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Ross-Simons of Warwick, Inc. v. Neels Cutter [2004] GENDND 1377 (6 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ross-Simons of Warwick, Inc. v. Neels Cutter

Case No. D2004-0694

1. The Parties

The Complainant is Ross-Simons of Warwick, Inc., Cranston, Rhode Island, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.

The Respondent is Neels Cutter, Lahaina, Hawaii, United States of America.

2. The Domain Name and Registrar

The disputed domain name <rosssimonscoupon.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 3, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was September 23, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2004.

The Center appointed Peter J. McGovern as the Sole Panelist in this matter on October 1, 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

A. The Trademark

The Complainant, Ross-Simons of Warwick, Inc., has sold fine jewelry, tableware, gifts, collectables, home décor and related items for over fifty years. Complainant sells its jewelry, tableware and related items through its well-known retail and outlet stores Ross-Simons and through its mail order and online catalogs of the same name. The Complaint is based on the Complainant’s alleged ownership of the rights in the mark ROSS-SIMONS which the Complainant maintains is identical or confusingly similar to the domain name <rosssimonscoupon.com>. The Complainant provided the Panel with the registration certificate for the mark. (Complaint Exhibit D)

B. Jurisdictional Basis

This dispute is within the scope of the Policy, and the single member Panel has jurisdiction to decide the dispute. The registrar’s registration agreement incorporates the Policy by reference.

On page five of the Complaint, the Complainant avers that each of the three requirements of Paragraph 4(a) of the Policy have been satisfied.

5. Parties’ Contentions

A. The Complainant

The Complainant has sold fine jewelry, tableware, gifts, collectables, home décor and related items for over fifty years. It sells its merchandise through its well-known retail and outlet stores Ross-Simons and through its mail order and online catalogs of the same name. The Complaint alleges that Ross-Simons mails more than 60 million Ross-Simons catalogs to consumers each year, and, in addition, maintains an on-line catalog which is located at <ross-simons.com> operating 24-hours a day and reaches millions of consumers.

As a result of its continuous and exclusive use of the mark, ROSS-SIMONS, since at least as early as 1954, Ross-Simons has built up substantial value and goodwill in its ROSS-SIMONS registered mark.

Ross-Simons has an active presence on the Internet. The Complainant registered its <ross-simons.com> domain name on May 16, 1996, and has operated a website and on-line catalog at this Internet address since at least December 1996.

Complainant uses its ROSS-SIMONS website to advertise, promote and sell its jewelry, tableware, collectibles, home décor and related items. The website operates 24 hours a day.

Complainant alleges that the domain name in question <rosssimonscoupon.com> is confusingly similar to the ROSS-SIMONS mark and the current registrant, the Respondent, has no rights or legitimate interests in the domain name.

The Complainant alleges the Respondent has registered and used the domain name in bad faith.

Complainant alleges that sometime during or after January 2003, Respondent began using the <rosssimonscoupon.com> domain name to point Internet users to a search engine and portal website. Respondent’s “www.rosssimonscoupon.com” website provides links to various sites that offer coupons and discounts. Complainant alleges when an Internet user clicks on the link to one of these sites, they are faced with coupon or discount offers for on-line catalogs that sell the same merchandise as sold by Complainant.

The Complainant alleges that the <rosssimonscoupon.com> domain name is confusingly similar to Complainant’s ROSS-SIMONS registered mark.

Complainant alleges that Respondent has no rights or legitimate interests in the infringing domain name and that the Respondent is not using the infringing domain name in connection with a bona fide offering of goods or services.

Complainant alleges that the Complainant never authorized, licensed or otherwise permitted Respondent to use its registered mark ROSS-SIMONS or any confusingly similar variation thereof.

Complainant alleges Complainant has not authorized, licensed or otherwise permitted Respondent to apply for or use any domain name comprising or incorporating Complainant’s registered mark ROSS-SIMONS.

The Complainant alleges that the Respondent registered and used the domain name <rosssimonscoupon.com> in bad faith for the purpose of intentionally attracting for commercial gain, Internet users to Respondent’s website, 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 of a product or service on the Respondent’s website.

B. The Response

As noted above, Respondent is in default pursuant to Paragraph 5(e) and Paragraph 14 of the Rules, and Paragraph 7(c) of the Supplemental Rules because no response was received from Respondent by the applicable deadline.

Unlike in a U.S. court proceeding, however, a default does not automatically result in a finding for a Complainant. Rather, under Paragraph 4(a) of the Policy, it remains Complainant’s burden to establish that all three of the required criteria for a transfer of the domain name or other remedy have been met.

Under Paragraphs 5(e) and 14(a) of the Rules, the effect of a default by Respondent is that the Panel shall proceed to a decision on the Complaint. Under Paragraph 14(b), the Panel is empowered to draw such inferences from Respondent’s default as it considers appropriate.

6. Discussion and Findings

A. Regulations Applicable to Consideration of the Merits

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of Response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to Paragraph 15(a) of the Rules. In the Panel’s view, given that both parties to this dispute appear to be based in the United States, applicable authority shall include relevant principles of United States trademark law.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the domain name, each of the following:

(i) The domain name is identical or confusingly similar to a trademark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

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

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by Respondent, would demonstrate Respondent’s rights or legitimate interests in the domain names for purposes of Paragraph 4(a)(ii).

B. Effect of the Default

In this case, the Panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The Panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.

In particular, by defaulting and failing to respond, Respondent has failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the domain name, such as use or preparation to use the domain names prior to notice of the dispute, being commonly known by the domain name, or making legitimate noncommercial or fair use of the domain name.

Moreover, as discussed below, Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question Complainant’s argument that Respondent has acted in bad faith.

C. Complainant’s Proof

(i) Domain Name Identical or Confusingly Similar to Trademark

Complainant has proved that it is the owner of the rights in trademark ROSS-SIMONS. Complainant’s registration of its mark establishes the presumption of the validity of the mark under the United States law. (Complaint Exhibits D); 15 U.S.C. § 1057(b). Additionally, the registrations constitute constructive notice to all other parties of Complainant’s ownership of the mark. 15 U.S.C. § 1072.

A domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety. Minnesota Mining & Manufacturing v. JonLR, WIPO Case No. D2001-0428 (May 30, 2001).

When the only difference between Complainant’s registered mark ROSS-SIMONS, Complainant’s domain name <ross-simons.com>, and Respondent’s domain name <rosssimonscoupon.com> is the elimination of the hyphen between the words “ross” and “simons” and the addition of the descriptive term “coupon” that denotes a particular item for which Complainant is known, confusion is inevitable. Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456 (June 6, 2001).

(ii) Whether Respondent has rights of legitimate interests in the domain name

The Panel concludes that none of the three illustrative circumstances set forth in Paragraph 4(c) of the Policy demonstrates any rights or legitimate interests in the domain name on the part of the Respondent.

The Panel concludes the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.

The Panel finds that the Respondent is using the <rosssimonscoupon.com> domain name to divert Internet traffic to its website where it provides links to sites that offer coupons for Complainant’s competitors.

The use of the domain name that is confusingly similar to a registered mark to divert Internet users to a competitor’s website is not a use in connection with a bona fide offering of goods or services or legitimate non-commercial or fair use. America Online, Inc., v. Tencent Comm. H. Corp., NAF Case No. 93668 (March 21, 2000). Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).

The Panel finds the Respondent has no connection or affiliation with Ross-Simons and has not received any license or consent, expressed or implied, to use the ROSS-SIMONS mark in a domain name or in any other manner. The Respondent has not shown any other rights or legitimate interests in the domain name.

(iii) Registration and Use in Bad Faith

Complainant is required to establish that Respondent has registered and used the domain name in bad faith.

Paragraph 4(b) of the Policy sets out illustrative circumstances of registration and use of a domain name in bad faith.

The Panel finds that the Respondent registered and used the domain name <rosssimonscoupon.com> in bad faith primarily for the purpose of intentionally attracting for commercial gain, Internet users to Respondent’s portal website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or of a product or service on the Respondent’s website.

The Panel finds that Respondent’s unauthorized and unapproved redirection of consumers searching for Complainant to the Respondent’s website where it provides links to websites which offer coupons for stores that sell similar merchandise is solely for the purpose of achieving commercial gain and constitutes bad faith registration and use. NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (April 4, 2001).

The Panel finds that the Respondent’s domain name links to websites that offer coupons for competing products and Respondent’s domain name is confusingly similar to Complainant’s registered mark ROSS-SIMONS and <ross-simons.com> domain name. It is believed that the Respondent had actual knowledge of Complainant’s rights in its ROSS-SIMONS registered mark when the Respondent registered its <rosssimonscoupon.com> domain name and this is further evidence of bad faith. Digi Int’l v. Digi Sys, NAF Case No. 124506 (October 24, 2002).

The Panel concludes that the Respondent has registered and used the domain name in bad faith pursuant to Paragraph 4(b)(iv) of the Policy.

In light of the findings and analysis by the Panel, the Panel decides that the Complainant has met his burden of proving its rights in ROSS-SIMONS mark, and that the domain name is confusingly similar to Complainant’s trademark, ROSS-SIMONS, and that the Respondent has no rights or legitimate interests in respect to the domain name; the domain name has been registered and is being used by Respondent in bad faith.

7. Decision

Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel orders that the domain name <rosssimonscoupon.com> be transferred to the Complainant.

Peter J. McGovern
Sole Panelist

Dated: October 6, 2004