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Ross-Simons of Warwick, Inc. d/b/a Ross-Simons v. Ray Ross [2004] GENDND 1469 (23 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ross-Simons of Warwick, Inc. d/b/a Ross-Simons v. Ray Ross

Case No. D2004-0856

1. The Parties

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

The Respondent is Ray Ross, Bellevue, Washington, United States of America.

2. The Domain Names and Registrar

The disputed domain names <ross-simans.com> and <rosssimans.com> are registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2004. On October 19, 2004, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. On October 19, 2004, Wild West Domains, Inc. 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 October 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2004. The Center also received an email communication from the Respondent on November, 12, 2004, advising that the Respondent did not contest “transfer of the domain ownership as soon as information for a transfer is provided”.

The Center appointed William R. Towns as the sole panelist in this matter on November 15, 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 a retail seller of jewelry, tableware, gifts, collectables, home decor and related items, under the registered service mark ROSS-SIMONS.¹ The Complainant offers such products for sale through retail and outlet stores, mail order catalog and over the Internet.² In addition to maintaining its own website from which sales are made, the Complainant also has created an affiliate network of websites. Affiliate member sites are allowed to link to the Complainant’s website, “www.ross-simons.com”. An affiliate receives a commission for each on-line sale the Complainant makes to a customer referred by the affiliate to the Complainant’s website.

The Complainant’s affiliate agreement authorizes affiliates to link their websites to areas within the Complainant’s website, and grants to each affiliate a revocable, non-exclusive license to use the Complainant’s name, logos, trademarks, service marks and trade dress for the purpose of creating links from the affiliate’s website to the Complainant’s website. However, the Complainant’s affiliate agreement expressly prohibits affiliates from registering or using any domain name that may be confused with the Complainant’s mark or registered domain names, including any misspellings of the Complainant’s mark or domain names. Further, an affiliate’s use of a confusingly similar domain name to redirect Internet users to its website for the purpose of generating additional commissions is a violation of the agreement.

The Respondent registered the disputed domain names on December 9, 2003. The Respondent is or has been an affiliate of the Complainant. The Respondent has used the domain names to direct internet users to his website, “www.surfingshopper.com”, which is a shopping portal providing links to numerous other websites where a wide variety of goods and merchandize are advertised or offered for sale. The Respondent currently is not using the disputed domain names to direct Internet users to his website.

5. Parties’ Contentions

A. Complainant

The Complainant describes itself as a leading value-priced retailer of fine jewelry, tableware, gifts, collectibles and home decor. The Complainant markets this merchandise through retail and outlet stores, mail order catalogs and on its official website, and has used the service mark ROSS-SIMONS continuously and exclusively for over 50 years in connection with its business. The Complainant obtained a registration of ROSS-SIMONS as a service mark with the United States Patent and Trademark Office on January 29, 1985, and began operating a website using the domain name <ross-simons.com> in 1996, where the ROSS-SIMONS mark is prominently featured. As a result of the foregoing, the Complainant states that it has established substantial value and goodwill in the ROSS-SIMONS mark.

The Complainant contends that the disputed domain names registered by the Respondent are confusingly similar to the Complainant’s ROSS-SIMONS mark. The Complainant alleges that the Respondent registered and is using the disputed domain name to direct internet users to his website “www.surfingshopper.com”, where the Complainant’s ROSS-SIMONS mark is displayed in the same font and size as used on the Complainant’s official website, and where photographs identical to those found on the Complainant’s website also are displayed. According to the Complainant, an Internet user who clicks on one of these photographs displayed on the Respondent’s website is instantaneously directed to the Complainant’s website.

The Complainant appears to concede that the Respondent’s website is part of the Complainant’s affiliate network of websites, which the Complainant created in order to increase its presence and on-line sales. The Complainant further concedes that owners of member websites are permitted to create links to the Complainant’s official website using banner ads or text links. Under the Complainant’s affiliate program, the affiliate is paid a commission for every on-line sale that the Complainant makes as a result of a referral to the Complainant’s official website. The Complainant maintains, however, that its affiliate program expressly prohibits affiliates from registering and using domain names that contain the ROSS-SIMONS name and mark or any misspelling thereof.

The Complainant also contends that the Respondent has no legitimate rights or interests in the disputed domain names, asserting that the Respondent is not commonly known by the domain names, and that the Respondent is not making any noncommercial fair use of the domain names. Further, the Complainant argues that the Respondent’s use of the dispute domain names to re-direct internet users to the Complainant’s official web site in order to receive a commission as part of the Complainant’s affiliate program does not constitute use of the domain names in connection with a bona fide offering of goods or services.

Finally, the Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith to intentionally attract internet users for commercial gain to the 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. For all of these reasons, the Complainant requests that the disputed domain names be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. As noted above, the Respondent has notified the Center that he does not contest the transfer of the disputed domain names.

6. Discussion and Findings

A. Scope of Policy

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, Paragraphs 169 & 170. Rule 15(a) provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

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 names are confusingly similar to Complainant’s ROSS-SIMONS mark for purposes of Paragraph 4(a)(i) of the Policy. The Complainant beyond question has established rights in the ROSS-SIMONS mark through registration and use. 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.

The disputed domain names, <ross-simans.com> and <rosssimans.com>, incorporate the Complainant’s ROSS-SIMONS mark in its entirety, and are distinguishable from the mark only by a change of a single letter in both domain names, and in the latter domain name, the omission of a hyphen. Given the Respondent’s membership in the Complainant’s affiliate program, the Respondent’s registration and use of these domain names displays aspects of the practice known as “typosquatting”³, but regardless of the characterization of the Respondent’s conduct, the Panel finds that the domain names registered by the Respondent are confusingly similar to the Complainant’s ROSS-SIMONS mark.

C. Rights or Legitimate Interests

The Complainant has shown that it did not authorize the Respondent’s use of the ROSS-SIMONS mark for the purpose of registering the disputed domain names. The Complainant’s affiliate agreement proscribed the Respondent’s use of domain names that were misspellings of the Complainant’s mark. The Respondent’s use of such domain names to redirect Internet users to his website in order to generate additional commissions violated the agreement. The circumstances of the case strongly suggest that the Respondent registered the disputed domain names with knowledge of the Complainant’s mark and notice that the registration and use of the domain names violated his affiliate agreement with the Complainant. This is a sufficient prima facie showing for purposes of Paragraph 4(a)(ii) that the Respondent lacks rights or legitimate interests in the disputed domain names. 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 names 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.

In this case, the Respondent has not submitted a formal response to the Complaint. Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

Certainly, in the absence of any submission by the Respondent, this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009. Nevertheless, the ultimate burden of proof on the legitimacy issue remains with the Complainant. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Accordingly, the Panel considers it appropriate to examine the record in its entirety to determine whether any evidence exists supporting a claim by Respondent of rights or legitimate interests in the disputed domain names.

There is nothing in the record remotely suggesting that the Respondent has been commonly known by the disputed domain names, or that the Respondent is making any legitimate noncommercial or fair use of the domain name. However, the record does reflect the Respondent’s use of the disputed domain names to direct internet users to his website, an on-line shopping portal, where the Complainant had authorized the Respondent to create links to the Complainant’s website, in order to increase on-line sales from the Complainant’s website, for which the Respondent received a commission.

Has the Respondent established rights or legitimate interests in the disputed domain names based on their use in connection with a bona fide offering of goods or services, before notice of the dispute? Clearly, the Respondent has used the domain names in connection with the offering of Complainant’s merchandise, but the dispositive question is whether this offering was bona fide under Paragraph 4(c)(i) of the Policy. The answer turns on whether, under the totality of the circumstances, the use of the disputed domain names in connection with the offering constitutes bad faith registration or use of the domain names under Paragraph 4(a)(iii). See, e.g., First American Funds, Inc. v. Ult. Search, Inc, WIPO Case No. D2000-1840.

The Complainant did not authorize the Respondent’s use of the ROSS-SIMONS mark for purposes of the disputed domain names. The Complainant’s affiliate agreement prohibited the Respondent from registering and using domain names that were misspellings of the Complainant’s mark. The Respondent’s use of the disputed domain names to redirect Internet users to his website in order to generate additional commissions violated the affiliate agreement. The Panel finds from the totality of the circumstances of this case, including the Respondent’s failure to reply to the Complaint, that the Respondent registered the disputed domain names with knowledge of the Complainant’s mark and notice that the registration and use of the domain names violated his affiliate agreement with the Complainant.

In view of the foregoing, the Panel finds that the Respondent registered and used the disputed domain names in bad faith to divert internet users to his website for his own commercial gain. Consequently, the Panel concludes that the Respondent has not used the disputed domain names in connection with a bona fide offering of goods are services, and thus has no rights or legitimate interests in the domain names for purposes of Paragraph 4(a)(ii) 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 domain name 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.

In the Panel’s view, this case does not fall squarely within any one of the four examples of bad faith registration and use set forth in Paragraph 4(b). Even assuming the Respondent’s conduct properly may be characterized as “typosquatting”, there is no evidence that the Respondent has engaged in a pattern of such conduct for purposes of Paragraph 4(b)(ii). See Bally Total Fitness, Inc. v. Torres a/k/a Global Media Consulting, WIPO Case No. D2001-0546.

Insofar as Paragraph 4(b)(iv) is concerned, this is not a case, such as Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768, in which internet users would be mislead by a confusingly similar domain name into believing that an affiliation of some sort existed between the complainant and the respondent, when in fact no such relationship existed. In this case, an affiliation in fact existed, and the Complainant had licensed the Respondent, as an affiliate, to use the Complainant’s name, trademarks and service marks, logos and trade dress on its website in order to create links to the Complainant’s website and promote the Complainant’s on-line sales.

The examples provided in Paragraph 4(b) of the Policy are not intended to be exhaustive of all circumstances evidencing bad faith registration and use of a domain name, however. As discussed above, the Panel has determined from the totality of the circumstances that the Respondent registered and used the disputed domain names in bad faith. The Complainant’s affiliate agreement prohibited the Respondent from registering and using domain names that were misspellings of the Complainant’s mark. The Respondent’s use of the disputed domain names to redirect Internet users to his website in order to generate additional commissions violated his affiliate agreement. The Respondent registered the disputed domain names with knowledge of the Complainant’s mark and notice that the registration and use of the domain names violated his affiliate agreement. This constitutes bad faith registration and use for purposes of Paragraph 4(a)(iii) of the Policy.

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 names <ross-simans.com> and <rosssimans.com> be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: November 23, 2004

¹ The Complainant registered this service mark with the United States Patent and Trademark Office in January 1985, and had used the mark in commerce for a number of years prior to this registration.

² The Complainant registered the domain name <ross-simons.com> in May 1996 and has used this as the internet address for the Complainant’s website and on-line catalog since December 1996.

³ “Typosquatting” involves the intentional registration and use of a domain name that is a common misspelling of a distinctive mark. See, e.g., Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035; Playboy Enterprises International Inc. v. SAND WebNames – For Sale, WIPO Case No. D2001-0094; Telstra Corp. Ltd. v. Warren Bolton Consulting Pty. Ltd., WIPO Case No. D2000-1293. In a typical “typosquatting” case, the respondent has registered and is using the domain name in order to take advantage of typographical errors made by internet users seeking the complainant’s commercial website and divert them to the respondent’s website. Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035.