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Ross-Simons, Inc. v. Pirro Betenson [2004] GENDND 471 (13 April 2004)

1. The Parties

The Complainant is Ross-Simons, Inc., a Rhode Island corporation, with a place of business in Cranston, Rhode Island, United States of America. Complainant is represented by Hinckley, Allen & Snyder, LLP, United States of America.

The Respondent is Pirro Betenson with an address in Muscatine, Iowa, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <rosssimonsjeweler.com>, is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center ("Center") on February 19, 2004. On February 20, 2004, the Center transmitted by e-mail to eNom a request for registrar verification in connection with the domain name at issue. However, eNom did not respond to the Center's request. On February 26, 2004, the Center confirmed through eNom's "whois" database that Respondent was listed as the registrant and confirmed the administrative, billing, and technical contact information.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").

In accordance with Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 26, 2004. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 17, 2004.

No response was received from Respondent by the March 17, 2004, deadline. On March 19, 2004, the Center transmitted to Respondent, via e-mail, a Notification of Respondent Default.

The Center appointed Debra J. Stanek as the Sole Panelist in this matter on April 2, 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 paragraph 7 of the Rules.

4. Factual Background

Complainant is the owner of a United States federal trademark registration for the mark ROSS-SIMONS for "retail store and mail-order services specializing in jewelry, china, silver and gift items," which issued in 1985. According to the Complaint, Complainant has, for many years, used the ROSS-SIMONS mark for jewelry and other products sold through its retail stores, mail order catalogs, and through its "www.ross-simons.com" website.

According to the Complaint, around January 8, 2003, Respondent registered the domain name <rosssimonsjeweler.com>. The "www.rosssimonsjeweler.com" website presents links to a number of third party sites that sell jewelry products.

5. Parties' Contentions

A. Complainant

The Complainant makes the following contentions:

The disputed domain name, <rosssimonsjeweler.com>, is confusingly similar to Complainant's ROSS-SIMONS trademark because it simply omits the hyphen and adds the descriptive term "jeweler."

The Respondent has no rights or legitimate interests in respect of the disputed domain name. It does not appear to be Respondent's legal name or to otherwise be commonly used to identify Respondent. Respondent's "whois" information does not contain any information that would suggest that Respondent is known by the disputed domain name. Complainant also contends that Respondent did not, prior to notice of this dispute, use the <rosssimonsjeweler.com> domain name or a corresponding trademark in connection with a bona fide offering of goods or services. Finally, Complainant contends that Respondent's use of the <rosssimonsjeweler.com> domain name is neither a legitimate non-commercial use nor a fair use. The Complaint points to the fact that visitors to Respondent's site are provided links to third party sites whose products compete with those of Complainant.

The Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent has intentionally attempted to attract, for commercial gain, consumers to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website or the products or services on the website, (2) Respondent's website draws potential consumers to the site by the use of the ROSS-SIMONS mark, but then directs those users to products of Complainant's competitors, (3) Complainant has not consented to the Respondent's registration or use of the disputed domain name, and (4) Respondent is "typo-squatting" - taking advantage of typographical errors by those seeking to access Complainant's "www.ross-simons.com" website.

B. Respondent

As noted above, Respondent has not responded to the Complainant's contentions.

6. Discussion and Findings

In order to prevail, the Complainant must prove:

Policy, paragraph 4(a). The Policy sets out four sets of circumstances that may evidence a Respondent's bad faith registration and use under paragraph 4(a)(iii), see Policy, paragraph 4(b), as well as examples of circumstances that may evidence a Respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c).

Although Respondent has not answered any of the allegations or evidence of the Complaint, a default does not automatically result in a finding for Complainant. Rather, the Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent's default as it considers appropriate. See Rules, paragraph 14(b).

The primary consequence of Respondent's failure to respond is that it has not offered any of the types of evidence set forth in paragraph 4(c) of the Policy - such as using (or preparing to use) the domain name before the dispute, being known by the domain name, or making legitimate noncommercial or fair use of the domain name - that might support a finding that Respondent has rights or legitimate interests in the domain name.

A. Respondent's Domain Name is Identical or Confusingly Similar to Complainant's Mark

Complainant has established its trademark rights in the ROSS-SIMONS mark by providing proof of its federal trademark registration and the pages from its website. The <rosssimonsjeweler.com> domain name effectively incorporates Complainant's ROSS-SIMONS mark in its entirety. Neither the omission of the hyphen between the terms "Ross" and "Simons" nor the addition of the generic or descriptive term "jeweler" alters this conclusion.

The Panel finds that Respondent's domain name is confusingly similar to Complainant's trademark.

B. Respondent Has No Rights or Legitimate Interests in the Domain Name

Establishing that the Respondent has no rights or legitimate interest in the domain name - proving a negative - can be difficult. Some panels have held that the burden of establishing this element is light, because the evidence lies within Respondent's knowledge. Others have held that after a Complainant makes a prima facie showing, the burden shifts to the Respondent to rebut Complainant's evidence. These approaches are consistent with the general structure of the Rules. Rules, paragraph 3(b)(ix)(2) requires the Complainant to show "why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) . . . ." (emphasis added), while paragraph 5(b) of the Rules requires the Respondent to "[r]espond specifically to the statements and allegations contained in the [C]omplaint."

The Panel concludes that Complainant has adequately demonstrated that none of the three examples set forth in paragraph 4(c) of the Policy are applicable here.

First, it does not appear, from the printouts of Respondent's website, that Respondent was making a bona fide use of the domain name before notice of the dispute. As noted above, the disputed domain name is confusingly similar to Complainant's well-known mark. The printouts of pages of Respondent's website do not reveal any connection between the disputed domain name and Respondent or the third party websites that are displayed.

Second, it does not appear that the disputed domain is Respondent's legal name or is commonly used to identify Respondent. Apart from the "whois" printout, Complainant has not provided any evidence of trademark searches or other investigations.¹ However, it does appear that Respondent is an individual whose name, "Pirro Betenson," does not resemble the domain name or the ROSS-SIMONS mark.

Third, it does not appear that Respondent is making a legitimate non-commercial or fair use of domain name. Again, the printouts of pages of Respondent's website show that visitors are offered links to a number of third party sites that sell jewelry in competition with Complainant.

These circumstances, Complainant's ROSS-SIMONS mark and website are well-known, Respondent is an individual whose name does not resemble the domain name or the ROSS-SIMONS mark, Respondent's website directs visitors to third party sites offering jewelry in competition with Complainant, Complainant has not authorized Respondent's use, combined with the adverse inference drawn by Respondent's failure to respond, are sufficient to meet Complainant's burden.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Respondent Has Registered and Used the Domain Name in Bad Faith

Complainant has established that Respondent has registered and used the domain name in bad faith by showing that Respondent uses the domain name to intentionally try to attract, for commercial gain, visitors to Respondent's site, by creating a likelihood of confusion with the ROSS-SIMONS mark as to the source, sponsorship, affiliation, or endorsement of Respondent's site or the goods and services on Respondent's site. See Policy, paragraph 4(b)(iv).

As noted above, Respondent's domain name is confusingly similar to the ROSS-SIMONS mark. It is therefore reasonable to conclude that Respondent's site attracts visitors who are actually seeking Complainant's site. Those visitors are then offered links to a number of links to third parties that sell, in competition with Respondent, similar types of jewelry items.

Moreover, it is relevant that Complainant's registered trademark ROSS-SIMONS has been in use for many years and is well-known in connection with jewelry and other products. It is not unreasonable to impute to Respondent knowledge of Complainant's rights in registering and using the domain name, particularly where Respondent's site purports to direct visitors to sites that sell jewelry.

Further, the Panel has already concluded that Respondent has no right or legitimate interest in the domain name and that Respondent's site does not make a bona fide offering of goods or services. Finally, other panels have concluded that the mere registration of a domain name that is a common misspelling of another's mark is evidence of bad faith registration and use.

Under these circumstances, the Panel finds that Respondent has registered and used the domain name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name, <rosssimonsjeweler.com>, be transferred to the Complainant.

¹ These might include results of searches of: (a) federal and state trademark databases for "rosssimonsjeweler" marks owned by Respondent, (b) telephone listings for Muscatine, Iowa and the surrounding area, or (c) databases of Iowa corporations.