DECISION

TXDC, L.P. v. James Northcott

Claim Number:  FA0302000144650

PARTIES

Complainant is TXDC, L.P., Irving, TX, USA (“Complainant”) represented by Kristy B. Mothersbaugh, of Thompson & Knight LLP. Respondent is James Northcott, Winnipeg, MB, Canada (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <zalesdiamond.com>, <zalesdiamonds.com>, <zalesdiamondstore.com>, and <zalesdiamondstores.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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 6, 2003; the Forum received a hard copy of the Complaint on February 10, 2003.

On February 7, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain names <zalesdiamond.com>, <zalesdiamonds.com>, <zalesdiamondstore.com>, and <zalesdiamondstores.com> are registered with Enom, Inc. and that Respondent is the current registrant of the names. 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 February 19, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 11, 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@zalesdiamond.com, postmaster@zalesdiamonds.com, postmaster@zalesdiamondstore.com and postmaster@zalesdiamondstores.com by e-mail.

Having received no formal 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 March 14, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 formal Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <zalesdiamond.com>, <zalesdiamonds.com>, <zalesdiamondstore.com> and <zalesdiamondstores.com> domain names are confusingly similar to Complainant’s ZALES and ZALES THE DIAMOND STORE marks.

2. Respondent does not have any rights or legitimate interests in the <zalesdiamond.com>, <zalesdiamonds.com>, <zalesdiamondstore.com>, and <zalesdiamondstores.com> domain names.

3. Respondent registered and used the domain names in bad faith.

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

FINDINGS

Complainant, TXDC, through its sole general partner, Zale Delaware, Inc., which is a wholly owned subsidiary of Zale Corporation, holds numerous trademarks and service marks featuring the ZALES mark. More specifically, Complainant holds U.S. Patent and Trademark Office (“USPTO”) Reg. No. 720,467 for the ZALES mark registered on August 22, 1961 and listed on the Principal Register. Complainant also holds USPTO Reg. No. 1,050,371 for the ZALES THE DIAMOND STORE mark registered on October 12, 1976. Complainant uses the ZALES family of marks in connection with jewelry and retail jewelry stores across the United States and throughout the world.

Complainant operates more than 2,300 retail jewelry locations throughout North America. Among the retail stores operated by Complainant and its partner, Zale Corporation, is Zales Jewelers, which was founded in 1924. Complainant operates more than 700 Zales Jewelers store locations in the United States and Puerto Rico, in addition to an online store at <zales.com>.

Respondent, James Northcott, registered all four domain names on January 16, 2002. Complainant’s investigation of Respondent’s use of the subject domain names indicates that Respondent initially used the domain names to redirect Internet traffic to third-party websites for commercial profit. Complainant’s submission reveals that Respondent has subsequently placed the four domain name registrations for sale. Additionally, Complainant’s evidence includes e-mail correspondence from Respondent indicating that the domain name registrations were for sale (e.g., the Subject line of one of the messages reads: “HTTP://WWW.ZALESDIAMONDSTORES.COM FOR SALE! FOR SALE!”).

Although Respondent has failed to formally respond to Complainant’s assertions, Respondent has issued an informal response that states: “We would like to transfer any and all domains that we have pertaining to Zales Diamonds to the rightful owners.”

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 has demonstrated rights in the ZALES and ZALES THE DIAMOND STORE marks through registration with the USPTO and subsequent continuous use of the marks. See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

Respondent’s <zalesdiamond.com>, <zalesdiamonds.com>, <zalesdiamondstore.com>, and <zalesdiamondstores.com> domain names are confusingly similar to Complainant’s ZALES and ZALES THE DIAMOND STORE marks. Complainant’s marks represent the dominant portion of Respondent’s second-level domains. Further, the addition of words (such as “diamond”) that have a significant relationship to Complainant’s business fails to create distinguishable domain names for the purposes of the Policy. Respondent’s deletion of introductory phrases (such as “the”) also represents an inconsequential deviation from Complainant’s registered marks. Because Respondent’s domain names incorporate Complainant’s ZALES mark in its entirety, they are rendered confusingly similar under a Policy ¶ 4(a)(i) analysis. See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

Additionally, Respondent’s deletion of the spaces in Complainant’s ZALES THE DIAMOND STORE mark is immaterial because spaces are not allowed in domain names, and therefore must be deleted. Respondent’s addition of a top-level domain (such as “.com”) to the domain names represents a mandatory addition that does not create distinguishable characteristics under the Policy. 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”).

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

Rights or Legitimate Interests

Complainant has presented a prima facie case before the Panel, comprised of evidence supporting its assertions and inferences. Because Respondent did not submit a formal Response in this proceeding, it has failed to propose any set of circumstances that would suggest it has rights or interests in the domain names under Policy ¶ 4(a)(ii). Complainant’s assertions have gone unopposed and unrefuted. Therefore, it is proper for the Panel to accept all reasonable inferences made by Complainant as true. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Respondent’s apparent willingness to transfer the domain name registrations to Complainant, as stated in the informal Response, indicates that it does not have rights or legitimate interests in the domain names under Policy ¶ 4(a)(ii). See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the domain name at issue indicates that it has no rights or legitimate interests in the domain name in question); see also Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondent’s willingness to transfer the domain name at issue to Complainant, as reflected in its Response, is evidence that it has no rights or legitimate interests in the domain name).

Uncontested evidence indicates that Respondent attempted to sell its rights in the domain names to Complainant. Respondent’s registration of domain names, which incorporate another’s marks, with the intent of marketing the domain names to the owner of the marks, does not represent rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name registration suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Perf. Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights).

No evidence before the Panel indicates that Respondent is commonly known by the domain names, or that Respondent is using the domain names in pursuit of a legitimate interest or bona fide offering. The contents contained in Respondent’s informal Response permit the inference that Respondent concedes that the domain names infringe on Complainant’s rights. Thus, Respondent fails to establish rights in the domain names under Policy ¶ 4(c)(ii). 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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

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

Registration and Use in Bad Faith

Respondent’s bad faith registration and use of the domain names is articulated under Policy ¶ 4(b)(i). Specifically, Respondent is seeking to sell its rights in the domain names through a third-party broker. Unrefuted evidence indicates that on January 27, 2003, Respondent invited Complainant to “make [him] an offer . . . within the market range” and he would be “willing to part with” all four of the domain name registrations. Respondent’s acquisition of domain names for the purpose of selling, renting or transferring the registrations to Complainant constitutes bad faith registration and use under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); 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”); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith).

Additionally, there is a legal presumption of bad faith when Respondent was aware, actually or constructively, of Complainant’s famous and distinctive trademarks. Respondent’s targeted attempts to sell the domain name registrations to Complainant allows the inference that Respondent was aware of Complainant’s rights in the ZALES family of marks. 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); see also Entrepreneur Media, Inc. v. Smith[2002] USCA9 115; , 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

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 GRANTED.

Accordingly, it is Ordered that the <zalesdiamond.com>, <zalesdiamonds.com>, <zalesdiamondstore.com>, and <zalesdiamondstores.com> domain names be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  March 19, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/277.html