Jessica London, Inc., a subsidiary of Redcats USA, Inc. v. Michal Restl
Claim Number: FA1102001371109
Complainant is Jessica London, Inc., a subsidiary of Redcats USA, Inc. (“Complainant”), represented by Stephen M. Werner of Redcats USA, Indiana, USA. Respondent is Michal Restl (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain nameat issue is <wwwjessicalondon.com>, registered with Dynadot.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2011; the National Arbitration Forum received payment on February 3, 2011.
On February 4, 2011, Dynadot confirmed by e-mail to the National Arbitration Forum that the <wwwjessicalondon.com> domain name is registered with Dynadot and that Respondent is the current registrant of the name. Dynadot has verified that Respondent is bound by the Dynadot registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2011 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@wwwjessicalondon.com. Also on February 7, 2011, 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 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <wwwjessicalondon.com> domain name is confusingly similar to Complainant’s JESSICA LONDON mark.
2. Respondent does not have any rights or legitimate interests in the <wwwjessicalondon.com> domain name.
3. Respondent registered and used the <wwwjessicalondon.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Jessica London, Inc., is a company which sells its women’s fashion products through a mail order catalog. Complainant has expanded its business to include on-line retail sites as well. Complainant holds multiple registrations for the JESSICA LONDON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,645,682 issued November 5, 2002).
Respondent, Michal Restl, registered the disputed domain name on January 22, 2010. The disputed domain name resolves to a site offering links to third party websites; many of which are Complainant’s competitors. Respondent presumably receives click-through fees from these linked sites.
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.
Under Policy ¶ 4(a)(i), Complainant must establish that it has rights or legitimate interests in the mark to successfully challenge the disputed domain name. Complainant contends that it has met this requirement by registering the mark with a federal trademark authority, the USPTO. Previous panels have determined that registering a mark with a federal trademark authority is adequate to show a complainant’s rights in a given 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 Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds in favor of Complainant holding that it does have rights in the JESSICA LONDON mark under Policy ¶ 4(a)(i) created by the registration of that mark with a federal trademark authority, the USPTO (e.g., Reg. No. 2,645,682 issued November 5, 2002).
Complainant also contends that Respondent’s <wwwjessicalondon.com> domain name is confusingly similar to its JESSICA LONDON mark. The disputed domain name incorporates the entire mark while removing a space from the mark, adding the letters “www,” and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that the changes Respondent has made to the mark for the purposes of its disputed domain name fail to sufficiently differentiate it from the mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”) Thus, the Panel finds that Respondent’s <wwwjessicalondon.com> domain name is confusingly similar to Complainant’s JESSICA LONDON mark under Policy ¶ 4(a)(i).
The Panel finds that the elements of Policy ¶ 4(a)(i) have been established.
Under Policy ¶ 4(a)(ii), the burden of proof to show legitimate rights or interests in the mark shifts to Respondent after Complainant makes its prima facie case against Respondent, showing that it lacks rights in the disputed domain name. 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.”). In this case, Respondent has not only failed to rebut Complainant’s prima facie case, but has also failed to file an answer to the complainant generally. This failure to act allows the Panel to assume that Respondent lacks any rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Even though Respondent is deficient in this manner, the Panel will still examine the entire record to determine whether Respondent retains rights or legitimate interests in the disputed domain name according to the parameters listed in Policy ¶ 4(c).
Policy ¶ 4(c)(ii) allows the Respondent to show that it has rights or legitimate interests in the <wwwjessicalondon.com> domain name if it is commonly known by the domain name. Respondent has offered no evidence to show that it is commonly known by the disputed domain name. The WHOIS information identifies registrant as “Michal Restl,” which the Panel finds is not similar to the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name according Policy ¶ 4(c)(ii).
Complainant also contends that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. Respondent’s <wwwjessicalondon.com> domain name resolves to a site offering links to Complainant’s competitors for which Respondent presumably receives click-through fees. Previous panels have determined that this activity is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)). Therefore the Panel finds that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel finds that the elements of Policy ¶ 4(a)(ii) have been established.
Complainant asserts that Respondent’s <wwwjessicalondon.com> domain name disrupts its business by diverting Internet users to its competitors. Respondent’s disputed domain name resolves to a site offering third-party links, many of which lead to the sites of Complainant’s competitors. Previous panels have found that this activity disrupts a business and is therefore evidence of bad faith registration and use under 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). Therefore, Respondent has registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iii).
Complainant also asserts that Respondent’s capitalization on the <wwwjessicalondon.com> domain name for its own commercial gain constitutes bad faith registration and use. Respondent operates a site which diverts internet users to a list of links, many of which are Complainant’s competitors. Respondent presumably receives click-through fees from these linked sites for each user diverted. The Panel finds that this use does in fact constitute bad faith registration and use according to Policy ¶ 4(b)(iv) due to the fact that Respondent is gaining commercial from its deleterious use of the disputed domain name. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also 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).
The Panel finds that the elements of Policy ¶ 4(a)(iii) have been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwjessicalondon.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 11, 2011
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