Bealls, Inc. v. Marketing Total S.A.
Claim Number: FA0701000882153
Complainant is Bealls, Inc. (“Complainant”), represented by Paul
W. Kruse, of Bone McAllester Norton PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <beallsonline.com>, registered with Domaindoorman, 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.
Sandra F. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On January 5, 2007, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <beallsonline.com> domain name is registered with Domaindoorman, LLC and that Respondent is the current registrant of the name. Domaindoorman, LLC has verified that Respondent is bound by the Domaindoorman, 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 January 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 7, 2007 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@beallsonline.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <beallsonline.com> domain name is confusingly similar to Complainant’s BEALLS mark.
2. Respondent does not have any rights or legitimate interests in the <beallsonline.com> domain name.
3. Respondent registered and used the <beallsonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bealls, Inc., operates hundreds of retail department stores under the BEALLS and BEALLS OUTLET marks. Complainant has been continuously using the BEALLS mark in connection with retail department store services since as early as 1932 and the BEALLS OUTLET mark since at least 1983. Complainant also maintains a significant presence online. Complainant has registered over 418 domain names including the BEALLS mark and numerous variations, including <beallsflorida.com> and <beallsoutlet.com>. Last year alone, Complainant spent over $30.2 million on promoting and marketing its marks.
Respondent’s <beallsonline.com>
domain name, which it registered on
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 has not registered the BEALLS mark with any trademark authority but under Policy ¶ 4(a)(i), Complainant need not own a trademark registration in order to establish its rights in a mark, for common law rights are sufficient. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Through longstanding, continuous use of the BEALLS mark
since at least 1932, Complainant’s mark has acquired secondary meaning in
connection with Complainant’s department store services. Complainant operates hundreds of stores under
the mark and maintains registrations for hundreds of domain names containing
the mark. Therefore, Complainant has
submitted sufficient evidence to show it has common law rights in the BEALLS
mark pursuant to Policy ¶ 4(a)(i). See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005)
(finding that the complainant established common law rights in the STELLAR CALL
CENTRES mark because the complainant demonstrated that its mark had acquired
secondary meaning); see
also Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp.,
FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had
demonstrated common law rights in the ATPE mark through continuous use of the
mark in connection with educational services for over twenty-five years).
Respondent’s <beallsonline.com>
domain name fully incorporates Complainant’s BEALLS mark and appends the term
“online.” In Broadcom
Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001), the
panel found the <broadcomonline.com> domain name to be confusingly
similar to the complainant’s BROADCOM mark.
As the facts of this case are almost indistinguishable, the Panel finds
that Respondent has failed to sufficiently distinguish the disputed domain name
from the mark pursuant to Policy ¶ 4(a)(i) and
therefore finds the <beallsonline.com>
domain name to be confusingly similar to the mark. See Google Inc. v. Xtraplus Corp., D2001-0125
(WIPO Apr. 16, 2001) (finding that the respondent’s domain names were
confusingly similar to Complainant’s GOOGLE mark where the respondent merely
added common terms such as “buy” or “gear” to the end).
The Panel concludes that Complainant has sufficiently satisfied this element of the Policy.
Complainant claims that Respondent lacks rights and
legitimate interests in the <beallsonline.com>
domain name. Complainant must first make
a prima facie case in support of its allegations, and then the burden
shifts to Respondent to show 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) (“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).”); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that, where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <beallsonline.com> domain name. See
Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where the respondent fails to respond); see
also BIC Deutschland GmbH & Co.
KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a
response, Respondent has failed to invoke any circumstance which could
demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate
interests in the domain name”). However, the Panel will now examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Marketing Total S.A.” and there is no other
evidence in the record suggesting that Respondent is commonly known by the
domain name in dispute. As a result,
Respondent has not established rights or legitimate interests in the <beallsonline.com> domain name pursuant
to Policy ¶ 4(c)(ii).
See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum Jul. 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);
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).
Furthermore, Respondent’s <beallsonline.com>
domain name resolves to a commercial web directory displaying links to other
department store websites that compete with Complainant. In DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002), the panel determined that the respondent’s use of
the <dlj.com> domain name to divert Internet users to the
<visual.com> domain name, where services that competed with the
complainant were advertised, 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). In this case, then, Respondent’s use of
the disputed domain name to redirect Internet users to competing websites,
presumably for profit by earning “click-through fees” for each consumer it
redirects to other financial services websites, is not a bona fide offering
of goods or services within Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use within Policy ¶ 4(c)(iii). See Wal-Mart Stores,
Inc. v. Power of Choice Holding Co.,
FA 621292 (Nat. Arb.
Forum Feb. 16, 2006) (finding that the respondent’s use of domain names
confusingly similar to the complainant’s WAL-MART mark to divert Internet users
seeking the complainant’s goods and services to websites competing with the
complainant did not constitute 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 concludes that Complainant has sufficiently satisfied this element of the Policy.
Respondent is using the <beallsonline.com>
domain name, which is confusingly similar to Complainant’s BEALLS mark, to
redirect Internet users seeking Complainant’s retail department store services
to a search engine displaying links to Complainant’s direct competitors and to
other content. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the respondent registered the
<mailonsunday.com> domain name, which included the complainant’s THE MAIL
ON SUNDAY mark, and was using the domain name to provide links to competing
newspapers and to third-party websites.
The panel held that such use provided evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv), because
Respondent “presumably commercially benefited from the misleading domain name
by receiving ‘click-through-fees.’” In
this case, Respondent also likely receives referral fees for each
consumer it diverts to other websites and is, therefore, taking advantage of
the confusing similarity between the disputed domain name and Complainant’s mark. Such use of the disputed domain name to
profit off of the goodwill associated with Complainant’s mark is indicative of
bad faith registration and use under Policy ¶ 4(b)(iv). See The
The Panel finds that Respondent
has registered and is using the disputed domain name in order to disrupt
Complainant’s business under the BEALLS mark by providing links on its website
to Complainant’s competitors. Therefore,
Respondent has engaged in bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum
The Panel concludes that Complainant has sufficiently satisfied this element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <beallsonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 21, 2007
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