at issue <copart.net> is not identical to
nor substantially similar to the mark registered and used by the complainant,
CI COPART INC. SALVAGE AUTO AUCTIONS); see
also ISL Mktg. AG v. Ji Young Chung, D2000-0034 (WIPO Apr. 3, 2000) (finding
that, although one may argue that “wc” is an abbreviation for WORLD CUP, it is
not likely the meaning most people would give to those letters).
Consequently,
with respect to the <uauniform.com> domain name, the Panel will
refrain from commenting on the other elements, as Complainant has failed to meet
its burden on the first element. See Creative Curb v. Edgetec Int’l Pty.
Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because
Complainant must prove all three elements under the Policy, Complainant’s
failure to prove one of the elements makes further inquiry into the remaining
element unnecessary). Complainant may
ultimately be able to present appropriate evidence of a secondary meaning in
the mind of the public with samples of dated advertising and affidavits of
third parties or other proofs which are sufficient to convince the USPTO to
register the UA mark or are of the strength necessary to convince a UDRP panel
to find that a common law trademark has been established in Complainant’s UA
claimed mark. That is not the case
today.
Respondent has
failed to respond to the Complaint. Thus, the Panel may accept all reasonable
allegations and assertions set forth by Complainant as true and accurate. See
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure
of a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertion in this regard.”);
see also Vertical Solutions Mgmt., Inc. v. webnet-Mktg., inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to
respond allows all reasonable inferences of fact in the allegations of the
complaint to be deemed true).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may interpret Respondent’s failure to respond
as evidence that Respondent lacks rights and legitimate interests in the <uniformsadvantage.com>
domain name pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name); see also Bank
of Am. Corp. v. McCall,
FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not
only results in its failure to meet its burden, but also will be viewed as
evidence itself that Respondent lacks rights and legitimate interests in the
disputed domain name.”).
Respondent is
using the confusingly similar domain name to direct Internet users to a website
featuring competing goods and services. Such use 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 pursuant to Policy ¶ 4(c)(iii). See DLJ Long
Term Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection
with a bona fide offering of goods and services because Respondent is using the
domain name to divert Internet users to <visual.com>, where services that
compete with Complainant are advertised.”); 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).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names featuring
Complainant’s famous mark. Thus, the Panel finds that Respondent lacks rights
and legitimate interests in the <uniformsadvantage.com> 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 the
respondent’s WHOIS information implies that the respondent is ‘commonly known
by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also Compagnie de Saint Gobain
v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
used the <uniformsadvantage.com> domain name in bad faith pursuant
to Policy ¶ 4(b)(iii) by using the domain name, which contains a confusingly
similar version of Complainant’s UNIFORM ADVANTAGE mark, to direct Internet
users to a website that features competing goods. See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see
also Disney Enters., Inc. v. Noel, FA
198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
respondent's purpose of registration and use was to either disrupt or create
confusion for complainant's business in bad faith pursuant to Policy ¶
4(b)(iii) & (iv).”).
Furthermore, Respondent is
capitalizing on the goodwill of the UNIFORM ADVANTAGE mark by using the disputed
domain name to divert Internet users to a website featuring competing goods.
The Panel infers that Respondent receives click-through fees for redirecting
Internet users to this competing website. Since Respondent is using a domain
name that is confusingly similar to Complainant’s mark, consumers accessing
Respondent’s domain name may become confused as to Complainant’s affiliation
with the resulting website. Thus, the Panel finds that Respondent’s commercial
use of the <uniformadvantage.com> domain name constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if the respondent profits from its diversionary use of the
complainant's mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv);
see also Reuters Ltd. v. Global
Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where
respondent attracted users to a website sponsored by respondent and created
confusion with complainant’s mark as to the source, sponsorship, or affiliation
of that website).
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 for the <uniformsadvantage.com>
domain name.
Accordingly, it
is Ordered that the <uniformsadvantage.com> domain name be TRANSFERRED
from Respondent to Complainant.
However, as for
the <uauniform.com> domain name, Complainant has failed to meet
its requirement under Policy ¶
4(a)(i) to establish rights in the UA mark. Therefore the Complaint relating to
<uauniform.com> is DENIED, without prejudice.
James A. Carmody, Esq., Panelist
Dated:
June 6, 2005
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