DECISION

Wild Marks, Inc. v. xcsquare@hotmail.com

Claim Number:  FA0402000235716

PARTIES

Complainant is Wild Marks, Inc. (“Complainant”), represented by Miriam D. Trudell of Sheridan Ross PC 1560 Broadway, Suite 1200, Denver, CO 80202.  Respondent is xcsquare@hotmail.com (“Respondent”), P.O. Box No. 71826, MFTES, Moscow, NA, Russian Federation.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <henrysmarketplace.com>, registered with OnlineNIC, Inc.

PANEL

The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflicts in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically February 4, 2004; the Forum received a hard copy of the Complaint February 6, 2004.

On Feburaury 5, 2004, OnlineNIC, Inc. confirmed by e-mail to the Forum that the domain name <henrysmarketplace.com> is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. verified that Respondent is bound by the OnlineNIC, Inc. registration agreement and has 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 February 11, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 2, 2004, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@henrysmarketplace.com by e-mail.

Having received no Response from Respondent, 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 March 19, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <henrysmarketplace.com>, is identical to Complainant’s HENRY’S MARKETPLACE mark.

2. Respondent has no rights to or legitimate interests in the <henrysmarketplace.com> domain name.

3. Respondent registered and used the <henrysmarketplace.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has been using the HENRY’S MARKETPLACE service mark since May 1997.  It registered seven marks with the U.S. Patent and Trademark Office (“USPTO”) incorporating the phrase “HENRY’S MARKETPLACE” (i.e. Reg. Nos. 2,402,310, 2,610,002, 2,659,763, 2,601,345, 2,543,183, 2,433,795, 2,621,619) with the first registered on November 7, 2002.

Respondent, xcsquare@hotmail.com registered the <henrysmarketplace.com> domain name on October 7, 2002.  Respondent is using the disputed domain name to redirect browsers to <domainsponsor.com>, which contains links to grocery stores as well as pop-up advertisements. 

DISCUSSION

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 will draw such inferences as the Panel 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.

Identical to and/or Confusingly Similar

Complainant holds the registration for the HENRY’S MARKETPLACE mark.  Complainant’s rights in the mark relate back to the filing date for the registration, April 15, 1997.  See FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).

The domain name registered by Respondent, <henrysmarketplace.com>, is identical to Complainant’s HENRY’S MARKETPLACE mark.  The only difference is the ommission of the apostrophe and the space between the words, which does not substantially distinguish the domain name from the mark.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Respondent has not filed a response.  Therefore, the Panel may construe all reasonable inferences against Respondent.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent uses the <henrysmarketplace.com> domain name to redirect Internet users to <domainsponsor.com>—a website that promotes Complainant’s competitors (grocery stores) and subjects the Internet users to pop-up advertising.  Using the disputed domain name to lure Complainant’s customers to competing services and advertisements is neither a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶ 4(c)(iii).  See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because Respondent is using the infringing domain name to sell prescription drugs it can be inferred that Respondent is opportunistically using Complainant’s mark in order to attract Internet users to its website); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements).

Respondent presented no evidence and nothing in the record, including the WHOIS information relating to the domain name registration, suggests Respondent is commonly known by the <henrysmarketplace.com> domain name.  Therefore, the Panel finds that Respondent is not commonly known by the domain name.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding Respondent has no rights in a domain name when Respondent is not known by the mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s registration of the disputed domain name integrates Complainant’s mark in its entirety.  Respondent’s use of the disputed domain name promotes Complainant’s competitors to Internet users who visit the website at the <henrysmarketplace.com> domain name.  The Panel infers that, in its registration and use of the disputed domain name, Respondant intended to disrupt Complainant’s business, pursuant to Policy ¶ 4(b)(iii).  See VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding bad faith where Respondent has connections with a competitor of Complainant’s digital security business and Respondent indicated that she intended to enter the same business); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding that the disputed domain names were registered and used in bad faith where Respondent registered domain names which infringed upon Complainant’s mark, had no resemblance to Respondent’s business name and where Respondent’s competing business was located one and a half blocks from Complainant’s business).

Additionally, because the <henrysmarketplace.com> domain name is identical to Complainant’s HENRY’S MARKETPLACE mark, the Panel concludes that Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s mark for commercial gain, pursuant to Policy ¶ 4(b)(iv).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also, S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <henrysmarketplace.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: March 29, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/254.html