DECISION

WeddingChannel.com Inc. v. NOLDC, Inc

Claim Number:  FA0408000310971

PARTIES

Complainant is WeddingChannel.com Inc. (“Complainant”), represented by Monica Riva, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC 20005.  Respondent is NOLDC, Inc (“Respondent”), 838 Camp Street, Apt. C, New Orleans, LA 70130.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <macys-weddingchannel.com>, registered with Intercosmos Media Group.

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.

            James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 10, 2004; the Forum received a hard copy of the Complaint on August 11, 2004.

On August 12, 2004, Intercosmos Media Group confirmed by e-mail to the Forum that the domain name <macys-weddingchannel.com> is registered with Intercosmos Media Group and that Respondent is the current registrant of the name. Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group 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 August 12, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 1, 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@macys-weddingchannel.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 September 9, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 <macys-weddingchannel.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 <macys-weddingchannel.com> domain name.

3. Respondent registered and used the <macys-weddingchannel.com> domain name in bad faith.

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

FINDINGS

Complainant has offered wedding planning, gift registry, and communication services at the domain name <weddingchannel.com> since July 1997.  Complainant’s proprietary and integrated online registry service offers consumers access to the largest aggregation of gift registries of major department and specialty stores, such as Macy’s, Bon-Macy’s, Burdines-Macy’s, Goldsmith’s-Macy’s, Lazarus-Macy’s, Rich’s-Macy’s, among others.  In connection therewith, Complainant owns the domain name registration for <macysweddingchannel.com>, which it uses in collaboration with its partner Macy’s for a specialized website that prominently displays Macy’s Bridal and Gift Registry.  Complainant has a limited license to use its partner’s MACY’S mark, which is owned by Federated Western Properties, Inc., a subsidiary of Federated Department Stores, Inc.

In 2003 alone, more than $99,000,000 worth of bridal registry gifts were purchased through Complainant’s website, and Complainant’s total revenue in that time was more than $29,000,000.  Moreover, Complainant’s website is one of the top two wedding planning websites on the Internet according to Jupiter Media Metrix, and is the winner of the 1999 WebAward for Best Online Community from the Web Marketing Association.

Complainant owns numerous U.S. registrations for its WEDDING CHANNEL mark, including registration numbers 2,508,302 (issued Nov. 20, 2001, in connection with “advertising agencies and business marketing consulting services”), and 2,519,435 (issued Dec. 18, 2001, in connection with “providing information by means of a global computer network in the field of wedding party planning consultation services”).  Complainant also owns several U.S. registrations for its WEDDINGCHANNEL.COM mark, including registration numbers 2,564,964 (issued Apr. 30, 2002, in connection with “providing information by means of a global computer network in the field of wedding planning consultation services”) and 2,590,287 (issued July 9, 2002, in connection with “advertising agencies and business marketing consulting services [and] computerized on-line search and ordering service”).

Respondent registered the domain name <macys-weddingchannel.com> on December 6, 2003.  Respondent uses the disputed domain name for a website that offers Internet search services relating to wedding preparation and events, including a search link entitled “Wedding Channel.” The website offers a variety of other links entitled “Wedding Planning,” “Wedding Gift,” “Wedding Photographer,” “Wedding Band,” “Wedding Party Favor,” “Wedding Camera,” and “Wedding Invitation.”  Respondent’s website source code indicates that its search links are provided by Overture, a pay-per-click search engine company.

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

Under the Policy, a complainant establishes rights in a mark upon demonstrating it has registered the mark with an appropriate governmental authority.  Here, Complainant has registered its WEDDING CHANNEL and WEDDINGCHANNEL.COM marks with the United States Patent and Trademark Office, which establishes Complainant’s rights in the marks under the Policy.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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 Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

Another’s trademark that is added to a complainant’s mark within a domain name, and that directly relates to the complainant’s goods or services, does not vanquish the confusing similarity that is created by the incorporation of the mark.  In the instant case, the domain name <macys-weddingchannel.com> incorporates Complainant’s WEDDING CHANNEL and WEDDINGCHANNEL.COM marks in their entireties and has merely added the MACY’S mark.  Complainant has a limited license to use the MACY’S mark from its business partner. See G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other drug names does not create a distinct mark capable of overcoming a claim of confusing similarity, “it merely creates a domain name with severe potential to confuse Internet users as to the source, sponsorship and affiliation of the domain”).

The fact that Respondent has inserted a hyphen to separate the MACY’S mark from Complainant’s WEDDINGCHANNEL.COM mark is immaterial under the Policy in determining the confusing similarity that may exist between a mark and domain name.  See Chernow Commun. Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“[T]he use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark."); see also Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) ( “[The] addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen."); see also InfoSpace.com v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“The domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features.”).

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

Rights or Legitimate Interests

In the absence of a Response, the Panel may accept all reasonable allegations set forth in the Complaint as true. See Vert. 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).

In addition, the absence of a Response may be construed as an implicit admission that Respondent lacks rights and legitimate interests in 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); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”). 

There is no evidence in the record that indicates 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) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, 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").

Respondent has registered a domain name that is confusingly similar to Complainant’s marks for the purpose of hosting a website that offers a variety of links to third-party websites offering similar goods and services as those offered under Complainant’s marks.  Such use is not 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 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); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that respondent was not using domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because Respondent used the names to divert Internet users to a website that offered competing services with those offered by the complainant under its marks); see also Ultimate Electronics, Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that respondent's “use of the domain name (and Complainant's mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).

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

Registration and Use in Bad Faith

Policy ¶ 4(b)(iv) is established when a respondent has registered and used a domain name to intentionally attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with a complainant’s mark.  The act of hosting a website establishes that a respondent has intentionally attempted to attract Internet users to its website.  Respondent’s website source code has indicated that the links attached to Respondent’s website are provided by Overture, a well-known pay-per-click search engine company.  Therefore, it is reasonable to assume in the absence of a Response that Respondent is commercially gaining from the use of the domain name.  The fact that Respondent registered a domain name confusingly similar to Complainant’s marks and used it to host a website that offers links to third-party sites that offer similar goods and services as those offered by Complainant under its marks is sufficient to find that Respondent has created a likelihood of confusion with Complainant’s marks.  Therefore, Respondent has violated Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market); 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)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

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 <macys-weddingchannel.com> domain name be TRANSFERRED from Respondent to Complainant.

                                                                                    James A. Carmody, Esq., Panelist

Dated:  September 21, 2004

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