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Cluett, Peabody & Co. v. SmartBuy Corporation, Andy Tran [2004] GENDND 1328 (24 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cluett, Peabody & Co. v. SmartBuy Corporation, Andy Tran

Case No. D2004-0697

1. The Parties

The Complainant is Cluett, Peabody & Co., New York, New York United States of America, represented by Davis & Gilbert LLP United States of America.

The Respondent is SmartBuy Corporation, Andy Tran, Orange, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <arrowstore.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2004. On September 1, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 1, 2004, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2004.

The Center appointed William R. Towns as the Sole Panelist in this matter on October 14, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is in the business of manufacturing, licensing and selling clothing and related merchandise in the United States and internationally, including a line of shirts, suits and other apparel sold under the ARROW brand. The Complainant is the owner of numerous trademark registrations for the ARROW mark both in the United States and internationally, and has licensed the use of the mark to over 130 retail stores worldwide.

The Complainant is also the owner of a number of domain names that incorporate the ARROW mark. Until December 2003, the Complainant was the owner of the disputed domain name <arrowstore.com>. Through inadvertence the domain name registration was allowed to lapse, and thereafter the Respondent registered the disputed domain name.

The Respondent has registered and is using the disputed domain name in connection with an internet site, which features a shopping portal and an internet search engine. The shopping portal essentially provides links to other websites where a wide array of goods and services are either advertised or offered for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <arrowstore.com> is confusingly similar to the ARROW mark. The Complainant asserts rights in the ARROW mark by virtue of trademark registrations for ARROW in the United States and internationally, and the extensive use of the mark by the Complainant for a period of 150 years.

The Complainant maintains that the Respondent is not licensed or authorized to use the ARROW mark, and that the Respondent otherwise has no rights or legitimate interests in the disputed domain name. Further the Complainant contends that the Respondent is using the domain name to attract to its website for commercial gain internet users looking for ARROW branded clothing, apparel and merchandise. The Complainant argues that this constitutes bad faith registration and use of the domain name by the Respondent. The Complainant also contends that the Respondent’s submission of false contact information in connection with the registration of the domain name is evidence of bad faith.

Accordingly, the Complainant requests that the disputed domain name <arrowstore.com> be transferred.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Scope of the Policy and Rules

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this panel is limited to providing a remedy in cases of “the abusive registration of domain names”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process pages 169 & 170.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in Paragraph 4(i).

Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of Paragraph 4(a), a number of panels have concluded that Paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No.D2000-0270.

B. Identical or Confusingly Similar

The Panel concludes that the disputed domain name <arrowstore.com> is confusingly similar to Complainant’s ARROW mark for purposes of Paragraph 4(a)(i) of the Policy. The Complainant beyond question has established rights in the ARROW mark through its registration and use in the United States and internationally. At a minimum, that mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

A domain name that incorporates a complainant’s mark in its entirety may be confusingly similar to that mark despite the addition of other words. It is well settled that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion. Indeed, there are numerous examples of decisions holding a domain name to be confusingly similar to a registered trademark when it consists of the mark plus one or more generic terms. Minnesota Mining and Manufacturing Company v. Mark Overbey, WIPO Case No. D2001-0727. See, e.g., Hang Seng Bank Limited v. Websen Inc., WIPO Case No. D2000-0651 (“credit” added to mark HANG SENG in <hangsengcredit.com>); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“parts” added to mark OKIDATA in <okidataparts.com>). See also Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662 (first element of Policy is satisfied where domain name wholly incorporates complainant’s mark).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s ARROW mark.

C. Rights or Legitimate Interests

The record reflects that the Complainant has not authorized the Respondent to use the ARROW mark in connection with the disputed domain name or the Respondent’s website. The disputed domain name bears no relation to this website, and given the reputation and strength of the ARROW mark, the Respondent’s adoption of a confusingly similar domain name seems patently calculated to divert internet users searching for ARROW branded clothing, apparel or merchandise to the Respondent’s website. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. Unless rebutted by other evidence, this suffices to make a prima facie showing for purposes of Paragraph 4(a)(ii) that the Respondent lacks rights or legitimate interests in the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Once a complainant makes a prima facie showing that a respondent lacks rights to the domain name at issue, the respondent must come forward with proof that it has some legitimate interest in the domain name to rebut this presumption. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Pursuant to Paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is nothing in the record to indicate that the Respondent is making a legitimate commercial or fair use of the domain name, nor any indication that the Respondent has been commonly known by the domain name. The question thus is whether the Respondent, before notice of the dispute, was using or had made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.

The Respondent is using the domain name in connection with a website, which essentially is a shopping portal with links to other internet sites (called “sponsored links”) where goods or services are either advertised or offered for sale to internet users. It appears that the Respondent was using the domain name in this manner before it received any notice from the Complainant regarding this dispute.

This showing, without more, however, does not establish that the Respondent has rights or legitimate interests in the disputed domain name under Paragraph 4(c)(i). The critical requirement is the Respondent’s use of the domain name in connection with a bona fide offering of goods or services. In determining whether an offering of goods or services is bona fide under Paragraph 4(c)(i), the dispositive question is whether the use of the disputed domain name in connection with the offering otherwise constitutes bad faith registration or use of the domain name under Paragraphs 4(a)(iii). See, e.g., First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840 (for offering under Paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under Paragraph 4(a)(iii)).

The Panel concludes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has no legitimate interest in using the ARROW mark in a domain name that directs internet users to a website where products other than those of the Complainant’s are offered for sale. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 (finding no legitimate interest in use of CHANEL as part of domain name leading to website selling various types of perfume). As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant and its products, its very use by a registrant with no connection to the complainant suggests “opportunistic bad faith”.

Accordingly, the Panel concludes that Respondent has no rights or legitimate interest in the disputed domain name for purposes of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The circumstances of this case do not bring it squarely within any of these four examples, but the Panel finds from the particular facts of this case that the Respondent registered and is using the disputed domain name in bad faith. The Respondent has registered and is using a domain name that is confusingly similar to the Complainant’s ARROW mark to attract, for commercial gain, internet users to its website. See The Sportsman’s Guide, Inc. v. JoyRide, WIPO Case No. D2003-0153 (respondent’s use of confusingly similar domain name to profit from confusion of internet users was a parasitic use). The Respondent clearly has no connection with the Complainant or its ARROW products, and the very use of the domain name under the circumstances of this case evinces “opportunistic bad faith”. See Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492. Further, there are indications that the Respondent provided false contact information in connection with the registration of the domain name, which also is suggestive of bad faith. The Sportsman’s Guide, Inc. v. JoyRide, WIPO Case No. D2003-0153. See also Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The totality of such circumstances is sufficient to persuade the Panel that the disputed domain name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <arrowstore.com> be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: October 24, 2004