DECISION

WeddingChannel.com Inc. v. Modern Limited - Cayman Web Development

Claim Number:  FA0405000271153

PARTIES

Complainant is WeddingChannel.com Inc. (“Complainant”), represented by Monica Riva Talley, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC 20005.  Respondent is Modern Limited - Cayman Web Development (“Respondent”), Post Office Box 908, George Town, Grand Cayman.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <theweddingchannel.com>, registered with Tucows 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 May 12, 2004; the Forum received a hard copy of the Complaint on May 13, 2004.

On May 12, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <theweddingchannel.com> is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has 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 July 19, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 9, 2004 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@theweddingchannel.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 August 11, 2004, 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.

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 <theweddingchannel.com> domain name is confusingly similar to Complainant’s WEDDING CHANNEL and WEDDINGCHANNEL.COM marks.

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

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

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

FINDINGS

Complainant, WeddingChannel.com Inc., offers wedding planning, gift registry and communication services.  Complainant’s total revenue in 2003 was more than $29 million.  Currently, Complainant’s database contains more than 1.3 million registries. 

Complainant holds trademark registrations with the United States Patent and Trademark Office for the WEDDING CHANNEL mark (Reg. No. 2,508,302 issued November 20, 2001 and Reg. No. 2,519,435 issued December 18, 2001) and for the WEDDINGCHANNEL.COM mark (Reg. No. 2,564,964 issued July 9, 2002, Reg. No. 2,590,287 issued July 9, 2002, Reg. No. 2,641,605 issued October 29, 2002, and Reg. No. 2,763,090 issued September 16, 2003).  Complainant has been using these marks in commerce since at least July 1997.

Complainant’s main website is operated at the <weddingchannel.com> domain name.  Complainant’s website is one of the top two wedding planning sites on the Internet.  Complainant’s website offers a virtually endless array of advice, information, guidance and resources for planning a wedding.  In January 2004, Complainant logged more than 60 million page views from the United States and around the world. 

Respondent registered the disputed domain name on June 6, 2003.  Respondent is using the domain name to redirect Internet users to a website that features sponsored links for a variety of goods, including wedding planning services and various other wedding-related search categories.

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 registrations for the WEDDING CHANNEL and WEDDINGCHANNEL.COM marks with the United States Patent and Trademark Office establish Complainant’s rights in the marks.  See 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); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction.); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves.”).

The <theweddingchannel.com> domain name is confusingly similar to Complainant’s marks because the only difference is the simple addition of the generic word “the.”  Adding a generic term to a third party’s mark has consistently been found to be inconsequential in determining the similarity between the mark and a domain name.  See Elder Mfg. Co., Inc. v. Recker, FA 98414 (Nat. Arb. Forum Sept. 10, 2001) (“In the matter at bar it is beyond refute that Respondent’s domain names are virtually identical, and thus confusingly similar to Elder’s trademarks. Any superficial differences between the domain names and the Elder trademarks are de minimis and of no legal consequence.”); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s AOL mark); see also 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).

Therefore, Complainant has established that the disputed domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The failure of Respondent to respond to the Complaint functions both as an implied admission that Respondent lacks rights and legitimate interests in the domain name, as well as an opportunity for the Panel to accept Complainant’s reasonable allegations as true.  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 interests in the domain names); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

The only evidence in the record that relates to the Panel’s determination of whether Respondent is commonly known by the disputed domain name is the WHOIS registration information for the respective domain name.  However, the WHOIS information for the domain name lists the domain name registrant as Modern Limited – Cayman Web Development, not as “the wedding channel.”  Therefore, the Panel finds that the evidence fails to indicate that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  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 RMO, Inc. v. Burbidge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Furthermore, the <theweddingchannel.com> domain name is confusingly similar to Complainant’s WEDDING CHANNEL and WEDDINGCHANNEL.COM marks and is used to redirect Internet users to a website that features sponsored links offering the same types of wedding-related services that Complainant offers.  Such use has consistently and frequently been found to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of 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).

Therefore, Complainant has established Policy ¶ 4(a)(ii).    

Registration and Use in Bad Faith

Respondent is using the <theweddingchannel.com> domain name to feature sponsored links offering wedding-related services.  Complainant’s business is a wedding planning, gift registry and communication services company.  The Panel finds that, by creating confusion around Complainant’s marks, Respondent is attempting to disrupt the business of a competitor.  Respondent’s use of Complainant’s marks within its domain name to sell goods and services similar to Complainant’s goods and services is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where Respondent’s sites pass users through to Respondent’s competing business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

Moreover, Respondent presumably commercially benefits from using a domain name confusingly similar to Complainant’s WEDDING CHANNEL and WEDDINGCHANNEL.COM marks, which is evidence that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(b)(iv).  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also 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)).

Complainant has established Policy ¶ 4(a)(iii).

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 <theweddingchannel.com> domain name be TRANSFERRED from Respondent to Complainant.

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

Dated:  September 9, 2004

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