DECISION

LM&B Catalogs, Inc. v. Anthony Peppler d/b/a DNPro.com

Claim Number: FA0208000123894

PARTIES

Complainant is LM&B Catalogs, Inc., Tucson, AZ (“Complainant”) represented by Devin Odell, of Brown and Bain.  Respondent is Anthony Peppler d/b/a DNPro.com, Fort Wayne, IN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brownstonestudio.com>, registered with Tucows, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 27, 2002; the Forum received a hard copy of the Complaint on August 30, 2002.

On August 28, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <brownstonestudio.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. verified that Respondent is bound by the Tucows, Inc. 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 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 23, 2002, 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@brownstonestudio.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <brownstonestudio.com> domain name is identical to Complainant’s registered BROWNSTONE STUDIO mark.

2. Respondent has no rights or legitimate interests in the <brownstonestudio.com> domain name.

3. Respondent registered and used the <brownstonestudio.com> domain name in bad faith.

B. Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant holds numerous registrations with the United States Patent and Trademark Office (“USPTO”) for the BROWNSTONE STUDIO mark, denoting its “retail clothing store services.” More specifically, Complainant holds U.S. Registration Number 1,165,943 for its BROWNSTONE STUDIO mark, registered on the Principal Register of the USPTO on August 18, 1981, with first use designated as April 15, 1973.

Complainant has used the BROWNSTONE STUDIO mark continuously since 1973 in connection with retail and catalog sales of clothing. Since acquisition, Complainant has mailed more than thirty million catalogs and has spent more than seventeen million dollars in promotional costs, resulting in more than 500,000 orders. In fiscal year 2000, Complainant mailed more than thirteen million catalogs and other promotional items at a cost of more than eight million dollars.

Respondent registered the <brownstonestudio.com> domain name on May 6, 2001. Complainant’s investigation into Respondent’s use of the subject domain name indicates that it resolves to a website consisting of links to other websites, including those of Complainant’s competitors. Further, in correspondence between Complainant’s counsel and Respondent’s counsel, Respondent requested that an offer be made to purchase the domain name. More specifically, Complainant’s evidence records the transaction as: “Did you have an offer for me to present to my client?”  Respondent is not licensed by Complainant and has no authority to use the BROWNSTONE STUDIO mark in connection with the offering of goods or services.

Complainant’s Submission also indicates that Respondent has engaged in a pattern of registering domain names that are similar to others’ trademarks or service marks. See, e.g., Am. Online, Inc. v. Anthony Peppler d/b/a/ RealTimeInternet.com, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (Respondent registered the following infringing domain names: <aol7.com>, <aolnick.com>, <aolpogo.com>, <aolmediaplayer.com>, <aolprofile.com>, <mailaol.com>, <mapquesst.com>, <mapcrest.com>, <icqprograms.com>, <icqdownloads.com>, <americans-online.com> and <digitacity.com>); see also CEC Entm’t, Inc. v. Anthony Peppler a/k/a RealTimeInternet.com, Inc., FA 104208 (Nat. Arb. Forum March 21, 2002) (Respondent registered <cuckcheese.com> and was found to be infringing on Complainant’s CHUCK E. CHEESE mark).

DISCUSSION

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 will draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the BROWNSTONE STUDIO mark through registration with the USPTO and by continuous use of the mark in commerce since May 1, 1973.

The domain name registered by Respondent, <brownstonestudio.com>, is identical to Complainant’s BROWNSTONE STUDIO registered mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, failing to significantly deviate by any relevant factor. Furthermore, because spaces are impermissible in domain names and top-level domains, such as “.com,” are required, neither factor is regarded as pertinent when conducting a Policy ¶ 4(a)(i) analysis. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Because Respondent failed to submit a Response in this proceeding, Complainant’s reasonable inferences will be regarded as true. Respondent’s failure to contest or refute Complainant’s assertions not only implies that Complainant’s Submission is truthful, but that logical conclusions drawn from those assertions are also accurate. See 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”); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s failure to respond: (1) that Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions that Complainant asserts can be drawn from the facts).

As stated, uncontested evidence indicates that Respondent’s domain name resolves to an empty website, but for the links, some of which represent competitors of Complainant. Respondent’s domain name has resolved to this website for over a year.  Taken in conjunction with other relevant circumstances, this does not give rise to rights or legitimate interests in the disputed domain name. Not only is it evident that Respondent intends to divert Internet users searching for Complainant’s products and services to competing websites, but it also is apparent that Respondent registered the subject domain name with the intent to eventually transfer its rights to Complainant. Respondent’s motivations are evidenced by its attempted negotiation of a sales offer for the domain name registration. This also does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it does not represent a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).

No evidence before the Panel suggests that Respondent is commonly known by the <brownstonestudio.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant’s unrefuted evidence indicates Respondent is a habitual infringer of famous trademarks and service marks, reinforcing a finding that Respondent, Anthony Peppler, has no legitimate connection with the subject domain name. Furthermore, Respondent is not authorized or licensed to use Complainant’s BROWNSTONE STUDIO mark, or any variation thereof. Respondent has no rights or legitimate interests in a domain name that is identical to Complainant’s mark. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; and (3) Respondent is not commonly known by the domain name in question).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

From the evidence submitted to the Panel it is evident that Respondent is continuing its infringing behavior of registering famous marks in domain names and subsequently attempting to induce the rightful owner to purchase the domain name registration. As stated, Complainant’s documentation includes correspondence between a representative of Respondent and Complainant. The correspondence indicates Respondent’s willingness to sell its rights in the domain name registration to Complainant. Respondent’s apparent eagerness to sell the domain name registration, taken in conjunction with its lack of rights or legitimate interests, supports a finding of bad faith registration and use under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

Circumstances also indicate that Respondent registered the domain name in order to prevent Complainant from reflecting its BROWNSTONE STUDIO mark in a corresponding domain name. Respondent’s domain name incorporates Complainant’s mark in its entirety and it is conceivable that Complainant’s rights are affected by Respondent’s registration of Complainant’s mark in the subject domain name. Furthermore, Complainant’s Submission establishes Respondent’s “pattern of such conduct” by listing numerous instances where Respondent has previously engaged in registering infringing domain names. Respondent’s registration and use of the <brownstonestudio.com> domain name constitutes bad faith under Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others famous and registered trademarks); see also Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <brownstonestudio.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: October 29, 2002.

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