Jaclyn Smith and Jaclyn Smith
International, Inc. v. Unasi, Inc.
Claim
Number: FA0507000522853
Complainant’s
are Jaclyn Smith and Jaclyn Smith International, Inc., collectively, (“Complainant”), represented by Stephen J. Strauss, of Fulwider Patton Lee & Utecht, LLP, 6060 Center Drive, Tenth Floor, Los Angeles, CA 90045. Respondent is Unasi Inc. (“Respondent”),
Galerias Alvear 3, Zona 5, Panama 5235, Panama.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <jaclynsmithhome.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
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 July
22, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 22, 2005.
On
July 25, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain name <jaclynsmithhome.com>
is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. 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
July 26, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 15, 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@jaclynsmithhome.com by e-mail.
Having
received no Response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 24, 2005, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <jaclynsmithhome.com>
domain name is confusingly similar to Complainant’s JACLYN SMITH mark.
2. Respondent does not have any rights or
legitimate interests in the <jaclynsmithhome.com> domain name.
3. Respondent registered and used the <jaclynsmithhome.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant’s Jaclyn Smith and Jaclyn Smith
International, Inc., is one
of the most recognized and famous personalities in the world. Complainant is an internationally recognized
designer of clothing and domestic products.
Apparel Industry authority, Women’s Wear Daily reported that the
Complainant’s line of apparel had the highest consumer awareness of any private
label apparel brand in the United States.
Complainant
holds numerous registrations with the United States Patent and Trademark Office
(“USPTO”) for the JACLYN SMITH mark (E.g. No. 1,382,436 issued February
11, 1986; Reg. No. 1,532,841 issued April 4, 1989; Reg. No. 1,921,873 issued
September 26, 1995).
Respondent
registered the <jaclynsmithhome.com> domain name on January 11,
2005. Respondent’s domain name resolves
to a website that features links to third-party commercial websites that
directly compete with Complainant’s business.
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. The Panel is entitled to accept all reasonable allegations and
inferences set forth in the Complaint as true unless the evidence is clearly
contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
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); see also 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.").
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
asserts that it has established rights in the JACLYN SMITH mark through
registration with the United States Patent and Trademark Office (“USPTO”). See Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's
federal trademark registrations establish Complainant's rights in the BLIZZARD
mark.”); see
also Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Moreover, the <jaclynsmithhome.com>
domain name is confusingly similar to Complainant’s JACLYN SMITH mark
because the domain name incorporates Complainant’s mark in its entirety and
merely adds the common word “home.”
This change is not enough to overcome the confusingly similar aspects of
Respondent’s domain name 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 the
complainant combined with a generic word or term); 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); see also Nintendo of Am. Inc. v. This Domain Is For Sale,
D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and
confusingly similar the complainant’s GAME BOY mark, even though the domain
name is a combination of two descriptive words divided by a hyphen).
Furthermore,
Respondent’s <jaclynsmithhome.com> domain name is confusingly
similar to Complainant’s JACLYN SMITH mark because the domain name incorporates
Complainant’s mark in its entirety and deviates with the addition of the
generic top-level domain ‘.com.’ The
addition of a generic top-level domain does not negate the confusingly similar
aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); 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.
Respondent does
not have rights or legitimate interests in the <jaclynsmithhome.com> domain
name. When a complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii), the burden shifts to the respondent to prove that it has rights or
legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent does not have rights or legitimate interests in the disputed domain
name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent does not
have rights or legitimate interests with respect to the domain, the burden
shifts to the respondent to provide credible evidence that substantiates its
claim of rights or legitimate interests in the domain name); 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 the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such rights or
legitimate interests do exist); see also
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
Moreover,
Respondent is not commonly known by the <jaclynsmithhome.com> domain
name. Thus, the Panel may conclude that
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 interest 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 Hartford
Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29,
2000) (finding that the respondent has no rights or legitimate interests in
domain names because it is not commonly known by the complainant’s marks and
the respondent has not used the domain names in connection with a bona fide
offering of goods and services or for a legitimate noncommercial or fair use).
Furthermore,
Respondent is using the <jaclynsmithhome.com> domain name to
operate a website featuring commercial links to third-party websites. The Panel may find that Respondent’s use of
a domain name that is confusingly similar to Complainant’s mark to divert
Internet users to Respondent’s website for its own commercial gain does not
constitute 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 TM Acquisition Corp. v. Sign Guards, FA
132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that respondent’s diversionary
use of complainant’s marks to send Internet users to a website which displayed
a series of links, some of which linked to competitors of complainant, was not
a bona fide offering of goods or services); see also Yahoo! Inc. v. Web Master, FA 127717
(Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a
confusingly similar domain name to operate a pay-per-click search engine, in
competition with the complainant, was not a bona fide offering of goods
or services); see also Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002) (finding that, because the
respondent's sole purpose in selecting the domain names was to cause confusion
with the complainant's website and marks, its use of the names was not in
connection with the offering of goods or services or any other fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
third-party commercial websites. Respondent registered and used the disputed
domain name in bad faith under Policy ¶ 4(b)(iv), as Respondent is using the <jaclynsmithhome.com>
domain name to intentionally
attract, for commercial gain, Internet users to its website, by creating a
likelihood of confusion with Complainant as to the source, sponsorship,
affiliation or endorsement of its website. See H-D Michigan, Inc. v. Petersons Auto, FA 135608 (Nat.
Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered
and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s
registration and use of the infringing domain name to intentionally attempt to
attract Internet users to its fraudulent website by using the complainant’s
famous marks and likeness); see also G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website).
Furthermore,
Respondent has used the <jaclynsmithhome.com> domain name, which
contains Complainant’s mark, to redirect Internet users to third-party websites
featuring home furnishing products that compete with Complainant’s
business. This suggests that Respondent
had actual knowledge of Complainant’s rights in the mark when it registered the
domain name and chose the disputed domain name based on the goodwill
Complainant has acquired in its JACLYN SMITH mark. Furthermore, Complainant’s registration of the JACLYN SMITH mark
with the USPTO bestows upon Respondent constructive notice of Complainant’s
rights in the mark. Respondent’s
registration of a domain name containing Complainant’s mark in spite of
Respondent’s actual or constructive knowledge of Complainant’s rights in the
mark is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See 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 Am. Online, Inc.
v. Miles, FA 105890 (Nat. Arb. Forum May
31, 2002) (“Respondent is using the domain name at issue to resolve to a
website at which Complainant’s trademarks and logos are prominently
displayed. Respondent has done this
with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that
which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding
that because the link between the complainant’s mark and the content advertised
on the respondent’s website was obvious, the respondent “must have known about
the Complainant’s mark when it registered the subject domain name”); 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.”).
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 <jaclynsmithhome.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
September 7, 2005
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