DECISION

Jeffrey P. Thompson and Book Thongs, Inc. v. Brigitta Zimmer d/b/a Skippin Stones

Claim Number:  FA0308000190625

PARTIES

Complainants are Jeffrey P. Thompson and Book Thongs, Inc., Wheaton, IL (hereinafter “Complainant”) represented by Brent E. Ohlmann.  Respondent is Brigitta Zimmer d/b/a Skippin Stones, Westbrook, CT (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bookthong.com>, registered with Enom, Inc.

PANEL

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 Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 27, 2003; the Forum received a hard copy of the Complaint on August 27, 2003.

On August 28, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <bookthong.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 29, 2003 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@bookthong.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, 2003, 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 Book Thongs, Inc.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <bookthong.com> domain name is confusingly similar to Complainant’s BOOK THONGS mark.

2. Respondent does not have any rights or legitimate interests in the <bookthong.com> domain name.

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

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is the owner of the BOOK THONGS trademark. Complainant filed for a registration of the mark on the Principal Register of the U.S. Patent and Trademark Office on January 22, 2001, and obtained registration of the mark on April 29, 2003. Complainant coined the BOOK THONGS mark for use on beaded string bookmarks, a product that it began selling in commerce on August 9, 2000.

Respondent, Brigitta Zimmer d/b/a Skippin Stones, registered the <bookthong.com> domain name on March 19, 2002. According to Respondent’s advertising (as submitted in Complainant’s Exhibits) it has been known as Echo Trading Company since 1995, and uses the disputed domain name to sell products that are identical to Complainant’s products under the name “Book Thong.”

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 draw such inferences 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 and/or Confusingly Similar

Complainant’s 2001 filing for the BOOK THONGS mark came before Respondent’s registration of the disputed domain name in 2002. As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing “rights” in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date. Thus, Complainant has established rights in the BOOK THONGS mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office. See FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office; see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption.

Respondent’s <bookthong.com> domain name is confusingly similar to Complainant’s BOOK THONGS mark. The disputed domain name merely eliminates the “s” after the word THONGS, which does not dispell any confusing similarity between Complainant’s mark and the domain name. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) finding that deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it; see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) finding that by misspelling words and adding letters to words a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks.

Accordingly, the Panel finds that the <bookthong.com> domain name is confusingly similar to Complainant’s BOOK THONGS mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent uses the disputed domain name to offer goods that are identical to those offered by Complainant under the BOOK THONGS mark, going as far as to market its goods under the term “Book Thong.” As Respondent is using Complainant’s registered mark without authorization, to offer goods identical to Complainant’s BOOK THONGS branded goods, Respondent is making neither a bona fide offering of goods or services nor a noncommercial or fair use of the domain name, thus rendering Policy ¶¶ 4(c)(i) and (iii) inapplicable in this dispute. See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services; see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.

As the evidence before the Panel indicates that Respondent is known as Echo Trading Company, the Panel finds that Respondent is not “commonly known by” the disputed domain name for the purposes of Policy ¶ 4(c)(ii), making this provision inapplicable in this dispute as well. See Tercent Inc. v. 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 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.

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <bookthong.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered a domain name that is nearly identical to Complainant’s BOOK THONGS mark, and is using the domain name to provide goods that are identical to Complainant’s BOOK THONGS-branded goods. Given the similarity between Respondent’s website and domain name vis a vis Complainant’s goods and registered trademark, Respondent’s use of the <bookthong.com> domain name creates a likelihood of confusion as to whether Complainant is the source or sponsor of Respondent’s website. Respondent’s creation of this confusion for commmercial gain evidences bad faith use and registration of the domain name pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site.

The Panel thus finds that Respondent registered and used the <bookthong.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

Accordingly, it is Ordered that the <bookthong.com> domain name be TRANSFERRED from Respondent to Complainant Book Thongs, Inc.

Sandra Franklin, Panelist

Dated:  October 27, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/1010.html