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Generic Top Level Domain Name (gTLD) Decisions |
800 New Look Ltd. v. USA Professional
Marketing, Inc. and Bill Limato
Claim
Number: FA0401000224965
Complainant is 800 New Look Ltd. (“Complainant”), represented
by Candace Lynn Bell, of Kavinoky & Cook LLP,
120 Delaware Ave., Buffalo, NY 14202. Respondents are USA Professional Marketing, Inc. and Bill Limato, 10524
Leader Lane, Orlando, FL 32825.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <1877anewlook.com>, registered with Register.Com.
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.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on January 9, 2004; the
Forum received a hard copy of the
Complaint on January 12, 2004.
On
January 9, 2004, Register.Com confirmed by e-mail to the Forum that the domain
name <1877anewlook.com> is registered with Register.Com and that
Respondents are the current registrants of the name. Register.Com has verified
that Respondents
are bound by the Register.Com registration agreement and have
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
January 15, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of February 4, 2004 by which Respondents could file a Response to
the Complaint, was transmitted to Respondents
via e-mail, post and fax, to all
entities and persons listed on Respondents’ registration as technical,
administrative and billing
contacts, and to postmaster@1877anewlook.com by
e-mail.
Having
received no Response from Respondents, 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
February 13, 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.
Complainant
requests that the domain name be transferred from Respondents to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <1877anewlook.com>
domain name is confusingly similar to Complainant’s 1-800 NEW LOOK family of
marks.
2. Respondent does not have any rights or
legitimate interests in the <1877anewlook.com> domain name.
3. Respondent registered and used the <1877anewlook.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, 800
New Look Ltd., through its predecessor in interest, has used the A NEW LOOK
design mark (U.S. Reg. No. 1,767,740)
since August of 1986 in connection with
the promotion and sale of cosmetic and plastic surgery services. Pursuant to
these buisness
practices, Complainant also uses the 1-800 NEW LOOK mark (e.g.
U.S. Reg. No. 1,949,281) and operates a website at the
<1800newlook.com> domain name. Complainant’s registration of its domain
name and its use of its family of trademarks all predate Respondent’s
registration of the disputed domain name.
Respondents,
listed as both USA Professional Marketing, Inc. and Bill Limato in the WHOIS
Registrant information for the disputed
domain name and hereinafter refered to
as “Respondent,” registered the <1877anewlook.com> domain name on
February 7, 2003, without license or authorization to use Complainant’s A NEW
LOOK or 1-800 NEW LOOK marks for any
purpose. Respondent uses the domain name
to host an incomplete website that purports to advertise Respondent’s services,
which involve
connecting potential plastic surgery customers with plastic
surgeons for a fee.
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.
Complainant has
established rights in the 1-800 NEW LOOK and A NEW LOOK marks through
registration of the marks, as well as through
continuous use of the marks in
commerce.
Respondent’s <1877anewlook.com>
domain name is confusingly similar
to Complainant’s 1-800 NEW LOOK and A NEW LOOK marks. The substitution of the
toll-free “877” prefix
for the “800” prefix does not alleviate any confusing
similarity between the domain name and Complainant’s mark. Respondent’s use
of
Complainant’s A NEW LOOK mark after this prefix, instead of Complainant’s use
of NEW LOOK, is also insufficient to prevent a finding
of confusing similarity,
as Respondent is merely combining two of Complainant’s registered marks. See
Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6,
2001) (“The fact that a domain name wholly incorporates a Complainant’s
registered mark is sufficient to
establish identity or confusing similarity for
purposes of the Policy despite the addition of other words to such marks.”); see
also Nintendo of Am. Inc v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent
combined Complainant’s POKEMON and PIKACHU marks
to form the
<pokemonpikachu.com> domain name).
Accordingly, the
Panel finds that the <1877anewlook.com> domain name is confusingly similar to Complainant’s 1-800 NEW LOOK and A
NEW LOOK marks under Policy ¶ 4(a)(i).
Respondent uses
the disputed domain name to offer services that directly compete with
Complainant’s services under its A NEW LOOK
family of marks. As Complainant was
the first entity to use these marks to denote plastic surgery services, and it
has not authorized
Respondent to use its A NEW LOOK family of marks for any
purpose, Respondent’s use of the disputed domain name does not qualify for
the
protections of either Policy ¶¶ 4(c)(i) or (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 Clear Channel Communications, Inc. v. Beaty
Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent,
as a competitor of Complainant, had no rights or legitimate interests
in a
domain name that utilized Complainant’s mark for its competing website).
As Complainant
is the senior user of the A NEW LOOK family of marks, and Respondent has not
supplied the Panel with any information
explaining its appropriation of
Complainant’s marks, the Panel finds that Policy ¶ 4(c)(ii) does not apply in
this dispute. See 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"); see also Web House USA, Inc. v. eDollarShop
Hostmaster, FA 155180 (Nat. Arb. Forum
June 10, 2003) (finding that Respondent was not “commonly known by” the
<edollarshop.com> domain name, despite naming itself “eDollarShop,”
because Respondent’s website was almost identical to Complainant’s
“first in
use” website and infringed on Complainant’s marks).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<1877anewlook.com> domain
name under Policy ¶ 4(a)(ii).
Respondent’s
domain name is confusingly similar to Complainant’s marks, and is used for
services almost identical to those supplied
by Complainant under those marks.
Thus, Internet users will likely be confused as to whether Complainant
operates, sponsors, or is
in some way affiliated with the services offered at
the disputed domain name. As this likelihood of confusion will result in the
receipt of commercial fees for Respondent, Respondent’s behavior equates to bad
faith use and registration of the disputed domain
name pursuant to Policy ¶
4(b)(iv). See 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 Busy Body, Inc. v. Fitness Outlet, Inc.,
D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to
attract customers to its website, <efitnesswholesale.com>,
and created
confusion by offering similar products for sale as Complainant).
The Panel thus
finds that Respondent registered and used the <1877anewlook.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <1877anewlook.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
February 27, 2004
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