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Pier 1 Imports, Inc., Pier 1 Services Company and Pier 1 Holdings, Inc. v. Motohisa OhnoCase No. [2004] GENDND 1383 (4 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pier 1 Imports, Inc., Pier 1 Services Company and Pier 1 Holdings, Inc. v. Motohisa OhnoCase No.

Case No. D2004-0623

1. The Parties

The Complainants are Pier 1 Imports, Inc., Pier 1 Services Company and Pier 1 Holdings, Inc. (the “Complainant”) of Fort Worth, Texas, United States of America represented by Baker Botts LLP of Dallas, Texas, United States of America.

The Respondent is Motohisa Ohno of Tokyo, Japan.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2004. On August 10, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On August 11, 2004, eNom transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain name would remain under Registrar Lock throughout the proceeding. In addition to eNom’s partial response, the Center made a WHOIS printout, which showed that the disputed Domain Name was registered with eNom, and that Respondent, Motohisa Ohno, was the current registrant of the disputed Domain Name. 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 August 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2004. On August 17, 2004, prior to notification of the Complaint and commencement of the proceedings, the Respondent sent an e-mail response to the Center. The Center acknowledged the e-mail on August 19, 2004, and advised the Respondent that he had a further twenty days to file a formal response. The Respondent did not submit any further response. Accordingly, the Center notified the Respondent’s default on September 16, 2004.

However, in the interest of justice and fairness to the Respondent, it was decided by the Administrative Panel that the response received from the Respondent through e-mail on August 17, 2004, even though it was prior to notification of the Complaint and commencement of the proceedings, may be taken into consideration in deciding this domain name dispute.

The Center appointed Dr. Vinod K. Agarwal as the sole panelist in this matter on September 24, 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

From the Complaint and the various annexures to it, the Administrative Panel has found the following facts:

Complainant’s activities

The Complainant, Pier 1 Imports, Inc., is one of the leading specialty retailers of fashion-forward, decorative home furnishings, gifts and related items in North America. It has more than 1,000 stores in 50 states, Canada, Mexico, Puerto Rico and the United Kingdom. The Complainant directly imports merchandise and designs proprietary assortments that become exclusive Pier 1 Imports offerings. The stock of Pier 1 Imports, Inc. is publicly traded on NASDAQ under the symbol PIR. Pier 1 Services Company is a Delaware statutory trust and an indirect subsidiary of Pier 1 Imports, Inc. Pier 1 Service Company owns all the company’s trademarks. Complainant and its predecessors-in-interest has continuously used the trade name and trademark PIER 1 IMPORTS in interstate commerce throughout the United States since August 1965. PIER 1 IMPORTS is the registered trademark of the Complainant for “retail gift store services in the field of furniture, home furnishings, household utensils, decorative items, toys, dining and kitchen goods, textiles” etc. in various international classes. These trademarks were registered on different dates, the earliest being November 5, 1971. The Complainant is also the owner of the domain name <pier1imports.com>.

Respondent’s identity and activities

In his e-mail response dated August 17, 2004, the Respondent has not indicated his activities. Hence, the Respondent’s activities are not known.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to this dispute.

In relation to element (i), the Complainant contends that it is the owner of the registered trademark PIER 1 IMPORTS in respect of fashion-forward, decorative home furnishings, gifts and related items. The domain name <peironeimports.com> is virtually identical to the trademark of the Complainant. The Respondent has misspelled the word “pier” to “peir” and the numeral “1” is written as the word “one.” The trademark of the Complainant has been in use much longer than the registration of the said domain name.

In relation to element (ii), the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the domain name <peironeimports.com> as the Respondent is known as “Motohisa Ohno.” The domain name <peironeimports.com> is not a descriptive word in which the Respondent may have a genuine interest. The Respondent is making no use of the domain name in connection with a bona fide offering of goods or services. Further that the Respondent is not making a legitimate non-commercial or fair use of the said domain name. The Respondent registered the domain name for the sole purpose of diverting Internet traffic to websites operated by competitors of the Complainants.

Regarding the element at (iii), the Complainant contends that the main object of registering the domain name <peironeimports.com> by the Respondent is to mislead Internet users and the general public.

B. Respondent

In the interests of justice and fairness, it was decided that the response received from the Respondent through e-mail on August 17, 2004, prior to notification of the Complainant and commencement of the proceedings, may be taken into consideration in deciding this case. The contention of the Respondent has been that he registered the domain name a year ago. The domain name <peironeimports.com> is a generic name combining “peirone” and “imports.” Furthermore, “peirone” is a proper name. For example, “http://www.peirone.com” is owned by Peirone Produce. In the end, the Respondent has stated that, “Of course, if it still violates anyone’s rights, I can change the service which I’ll use.”

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain name 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 in respect of the domain name; and

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

A. Identical or Confusingly Similar

The present dispute pertains to the domain name <peironeimports.com>. The Complainant is the registered owner of the trademark PIER 1 IMPORTS in the United States of America. The said trademark PIER 1 IMPORTS has been used in the domain name of the Respondent with a very minor variation. The two names, “peironeimports” and PIER 1 IMPORTS are almost identical and certainly confusingly similar in appearance and pronunciation. The contention of the Respondent that “peirone” is a proper name is not material in the present case. The reason being that it is not accompanied by the word “imports.”

It has been held by the Administrative Panels in past cases that addition, deletion or change of one word from the trademark of the Complainant will not alter the nature of the domain name. In Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869, the Panel compared the respondent’s domain name <estelauder.com> with the complainant’s trademark ESTEE LAUDER and came to the conclusion that the absence of one “e” was the only difference and that the respondent’s domain name is “confusingly similar to the complainant’s mark.” Similar conclusions have been arrived at by the Administrative Panels in Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273 (“pharmacia” and “pharmaciae”) and Briefing.com Inc. v. Cost Net Domain Name Manager, WIPO Case No. D2001-0970. The Panel finds that the domain name is confusingly similar to the registered trademark of the Complainant.

B. Rights or Legitimate Interests

According to Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interests in the domain name by proving any of the following circumstances:

(i) before any notice to the Respondent 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 (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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.

Based on the evidence in the Complaint, it is presumed that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name. See also Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221. PIER 1 IMPORTS is the registered trademark of the Complainant. It is evident that the Respondent can have no legitimate interest in the domain name. Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use the domain name incorporating said trademark and that nobody would use the phrase “peironeimports” unless seeking to create an impression of an association with the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

C. 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 the domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is 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; or

(ii) The Respondent has 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 it has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 web site or location or of a product or service on its web site or location.

The contention of the Complainant is that the present case is covered by the above circumstances. The domain name is parked at DomainSpa.com, which advertises and provides links to websites offering furniture and home accessories by Complainant’s competitors. Furthermore, DomainSpa.com directs users to contact Respondent to determine whether the domain name is for sale. The Respondent has registered the domain name, which invariably and misleadingly diverts consumers to that address and has the effect of tarnishing the image of the valuable trademark. In this context, the Complainant has placed reliance on Pier 1 Imports, Inc. and Pier 1 Licensing, Inc. v. Success Work, WIPO Case No. D2001-0419 and Pier 1 Imports, Inc. and Pier 1 Licensing, Inc. v. Raymond E. Farr, Jr., WIPO Case No. D2001-0357.

The Respondent has stated in his response that the site is showing a notification at the bottom of the page to avoid confusing visitors. However, the “notification” is not reproduced in the response. The Complainant has tried to reproduce the “notification” which is in the following words: “[t]his website and DomainParking service is provided by DomainSpa.com. DomainSpa does not own this domain and is not affiliated with any advertisers listed here, or with any other party.” The reply of the Complainant is that the disclaimer at the bottom of the site is insufficient to dispel the likelihood of confusion caused by the domain name being similar to the trademark of the Complainant. The Panel agrees with the contention of the Complainant. If the “notification” has been rightly reproduced by the Complainant, it is very vague and it does not lead to the desired affect of alleviating the confusion as asserted by the Respondent.

This and other information submitted by the Complainant leads to the presumption that the said domain name was registered and used by the Respondent in bad faith. The Panel agrees with the said contention of the Complainant and concludes that the registration of the said domain name amounts to the registration and use of the domain name in “bad faith.”

7. Decision

In the light of the foregoing findings, namely, that the domain name is confusingly similar to a trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered in bad faith and is being used in bad faith, the Panel directs that the domain name <peironeimports.com> be transferred to the Complainant.

Dr. V. K. Agarwal
Sole Panelist

Dated: October 4, 2004