DECISION

Schottenstein Stores Corporation d/b/a American Signature Home v. Golden

Claim Number: FA0212000137031

PARTIES

Complainant is Schottenstein Stores Corporation d/b/a American Signature Home, Columbus, OH (“Complainant”) represented by Kathryn E. Smith, of Wood, Herron & Evans LLP.  Respondent is Golden, Baltimore, MD (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <americansignaturefurniture.com> and <americansignaturehome.com>, registered with Bulkregister.com, Inc.

PANEL

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

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 9, 2002; the Forum received a hard copy of the Complaint on December 13, 2002.

On December 10, 2002, Bulkregister.com, Inc. confirmed by e-mail to the Forum that the domain names <americansignaturefurniture.com> and <americansignaturehome.com> are registered with Bulkregister.com, Inc. and that Respondent is the current registrant of the names.  Bulkregister.com, Inc. has verified that Respondent is bound by the Bulkregister.com, 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 December 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 6, 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@americansignaturefurniture.com and postmaster@americansignaturehome.com by e-mail.

Respondent replied in a timely fashion; however, Respondent’s submission contained no arguments or defenses under the UDRP Policy and failed to refute Complainant’s allegations.  The submission consists of a one-paragraph email that was sent to the Case Coordinator.  In addition, Respondent submitted late exhibits on January 13, 2003.  The Panel has considered Respondent’s Response and exhibits.

 

On January 17, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. The <americansignaturefurniture.com> and

<americansignaturehome.com> domain names are confusingly similar to Complainant’s AMERICAN SIGNATURE family of marks.

2. Respondent has no rights or legitimate interests in the

<americansignaturefurniture.com> and <americansignaturehome.com> domain names.

3. Respondent registered and used the <americansignaturefurniture.com> and

<americansignaturehome.com> domain names in bad faith. 

B. Respondent submitted a one-paragraph email reply to the Complaint, which alluded to rights in the domain names based on registration alone.

FINDINGS

Complainant, Schottenstein Stores Corporation, owns trademark applications and registrations for the mark AMERICAN SIGNATURE, AMERICAN SIGNATURE FURNITURE, and AMERICAN SIGNATURE HOME (the “AMERICAN SIGNATURE family of marks”).  The AMERICAN SIGNATURE and AMERICAN SIGNATURE FURNITURE marks are registered on the Principal Register of the United States Patent and Trademark Office, as Reg. Nos. 2,386,599 and 2,556,760.  The AMERICAN SIGNATURE HOME mark is pending trademark registration.  Complainant also owns numerous other trademarks reflecting the AMERICAN SIGNATURE mark. 

Complainant’s AMERICAN SIGNATURE family of marks are used in connection with Complainant’s retail furniture stores.  Complainant uses its marks to identify its furniture products in advertising and sales in interstate commerce.  In addition, Complainant uses its AMERICAN SIGNATURE family of marks to promote the sales of its product line on the Internet at the website <ashome.com>. 

Complainant has used its AMERICAN SIGNATURE family of marks in the United States since July, 1996.  Complainant recorded $100 million in sales of AMERICAN SIGNATURE branded furniture in 2002. 

Complainant owns five AMERICAN SIGNATURE HOME store locations in Franklin, Tennessee; Madison, Tennessee; Memphis, Tennessee; Baltimore, Maryland; and Richmond, Virginia.  Complainant’s Baltimore, Maryland store opened on October 25, 2002 and was preceded by a news release and television ad campaigns promoting the quality of AMERICAN SIGNATURE products. 

Respondent registered the domain names on May 30, 2002 through Bulkregister.com.  Respondent has not associated the domain names with any content on the Internet.  Respondent is located in Baltimore, Maryland. 

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.”

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 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 its rights in the AMERICAN SIGNATURE family of marks through proof of commercial use and trademark registrations with the United States Patent and Trademark Office. 

Respondent’s <americansignaturefurniture.com> domain name contains Complainant’s entire AMERICAN SIGNATURE FURNITURE mark with the inconsequential addition of the generic top-level domain “.com.”  The top-level domain is a required feature of a domain name and is negligible in a Policy ¶ 4(a)(i) identical analysis.  Therefore, Respondent’s domain name is identical to Complainant’s AMERICAN SIGNATURE mark.  See 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); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

Likewise, Respondent’s <americansignaturehome.com> domain name contains Complainant’s entire AMERICAN SIGNATURE HOME mark with the inconsequential addition of the generic top-level domain “.com.”  Thus, the domain name is identical to Complainant’s AMERICAN SIGNATURE HOME mark.

Furthermore, since the AMERICAN SIGNATURE HOME mark has yet to receive trademark registration status, it is appropriate to conduct a Policy ¶ 4(a)(i) analysis in relation to Complainant’s AMERICAN SIGNATURE mark.  The <americansignaturehome.com> domain name differs only from the AMERICAN SIGNATURE mark by the addition of the word “home.”  Complainant uses its mark in conjunction with its home furnishing stores and thus the word “home” is related to Complainant’s commercial use of the AMERICAN SIGNATURE mark.  Therefore, Respondent’s <americansignaturehome.com> domain name is confusingly similar to Complainant’s AMERICAN SIGNATURE mark.  See 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); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

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

Rights or Legitimate Interests

Complainant has successfully alleged a prima facie Complaint, which shifts the burden on Respondent to challenge Complainant’s contention by demonstrating rights or legitimate interests in the disputed domain names.  Respondent has failed to specifically address Complainant’s arguments and essentially implores the Panel to find in its favor because Respondent is “just a little guy that owns two domain names.”  Respondent does not put forward any arguments that support a finding of rights or legitimate interests in its favor, and relies on its registration alone to establish such right or interests.  Respondent cannot primarily rely on its registration to establish rights or legitimate interests in the <americansignaturefurniture.com> and <americansignaturehome.com> domain names, and without any further arguments the Panel will presume that Respondent has no such rights or interests.  See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established); 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”).

Respondent does not actively use the <americansignaturefurniture.com> and <americansignaturehome.com> domain names and has not presented the Panel with demonstrable preparations to use the domain names.  Respondent merely stated, in its informal Response, that Complainant owns hundreds of domain names in an apparent effort to establish Complainant’s lack of interest or value in the disputed domain names.  Without establishing at the minimum a planned legitimate use of the disputed domain names, the Panel finds that Respondent’s passive holding of the domain names does not establish rights or legitimate interests in the domain names under Policy ¶¶ 4(c)(i) and (iii).  See Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website).

Furthermore, Respondent is not commonly known by the <americansignaturefurniture.com> and <americansignaturehome.com> domain names and has provided no evidence to support a finding to the contrary.  Thus, Policy ¶ 4(c)(ii) does not provide support in Respondent’s favor.  See 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 Policy ¶ 4(a)(ii) has been satisfied, and Respondent has no rights or legitimate interests in the disputed domain names. 

Registration and Use in Bad Faith

The Policy ¶ 4(b) sets out a list of circumstances that merit a finding of bad faith.  This particular paragraph, however, is without limitation as the Panel is permitted to look at the totality of circumstances in deciding the bad faith issue under Policy ¶ 4(a)(iii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Respondent is located in Baltimore, Maryland where Complainant recently opened a new AMERICAN SIGNATURE HOME furniture store.  Respondent registered the <americansignaturefurniture.com> and <americansignaturehome.com> domain names nearly six months before the new store opened but in its email reply Respondent intimated that it was aware of Complainant’s advertising in the television, radio and print outlets.  Furthermore, Complainant’s AMERICAN SIGNATURE and AMERICAN SIGNATURE FURNITURE marks are registered on the Principal Register of the United States Patent and Trademark Office.  Such registration status imparts constructive knowledge onto a party registering a domain name of a mark that is similar to a desired domain name.  A rudimentary trademark search would have shown Complainant’s interests in the aforementioned marks, and Respondent has the burden to clear rights in a domain name prior to registering it.  Therefore, the Panel concludes that Respondent registered the disputed domain name in bad faith with constructive knowledge of Complainant’s interests in the AMERICAN SIGNATURE family of marks.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also 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 lack of use of the <americansignaturefurniture.com> and <americansignaturehome.com> domain names along with Respondent’s failure to establish demonstrable plans to use the domain names warrants a finding of bad faith use.  In addition, Respondent’s constructive knowledge of Complainant’s interests in the AMERICAN SIGNATURE family of marks further supports a passive holding bad faith use determination.  Respondent’s allusion to Complainant’s hundreds of domain names and lack of interest in the disputed domain names without demonstrating its planned legitimate use also supports a finding of bad faith use.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”).

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

DECISION

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

Accordingly, it is Ordered that the <americansignaturefurniture.com> and <americansignaturehome.com> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: January 24, 2003

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