Tandy Leather Factory, Inc. v. Kentech, Inc. a/k/a Domain Master
Claim Number: FA0608000783306
Complainant is Tandy Leather Factory, Inc. (“Complainant”), represented by Stephen D. Lawrence, of Loe, Warren, Rosenfield, Kaitcer, Hibbs & Windsor, P.C., P.O. Box 100609, Fort Worth, TX 76185-0609. Respondent is Kentech, Inc. a/k/a Domain Master (“Respondent”), 1st Floor Muya House Kenyatta, P.O.BOX 4276- 30100, Eldoret, Rift Valley 30100 KE.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <leatherfactory.org> and <theleatherfactory.org>, registered with Domain Contender, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 23, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 28, 2006.
On August 23, 2006, Domain Contender, LLC confirmed by e-mail to the National Arbitration Forum that the <leatherfactory.org> and <theleatherfactory.org> domain names are registered with Domain Contender, LLC and that Respondent is the current registrant of the names. Domain Contender, LLC has verified that Respondent is bound by the Domain Contender, LLC 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 September 6, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 26, 2006 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@leatherfactory.org and postmaster@theleatherfactory.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 2, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <leatherfactory.org> domain name is confusingly similar to the THE LEATHER FACTOR mark and the <theleatherfactory.org> domain name is identical to the THE LEATHER FACTORY mark.
2. Respondent does not have any rights or legitimate interests in the <leatherfactory.org> and <theleatherfactory.org> domain names.
3. Respondent registered and used the <leatherfactory.org> and <theleatherfactory.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tandy Leather Factory, Inc., and its predecessors
in interest have operated a retail leathercraft business since 1919. Complainant operates thirty distribution
centers in twenty American states and two Canadian provinces. Complainant also offers its goods and
services on the Internet, at the <leatherfactory.com> and
<tandyleatherfactory.com> domain names.
Complainant has used it’s THE LEATHER FACTORY mark since at least 1980,
and holds a registration with the United States Patent and Trademark Office
(“USPTO”) for the mark (Reg. No. 1,733,486 issued November 17, 1992).
Respondent registered the <leatherfactory.org> domain name on February 6, 2006 and the <theleatherfactory.org> domain name on January 20, 2006. Respondent’s disputed domain names resolve to websites that display links for third-party websites, some of which are in direct competition with Complainant.
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.
The Panel finds that Complainant’s federal registration with the USPTO sufficiently establishes Complainant’s rights in the THE LEATHER FACTORY mark. See 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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 Panel finds that Respondent’s <leatherfactory.org> domain name is confusingly similar to Complainant’s THE LEATHER FACTORY mark under Policy ¶ 4(a)(i). The use of Complainant’s mark with the omission of the first term “the” is not enough to negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name. See Mega Soc. v. LoSasso, FA 215404 (Nat. Arb. Forum Jan. 30, 2004) (finding that the <megasociety.net> and <megasociety.com> domain names were identical or confusingly similar to Complainant's THE MEGA SOCIETY mark); see also Antoun v. Truth Squad, FA 114766 (Nat. Arb. Forum Aug. 21, 2002) (stating that the article "the" is "often added only for grammatical purposes, and may be superfluous to the name itself").
Additionally, the Panel finds that Respondent’s <theleatherfactory.org>
domain name is identical to Complainant’s THE LEATHER FACTORY mark as it
contains Complainant’s mark in its entirety with the adddition of the generic
top-level domain (“gTLD”) “.org” which is not relevant for purposes of
identifying whether a disputed domain name is identical or confusingly similar
to a mark. See Gardline Surveys Ltd.
v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition
of a top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.”); see also Koninklijke Philips Elecs. NV v.
Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name
<philips.org> is identical to the complainant’s PHILIPS mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests in the <leatherfactory.org> and <theleatherfactory.org> domain names. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain names. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant asserts that Respondent is not authorized to use Complainant’s THE LEATHER FACTORY mark and that Respondent is not associated with Complainant in any way. Furthermore, Respondent’s WHOIS information does not suggest that Respondent is commonly known by the <leatherfactory.org> and <theleatherfactory.org> domain names. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel found that the respondent did not have rights in a domain name where the respondent was not known by the mark. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent is using the disputed domain names to operate websites that display links to third-party websites, some of which are in direct competition with Complainant. The Panel finds that Respondent is doing so in order to benefit commercially through the earning of click-through fees, and that such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
The evidence on record indicates that Respondent is using
the disputed domain names to divert Internet users to websites that display
links to third-party websites, some of which are in direct competition with
Complainant. The Panel finds that such
use constitutes disruption and is evidence of bad faith registration and use
under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites); see
also Puckett, Individually v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Moreover, Respondent is using the <leatherfactory.org> and <theleatherfactory.org> domain names to display links to third-party websites, a use that the Panel infers is for the commercial gain of Respondent through the accrual of click-through fees. Additionally, the disputed domain names create a likelihood of confusion as to the source and affiliation of Complainant with the disputed domain names and corresponding websites. Such use constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also 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)).
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 <leatherfactory.org> and <theleatherfactory.org> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 16, 2006
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