Blair Holdings, Inc. v. Watch My Domain
c/o Nick M.
Claim Number: FA0507000526028
PARTIES
Complainant
is Blair Holdings, Inc. (“Complainant”),
represented by Carolina A. Fornos,
of Pillsbury Winthrop Shaw Pittman LLP,
1540 Broadway, New York, NY 10036.
Respondent is Watch My Domain c/o
Nick M. (“Respondent”), 522
Shantivan, MHADA, Oshiwara, Andheri (w), Mumbai, Maharashtra, 400053 IN.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <blairclothing.com>,
registered with Lead Networks Domains
Pvt. Ltd.
PANEL
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.
Olivier
ITEANU, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 1, 2005.
On
August 7, 2005, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the
National Arbitration Forum that the <blairclothing.com>
domain name is registered with Lead Networks Domains Pvt. Ltd. and that the
Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is
bound by the Lead Networks Domains Pvt. 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
August 8, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 29,
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@blairclothing.com by e-mail.
A
timely Response was received and determined to be complete on August 29, 2005.
A
timely Additional Submission was received from Complainant on September 2,
2005.
A
timely Additional Submission was received from Respondent on September 7, 2005.
On September 8, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Olivier ITEANU, Esq. as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
In
its Complaint, Complainant contends that it is the owner of numerous trademarks
registered federally in the United States of America, for the BLAIR mark with
specifications for jewelry, men's apparel, retail store services, mail order
services for apparel or giftware, the BLAIR BOUTIQUE mark for women's apparel,
the BLAIR-PLUS mark for soil and stain repellant finish for slacks, the
BLAIR-SUEDE mark for men's and women's apparel, the LADY BLAIR mark for women's
apparel, and the JOHN BLAIR mark for neckties and slacks, and for men's and
boy's shirts, sweaters and sports jackets.
Complainant
contends that it is the owner of the <blair.com> and
<blairclothing.biz> domain names, that its previously owned the disputed
domain name, <blairclothing.com>, but that it "inadvertently
lapsed". Complainant argues that Respondent registered the disputed domain
name "opportunistically" and now offers to sell it for a profit.
Complainant
argues that BLAIR is a famous brand and provides samples of advertisement of
the brand in the U.S., that 90 % of its sales are of apparel, and that
Complainant heavily advertises the BLAIR marks through the Internet, that it is
the owner of the <blair.com> domain name and that it has operated its
e-commerce Web site since the third quarter of 2000, with Internet sales being
currently 16% of total net sales.
Complainant
contends that the disputed domain name, <blairclothing.com>, is
confusingly similar to its marks, the BLAIR mark being entirely reproduced, and
that the addition of the generic word "clothing" does not avoid the
similarity but rather aggravates it because of the main activity of Complainant
is in such area.
Complainant
contends that Respondent has no legitimate rights or interests in the domain
name,
-
that the
disputed domain name is being "parked" and makes no mention of any
specific goods or services being offered by Respondent other than third party
links (which appear to be a "pay per click" service intended to allow
the domain name owners to "earn money from [them] without needing to
develop your own site"),
-
that these
links lead to Web sites of competitors of Complainant, and that a link to
Complainant's Web site can also be found,
-
that the
Web page contains a link which mentions that "This domain name may be for
sale by its owner!",
-
that this
link leads to a Web page confirming that "blairclothing.com is for
sale" and inviting the interested purchaser to enter a sum of money in
Euros for buying the disputed domain name,
-
that
Respondent is not commonly known by "blairclothing" or
"blairclothing.com,"
-
that it
holds passively the disputed domain name,
-
that it is
not authorized to use the BLAIR marks.
Complainant
contends that the disputed domain name was registered and is being used in bad
faith. Complainant argues, especially, that:
-
BLAIR marks
are recognized and relied upon by the public in the United States and the trade
worldwide as identifying Complainant's goods and services,
-
that
Complainant is offering the disputed domain name for sale to Complainant or to
a competitor of Complainant for valuable consideration,
-
that
Respondent is engaged in a pattern of bad faith conduct, citing the case of Meade
Instruments Corp. v. Drop One, FA 423017 (Nat. Arb. Forum Apr. 12, 2005)
Complainant
requests the disputed domain name to be transferred to it.
B.
Respondent
Respondent
claims that he has no knowledge of Complainant's trademark for BLAIR because
Respondent is based in India.
Respondent
claims that Complainant has improperly accused him of having "opportunistically"
registered the disputed domain name after it had "inadvertently
lapsed." Specifically, Respondent, by using cached Web pages from the
"Waybackmachine" service, provides documentary evidence that on July
27, 2003 (i.e., before its registration of the disputed domain name which was
done on November 22, 2003), the <blairclothing.com> domain name
was already used to direct users to another "pay per click" service.
Respondent
argues that the disputed domain name was in fact "abandoned" by
Complainant for a period of over two years.
Respondent
argues that Complainant has not proved that Respondent had intentions to sell
the disputed domain name.
Respondent
requests that Complainant shall be denied any relief and that Respondent shall
be allowed to keep the disputed domain name.
C.
Complainant's Additional Submission
Complainant
alleges that it has offices in India, according to a declaration of Blair
Corporation's trademark manager, in Gurgaon (Haryana)
Complainant
argues that the BLAIR trademarks cannot be possibly legally considered as
abandoned, in particular in regards to of United States trademark law.
Complainant
argues that Respondent has intentionally attempted to attract Internet users to
its Web site for commercial gain by creating a likelihood of confusion with
Complainant's mark as to the source, sponsorship or affiliation, which
evidences bad faith.
D.
Respondent's Additional Submission
Respondent
alleges that Complainant has hidden in its initial Complaint that, among the
sponsored links, a link to Complainant's Web site is included, and that the
inclusion of such link proves that Respondent is not trying to disrupt the
business of Complainant.
FINDINGS
As preliminary considerations, the Panel
would like to discuss the following issues, which are developed by the parties
in their Submissions, but are not directly relevant in the context of the
Policy, and, as a consequence, the Panel chooses not to take into account.
The question whether or not the disputed
domain name had "inadvertently lapsed" or not, and of whether or not
it was immediately registered by Respondent after becoming free or was acquired
by Respondent after it was "snapped" by a third party are not
circumstances which the Panel believe are relevant in the context of the Policy,
or, in any case, are not circumstances which are determining factors by
themselves. The Panel also questions, more generally, whether they constitute
valid arguments under the Policy or not. Nevertheless, it is the opinion of the
Panel that each party has failed to provide sufficient documentary evidence as
to these facts and the Panel chooses to reject them as such.
Subsequently, in its response to
Respondent's arguments stating that the disputed domain name should be
considered as "abandoned" by Complainant, Complainant argues that the
BLAIR trademarks cannot be possibly legally considered as abandoned, in
particular in regards to United States trademark law. The Panel believes it is
not in the scope of its competence as per the Policy, to evaluate such facts,
and that the Panel shall be only be required to assess the provided documentary
evidence of the existence of a trademark in the sense of the Policy.
The Panel would also like to clarify
that, contrary to the declaration of Respondent, who argues that Complainant
has hidden in its initial Complaint that, among the sponsored links, a link to
Complainant's Web site was done, this fact is, on the contrary specifically
mentioned (in Section 5.b.6 of the Complaint), Complainant did mention this fact
as proof that Respondent had knowledge of the existence of Complainant. The
Panel believes this is a mere mistake of Respondent and this issue will not be
further discussed hereafter.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the
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 is Blair Holdings, Inc. in
these proceedings. Complainant provides evidence of marks that it claims to
own. A total of twelve United States Patent and Trademark Office registrations
are enclosed in Exhibit. The Panel notices that eleven of the marks are
mentioned as being registered by third parties, namely "New Process
Company" and "Blair Corporation" (which the Panel believes are
or may be subsidiaries of Complainant according to Complainant's declarations).
The Panel believes that it lacks information as to how these marks, which
Complainant claims to be "Blair's Marks", could be effectively owned
by Complainant, or how these marks could be, as mentioned in a written
declaration of an officer of the Company Blair Corporation provided in Complainant's
Exhibits, licensed by Blair Holdings, Inc. to Blair Corporation (which implies
that Blair Holdings, Inc. should hold them in the first place).
One of the registration certificates is,
nevertheless, effectively in the name of Complainant Blair Holdings, Inc. in
these proceedings, and thus the Panel considers that Complainant has provided
documentary evidence of its ownership of at least one mark as required by the
UDRP Policy, if not of the others.
The Panel further considers that the
disputed domain name, <blairclothing.com>, is indeed confusingly
similar to the BLAIR mark for the purpose of the Policy, in view that the mark
is entirely reproduced, that the name "clothing" refers to a generic
industrial activity and that the distinctive element remains "blair."
The addition of "clothing" indeed adds to the confusion in view of
the fact that Complainant's activity is centered in the clothing industry. 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 Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept.
22, 2000) (finding confusing similarity where the respondent’s domain name
combines the complainant’s mark with a generic term that has an obvious
relationship to the complainant’s business).
The Panel thus considers that the domain
name registered by Respondent is identical or confusingly similar to a trademark
in which Complainant has rights.
Complainant has established a prima facie case that Respondent does
not have any rights or legitimate interests in the disputed domain name. Once
Complainant makes a prima facie case
in support of its allegations, the burden shifts to Respondent to show that it
does have rights or legitimate interests pursuant to Policy 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1,
2002).
To fight this prima facie case, Respondent has not provided any explanation of
its reasons for choosing to register a domain name such as <blairclothing.com>,
comprised of the term "blair" and the term "clothing".
Respondent uses a "pay per
click" parking service as a way to generate revenue without having to
develop its own Web site, such revenue being generated only because of the
traffic generated by the association of the words "blair" and
"clothing." Such interest cannot be legitimate in the sense of the
Policy, in view of the Panel's findings relating to bad faith. See WeddingChannel.com Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or
services as contemplated by the Policy).
The disputed domain name was registered
by Respondent on November 22, 2003 according to the WHOIS information available
at the competent Registrar.
At that time Complainant was already
operating an E-commerce Website under the <blair.com> domain name for
selling apparel online, an E-commerce Website being operated by Complainant
since the third quarter of 2000.
Respondent claims that it did not know
Complainant's trademarks because he lives in India.
Respondent contradictorily states that it
did not have knowledge of Complainant’s BLAIR marks and, at the same time, that
"the only consideration for the Respondent to acquire the domain name was
that several TLDs of the domain name were registered and held by different
registrants" (see Response section 5). Indeed, the Panel believes that such
statement implies that Respondent had perfect knowledge of the existence of the
<blair.com> domain name, and of its use by Complainant for selling men's
and women's apparel products online and of the value of the disputed domain
name, <blairclothing.com>.
In view of the peculiar characteristics
of the domain name, which is formed by the association of the words
"blair" and "clothing," and of the fact that Complainant
was the owner of the <blair.com> domain name and developed its activity
online through a Website dedicated to selling apparel, it is the opinion of the
Panel that Respondent cannot seriously state that he ignored the existence of
the <blair.com> domain name, of its exploitation by Complainant, of the
fact that the disputed domain name, <blairclothing.com>, describes
the activity of Complainant and its goodwill and marks and could not be
possibly selected "by chance." Registration of a domain name that is
confusingly similar to another’s mark, despite actual or constructive knowledge
of the mark holder’s rights, 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).
Thus,
it is the Panel's opinion that the disputed domain name was registered in bad
faith.
The domain name is being used with a
"pay per click" service, which displays, as the homepage of the
address <blairclothing.com>, what appears to be a collection of
sponsored links relating to "fashion."
According to the description of the
"pay per click" service, "for every click on an ad link you will
earn from 0.03 to 1.50 Euros."
In
view of the above mentioned findings, the Panel considers that Respondent is
using the domain name to intentionally attract, for commercial gain, Internet
users to the web site at <blairclothing.com> artificially through
the parking service, diverting traffic which only exists because of the
existence of the <blair.com> Web site that offers clothes. See 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).
Also, the parking service has been
clearly set by Respondent to answer queries related to "fashion"
related sponsored links as shown by the printouts of the
<blairclothing.com> page.
As ascertained by Complainant, an offer
to buy the domain name can be made through the "pay per click"
service in a Web page stating clearly "blairclothing.com is for
sale".
The interested purchaser is requested to
enter a sum of money in Euros. Though a direct offer was not made by
Respondent, it is clear that Respondent has set the parking service to receive
offers from prospective buyers. In view of the circumstances of this case, it
seems highly unlikely to the Panel that Respondent would accept any price close
to documented out-of-pocket costs directly related to the domain name and that
Respondent is very much conscious of the value of the disputed domain name. See
Am. Anti-Vivisection Soc’y v. “Infa dot
Net” Web Serv., FA 95685 (Nat.
Arb. Forum Nov. 6, 2000) (“[G]eneral offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith.”).
Thus, it is the Panel's opinion that the
disputed domain name is being used in bad faith.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blairclothing.com> domain name
be TRANSFERRED from Respondent to
Complainant.
Olivier ITEANU, Esq., Panelist
Dated: 23rd September 2005
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page