Camuto Consulting, Inc. v Belize Domain WHOIS Service Lt
Claim Number: FA1002001310403
Complainant is Camuto Consulting, Inc. (“Complainant”), represented by Jessica
Elliott Cardon, of Camuto Group,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <vincecamutoshoes.com>, registered with Directnic, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On February 26, 2010, Directnic, Ltd confirmed by e-mail to the National Arbitration Forum that the <vincecamutoshoes.com> domain name is registered with Directnic, Ltd and that Respondent is the current registrant of the name. Directnic, Ltd has verified that Respondent is bound by the Directnic, 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 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@vincecamutoshoes.com. Also on March 1, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <vincecamutoshoes.com> domain name is confusingly similar to Complainant’s VINCE CAMUTO mark.
2. Respondent does not have any rights or legitimate interests in the <vincecamutoshoes.com> domain name.
3. Respondent registered and used the <vincecamutoshoes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Camuto
Consulting, Inc., holds a trademark registration for its VINCE CAMUTO mark with
the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,161,347 filed February 24, 2005; issued October 24,
2006) in connection with women’s footwear.
Respondent, Belize Domain WHOIS Service Lt, registered the <vincecamutoshoes.com> domain name on April 8, 2006. The disputed domain name resolves to a website featuring click-through links to third-party websites, some of which compete 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.
Complainant asserts rights in its VINCE CAMUTO mark through
its holding of a trademark registration with the USPTO (e.g. Reg. No. 3,161,347 filed
February 24, 2005; issued October 24, 2006).
The Panel finds that Complainant has established rights in the VINCE
CAMUTO mark under Policy ¶ 4(a)(i) and that the relevant date of Complainant’s
rights in the mark is the filing date of the application for the subsequently
registered mark. See Expedia, Inc. v. Tan,
FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark
is registered with the USPTO, [the] complainant has met the requirements of
Policy ¶ 4(a)(i).”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum
June 8, 2007) (finding that the complainant’s rights in the KISSES trademark
through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate
[the] respondent’s registration”).
Complainant argues
that Respondent’s <vincecamutoshoes.com>
domain name is confusingly similar to
Complainant’s ICQ mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name is
confusingly similar as it incorporates the entirety of Complainant’s mark,
deletes the space between the words, adds the descriptive term “shoes” and adds
the generic top-level domain (“gTLD”) “.com.”
The Panel finds that the addition of the descriptive term “shoes”
creates a confusing similarity between the disputed domain name and
Complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb.
Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the
complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which
is an obvious allusion to complainant’s business.”); see also Constellation Wines
U.S., Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no 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 prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out 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 paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Nevertheless, the Panel will examine the record to determine whether Respondent has legitimate rights or interests in the disputed domain name.
The WHOIS information for the disputed domain name lists the
registrant as “Belize Domain WHOIS Service Lt.” There does not appear to be any evidence in
the record to support that Respondent is commonly known by the disputed domain
name. Therefore, the Panel finds that
Respondent is not commonly known by the disputed domain name pursuant to Policy
¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006)
(finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Respondent’s disputed domain name resolves to a website featuring click-through links to third-party websites, some of which compete with Complainant. The Panel finds that Respondent’s use is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the confusingly similar disputed domain name to link Internet users seeking Complainant’s goods to a website that features links to Complainant’s competitors constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
The Panel finds that Respondent is using the confusingly
similar disputed domain name to intentionally attract Internet users and profit
through the receipt of pay-per-click fees.
The Panel finds that Respondent’s use of the disputed domain name is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc.
v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that
the respondent engaged in bad faith registration and use by using a domain name
that was confusingly similar to the complainant’s mark to offer links to
third-party websites that offered services similar to those offered by the
complainant); see also
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <vincecamutoshoes.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: April 14, 2010
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