DECISION

The Homer Laughlin China Company v. Kathleen Bazzano d/b/a Dance & Gym USA

Claim Number: FA0203000105893

PARTIES

Complainant is The Homer Laughlin China Company, Newell, WV (“Complainant”) represented by Andrew J. Cornelius, of ANDREW J. CORNELIUS, P.C.  Respondent is Kathleen Bazzano d/b/a Dance & Gym USA, Butler, PA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <homerlaughlinchina.com>, registered with Register.com.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 14, 2002; the Forum received a hard copy of the Complaint on March 15, 2002.

On March 18, 2002, Register.com confirmed by e-mail to the Forum that the domain name <homerlaughlinchina.com> is registered with Register.com and that Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com 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 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 8, 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@homerlaughlinchina.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 April 12, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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

Complainant holds rights in the HOMER LAUGHLIN CHINA mark, and the disputed domain name <homerlaughlinchina.com> is identical to that mark.

Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant and its predecessor by merger have continuously used in commerce the marks HOMER LAUGHLIN, THE HOMER LAUGHLIN CHINA COMPANY, and HOMER LAUGHLIN CHINA since 1896 in association with the design, manufacture, and marketing of china dinnerware.

Respondent registered the disputed domain name on June 11, 2000.

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 the 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.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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 and/or Confusingly Similar

Due to its continuous and longstanding use of the HOMER LAUGHLIN CHINA mark in commerce, Complainant has established sufficient common law rights in the mark to satisfy the trademark requirement of Policy ¶ 4(a)(i).  See MatchNet PLC. V. MAC Trading, D2000-0205 (WIPO May 11, 2000), citing British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the UDRP to “unregistered trademarks and service marks”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

The disputed domain name is identical to Complainant’s mark as it simply removes the spaces from the mark and adds the top level domain “.com.”  See Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki 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 Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is identical to Complainant’s MYSTIC LAKE trademark and service mark).

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

Rights or Legitimate Interests

Complainant has established its rights to and legitimate interests in the HOMER LAUGHLIN CHINA mark.  Because Respondent has not submitted a Response in this matter, the Panel may presume that it holds no such rights or interests in respect of the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Complainant asserts that Respondent holds no rights or interests in respect of the disputed domain name pursuant to Policy ¶ 4(a)(ii).  In the absence of a contrary claim, the Panel may accept Complainant’s assertion as true.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist); 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”).

There is no evidence Respondent has used the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “…merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

There is additionally no evidence that Respondent is commonly known by the domain name pursuant to Policy ¶ 4(c)(ii); Respondent is only known to this Panel as Kathleen Bazzano d/b/a Dance & Gym USA. 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 Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and that Policy ¶ 4(a)(ii) has thus been satisfied.

Registration and Use in Bad Faith

Complainant asserts that Respondent has intentionally used the disputed domain name to attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.  Absent a contrary claim, the Panel may accept Complainant’s assertion as true.  See Talk City, Inc. v. Robertson, supra.

Further, due to the distinctive and unique nature of Complainant’s mark, the Panel finds that Respondent must have been aware of the mark and Complainant’s rights therein when it registered the identical domain name.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).  Respondent’s intentional registration of the infringing domain name suggests an opportunistic and bad-faith attempt to trade on Complainant’s goodwill in violation of Policy ¶ 4(a)(iii).  See Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith where there is no reasonable possibility, and no evidence from which to infer, that the domain name was selected at random since it entirely incorporated Complainant’s name); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

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

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

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

Sandra Franklin, Panelist

Dated: April 23, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/600.html