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The Evening Store.com, Inc. v. Henry Chan [2004] GENDND 697 (26 June 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Evening Store.com, Inc. v. Henry Chan

Case No. D2004-0305

1. The Parties

The Complainant is The Evening Store.com, Inc., of Woodmere, New York, United States of America, represented by Ira J. Raab, United States of America.

The Respondent is Henry Chan, Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <eveningstore.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com (the “Registrar”).

3. Procedural History

This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on August 26, 1999, and the World Intellectual Property Organization, Arbitration and Mediation Center (the “Center”) Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

By registering the disputed domain name with the Registrar, the Respondent agreed to the resolution of certain disputes pursuant to the Policy and Rules.

According to the information provided by the Center, the procedural history of this proceeding is as follows:

• The Complainant filed its Complaint with the Center, by email and hard copy, on April 27 and 28, 2004.

• On April 28, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name, and the Registrar 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.

• On May 6, 2004, the Center advised the Complainant that the Complaint was deficient, and by May 11, 2004, the Complainant filed an amendment to the Complaint.

• The Center verified that the Complaint, as amended, satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules.

• In accordance with Rules paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and this proceeding commenced on May 13, 2004.

• In accordance with Rules paragraph 5(a), the due date for Response was June 2, 2004. The Respondent failed to file a Response within the prescribed time limit or at all, and on June 7, 2004, the Center delivered a Notification of Respondent Default to the Respondent.

• The single Panel member, Bradley J. Freedman, agreed to act as Panelist in this proceeding and filed his Statement of Acceptance and Declaration of Impartiality and Independence, and on June 16, 2004, was duly appointed by the Center.

The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

Based upon the information provided by the Center, the Panel finds that all technical requirements for this proceeding have been met.

4. Factual Background

The following information is derived from the Complaint and supporting evidence submitted by the Complainant.

• The Complainant is an online seller of ladies’ evening and formal wear, including evening dresses, formal dresses, prom dresses, gowns, formal gowns, cocktail dresses, plus size gowns, plus size evening dresses, and plus size formal dresses.

• The Complainant is the registered owner of the trademark THE EVENING STORE.COM, registered in the United States for use in association with “online retail store services featuring women’s clothing, women’s clothing accessories and novelty gift items.” The trademark was registered on November 27, 2001 (Registration No. 2511770).

• The Complainant is also the registrant of the <theeveningstore.com> domain name, which was registered on May 20, 1999. The Complainant uses the <theeveningstore.com> domain name for a website through which it sells evening and formal wear.

• The disputed domain name was registered on March 15, 2004.

• The Complainant sent an email to the Respondent regarding the disputed domain name, but the Respondent did not reply.

The Respondent has not filed any response to the Complaint or answered the Complainant’s factual assertions or evidence in any other manner.

The Complainant referred the Panel to the decision in Microcourt Limited v. Mr. Henry Chan, WIPO Case No. D2004-0075, in which the panel found that a Mr. Henry Chan of Nassau, Bahamas, had registered and was using in bad faith various domain names that conflicted with Microcourt’s trademark JACQUIE LAWSON. In that case, the panel noted that Mr. Chan had been involved in “an unusual number of cases” under the Policy.

Based upon searches of UDRP decisions, the Panel finds that the Respondent has registered a plethora of domain names to capitalize on variations and misspellings of well-known trademarks.¹ In each of those proceedings, the panels held that the Respondent registered and used the impugned domain names in bad faith.

The Panel accessed the Respondent’s website using the disputed domain name. The disputed domain name resolves to a website called Eveningstore.com, which provides advertisements and links to other websites that sell ladies’ evening and formal wear and to Internet searches for similar websites.

5. Parties’ Contentions

(a) Complainant

The Complainant contends as follows:

(i) The Complainant is the owner of the THE EVENING STORE.COM trademark registered in the United States, and the disputed domain name is the same as the Complainant’s mark except for the omission of the definite article “the.”

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

(iii) The Respondent registered and is using the disputed domain name in bad faith because he is using the disputed domain name to redirect Internet users to the Complainant’s competitors.

(b) Respondent

As previously indicated, the Respondent has not filed any response to the Complaint and has not answered the Complainant’s contentions in any other manner.

6. Discussion and Findings

The Policy is narrow in scope. It applies only to disputes involving alleged bad faith registration and use of domain names – conduct commonly known as “cybersquatting” or “cyberpiracy.” The Policy does not apply to other kinds of disputes between trademark owners and domain name registrants. The narrow scope of the Policy reflects its origins as a novel form of Internet dispute resolution designed to balance a wide range of perspectives regarding the regulation of Internet conduct.

The application of the Policy is limited to situations in which a complainant asserts and proves the following: (i) the registered domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant 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 (Policy paragraph 4(a)).

The burden is on the Complainant to prove all three required elements set forth in Policy paragraph 4(a) in order to be entitled to relief under the Policy. It is not sufficient for the Complainant to make assertions without providing proof.

(a) The Respondent’s Default

Rules paragraph 10(a) requires that the Panel ensure that each party is given a fair opportunity to present its case. Rules paragraph 14 reads as follows:

Default

(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.

The Panel further notes that the Registrar’s Registration Agreement requires the Respondent to keep its contact information (including postal address) “up-to-date, complete and accurate.” The Respondent cannot hide behind the provision to the Registrar of either an incorrect or out-of-date postal address.

As previously indicated, the Respondent failed to file any reply to the Complaint and has not sought to answer the Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to answer the Complaint, and the Panel will proceed to a decision.

The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a).

Rules paragraph 15(a) provides that the Panel shall decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. In accordance with Rules paragraph 14(b), the Panel may draw such inferences as are appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.

(b) The Complainant’s Trademark Rights

The Complainant is the owner of the THE EVENING STORE.COM trademark registered in the United States, and uses that mark in association with its online retail sale of women’s clothing and related products and ancillary services. The Complainant’s assertions in this regard are supported by documentary evidence. The Respondent has not filed any reply to the Complaint or contested the Complainant’s assertions. In the circumstances, the Panel finds that the Complainant has rights in the THE EVENING STORE.COM trademark.

The Policy requires that the disputed domain name be “identical or confusingly similar” to the Complainant’s THE EVENING STORE.COM trademark.

Neither the Policy nor the Rules provide any guidance with respect to the test to be applied regarding the confusing similarity requirement of the Policy. Panels have applied different tests. Some panels have undertaken a literal comparison of the domain name and the trademark, and have not considered whether there is any source confusion. Other panels have undertaken a source confusion analysis as required by conventional Anglo-American trademark law, which involves a consideration of all of the circumstances including the strength of the complainant’s mark, the sophistication of likely consumers, and the nature of the wares and services with which the domain name and conflicting mark are used.

A number of considerations support the view that the appropriate test for confusing similarity under the Policy is a literal comparison of the challenged domain name and conflicting mark:

(1) The language of Policy paragraph 4(a) should be interpreted in a purposive manner consistent with the Policy’s remedial nature and objective – to prevent the extortionate behavior known as “cybersquatting.”

(2) The language of Policy paragraph 4(a) does not invoke a likelihood of confusion test, as contrasted with Policy paragraph 4(b)(iv), which expressly refers to a “likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the registrant’s] website or location or of a product or service on [the registrant’s] website or location” as an indication of bad faith domain name registration and use.

(3) The Policy is international and, in the absence of express language, it is inappropriate to import into Policy paragraph 4(a) a test that may not exist under all national trademark laws.

(4) The procedure contemplated by the Policy is not well suited to the kinds of factual issues presented by a conventional source confusion analysis. In particular, the Policy is intended to be a relatively quick and inexpensive process, panels must make factual determinations based upon written submissions and documentary evidence, complainants have no right of reply without the panel’s permission, and parties are often not represented by counsel.

For those reasons, the Panel considers the appropriate test for confusing similarity to be a literal comparison of the disputed domain name and the complainant’s mark.

The only difference between the Complainant’s THE EVENING STORE.COM trademark and the disputed domain name is the omission of the definite article “the” in the domain name. In the circumstances, that difference is not material.

For those reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s THE EVENING STORE.COM trademark. Accordingly, the Panel finds that the Complainant has satisfied the first element required by the Policy.

(c) The Respondent’s Rights and Legitimate Interests

The second element required by Policy paragraph 4(a) – the registrant has no legitimate right or interest in the domain name – requires the Complainant to prove a negative proposition, which can be particularly difficult.

A number of panels have held that the burden on a complainant regarding this element is necessarily light, because the nature of the registrant’s rights or interests, if any, in a domain name lies most directly within the registrant’s knowledge. Other panels have held that once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in a domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent is infringing the Complainant’s rights in the THE EVENING STORE.COM trademark in bad faith and to confuse the public for financial gain. The Complainant has not provided any evidence of trademark searches or other investigations to indicate that the Respondent does not have any interest in any marks that include the term “EVENING STORE.COM” and is not commonly known as “EVENING STORE.COM.” In some circumstances, the omission of such evidence would be fatal to a complaint under the Policy. Nevertheless, in the circumstances of this dispute – including the apparent lack of connection or relationship between the disputed domain name and the Respondent’s name, the website for which the disputed domain name is used by the Respondent, the Respondent’s lack of rights granted by the Complainant, and the Respondent’s numerous other bad faith domain name registrations – together with an adverse inference from the Respondent’s failure to reply to the Complaint or provide any justification for its registration and use of the disputed domain name, are sufficient to satisfy the Complainant’s evidentiary burden.

Even though the Respondent has not filed any reply to the Complaint and has not contested the Complainant’s assertions, it is incumbent upon the Panel to consider whether the Respondent’s use of the disputed domain name demonstrates rights or legitimate interests in the domain name. According to Policy paragraph 4(c), the following circumstances, if proved, demonstrate a registrant’s rights or legitimate interests in a domain name:

(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;

(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) the registrant 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 complainant’s mark.

To satisfy the requirements of Policy paragraph 4(c)(i), the Respondent’s use of the disputed domain name must be in connection with a bona fide offering of goods or services. In some circumstances, a website providing a directory of other websites might constitute a bona fide offering of goods or services. In the circumstances of this case, however, the Respondent’s use of the disputed domain name is not “bona fide” within the meaning of Policy paragraph 4(c)(i) because: (a) the disputed domain name is confusingly similar to the Complainant’s registered trademark and domain name; (b) there is no apparent connection or relationship between the disputed domain name and the Respondent’s name; (c) the Respondent’s does not use the domain name to sell its own wares and services, but merely to provide a directory of the Complainant’s competitors; and (d) the Respondent has engaged in a pattern of similar domain name registrations. In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for its use of the disputed domain name for its website.

Policy paragraph 4(c)(ii) is not applicable. The Respondent does not contend, and there is no evidence that, the Respondent has been commonly known by the disputed domain name or that the disputed domain name is derived from one of Respondent’s trademarks or trade names.

Policy paragraph 4(c)(iii) is not applicable. The Respondent is using the domain name for a website that provides a directory of commercial websites owned or operated by the Complainant’s competitors.

For those reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

(d) Bad Faith Registration and Use

Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and has used the disputed domain name in bad faith. The language of Policy paragraph 4(b)(iii) is conjunctive, and requires that both bad faith registration and bad faith use be proved.

“Bad faith” within the meaning of the Policy is a term of art, and is not intended to apply to distasteful conduct that might constitute bad faith in the ordinary sense of the term. Policy paragraph 4(b) provides that the following circumstances are deemed to be evidence that a registrant has registered and used a domain name in bad faith:

(i) circumstances indicating that the registrant has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the registrant has intentionally attempted 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 its Website or location or of a product or service on its website or location.

The Policy expressly states that these circumstances are non-exclusive.

Policy paragraph 4(b)(iv) applies if the Complainant establishes that the Respondent registered and is using the disputed domain name in order to confuse and divert Internet traffic to its website for commercial gain. There is no direct evidence that the Respondent knew of the Complainant or its THE EVENING STORE.COM trademark, or intended to use the disputed domain name to confuse and divert Internet users. Nevertheless, the Respondent’s knowledge and intention may be determined by common sense inferences from circumstantial evidence.

The Panel finds that the Respondent knew of the Complainant’s THE EVENING STORE.COM trademark, and registered and is using the disputed domain name in order to confuse and divert Internet traffic to the Respondent’s website, based upon the following circumstances: (a) the Complainant’s registered THE EVENING STORE.COM trademark is specific to the Complainant in connection with the online retail sale of women’s clothing and related products and ancillary services; (b) there is no apparent connection or relationship between the disputed domain name and the Respondent; (c) the Respondent does not use the domain name to sell its own wares and services, but merely to provide a directory of commercial websites owned or operated by the Complainant’s competitors and links to Internet searches for similar websites; (d) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its website; (e) the Respondent has not denied any knowledge of the Complainant or its registered trademark; (f) the disputed domain name is confusingly similar to the Complainant’s <theeveningstore.com> domain name; and (g) the Respondent is a serial domain name cybersquatter who, for commercial gain, has repeatedly registered domain names that are identical or confusingly similar to well-known trademarks and popular website domain names in order to misdirect Internet users to the mislabeled websites. In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for its use of the disputed domain name for its website.

The Panel also finds that the Respondent’s website results in commercial gain to the Respondent. It is well known that many websites generate substantial revenue from click-through advertising, by directing traffic to other websites, and other online marketing techniques. In the absence of any reply by the Respondent, the Panel finds that the Respondent’s website generates revenue for the Respondent in that manner.

Accordingly, the Panel finds that the Complainant has established that the Respondent registered and is using the disputed domain name in bad faith pursuant to Policy paragraph 4(b)(iv).

In the circumstances, the Panel need not consider whether Policy paragraphs 4(b)(i), (ii) or (iii) are applicable, or whether there are other grounds for finding that the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

The Complainant has established each of the three requirements set forth in Policy paragraph 4(a) – the disputed domain name is confusingly similar to the Complainant’s THE EVENING STORE.COM trademark, the Respondent does not have any rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith.

The Panel therefore directs that the registration of the disputed domain name be transferred from the Respondent to the Complainant.

Bradley J. Freedman
Sole Panelist

Dated: June 26, 2004

¹ See Popular, Inc. v. Henry Chan, NAF Claim No. FA183739 (October 6, 2003) (ordering the transfer of the domain name <bancopopulardepuertorico.com>); The Sports Authority Michigan Inc. v. Henry Chan, NAF Claim No. FA176552 (September 15, 2003) (ordering the transfer of the domain names <sportsaurthority.com>, <sportsathoraty.com>, <sportsauthor.com>, and <portathority.com>); Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584 (September 7, 2003) (ordering the transfer of the domain name <deloitt.com>); Rock Financial v. Chan, NAF Claim No. FA0307000167917 (August 15, 2003) (ordering the transfer of the domain name <rockfinancial.com>); American Stores Co. v. Henry Chan, NAF Claim No. FA161567 (July 24, 2003) (ordering the transfer of the <jewelsosco.com> domain name); Reed Elsevier Inc. v. Henry Chan, NAF Claim No. FA161468 (July 23, 2003) (ordering the transfer of the <lexixnexis.com> domain name); Bedford Fair Apparel, Inc. v. Henry Chan, Claim No. FA157322 (June 20, 2003) (ordering the transfer of the <willowridgecatalog.com> domain name); Pioneer Hi-Bred Int’l Inc. v. Henry Chan, NAF Claim No. 154119 (May 12, 2003) (ordering the transfer of the domain name <pioneerseed.com>); LTD Commodities LLC v. Henry Chan, NAF Claim No. FA152617 (May 8, 2003) (ordering the transfer of the domain names <ltdcommedities.com>, <ltdcommidties.com>, <ltdcommondities.com>, <ltdcommoties.com>, <ltdcommodities.net>, <ltdcommidies.com> and <thelakesidecollection.com>); Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031 (March 2003) (ordering the transfer of the <rbcroyal.com>, <rbccenturabank.com> and <rbcrewards.com> domain names); Yahoo! Inc. et al. v. Henry Chan, NAF Claim No. FA0306000162050 (July 16, 2003) (ordering the transfer of the <allofyahoo.com>, <arabicyahoo.com>, <dialsbcyahoo.com>, <dslsbcyahoo.com>, <geociteies.com>, <geocitief.com>, <hothjobs.com>, <httyahoo.com>, <htyahoo.com>, <launchmuiscvideo.com>, <launchcastradio.com>, <lanchyahoo.com>, <lanuchyahoo.com>, <launchyahho.com>, <launchyaho.com>, <launhyahoo.com>, <movieyahoo.com>, <mxyahoo.com>, <myhahoo.com>, <myyahho.com>, <postalesyahoo.com>, <sbcdslyahoo.com>, <sbcglobalyahoo.com>, <sbcglobalyahoo.net>, <sbcyahoo.net>, <spanolyahoo.com>, <wwwjahoo.com>, <yahhogroups.com>, <yaholagens.com>, <yaholigins.com>, <yaholl.com>, <yahoo9.com>, <yahooagains.com>, <yahooagians.com>, <yahooail.com>, <yahooamail.com>, <yahooaustralia.com>, <yahoochart.com>, <yahoodictionary.com>, <yahooemotes.com>, <yahoogalins.com>, <yahoofreegames.com>, <yahoogallery.com>, <yahooglians.com>, <yahoohooligans.com>, <yahooimages.com>, <yahoolagines.com>, <yahoolagoons.com>, <yahoolanch.com>, <yahooliangs.com>, <yahooligian.com>, <yahoolmail.com>, <yahoologin.com>, <yahoomailo.com>, <yahoomasenger.com>, <yahoomex.com>, <yahoomusiclaunch.com>, <yahoomusicvideo.com>, <yahoomusicvideos.com>, <yahoopool2.com>, <yahoopostales.com>, <yahooresume.com>, <yahoosignup.com>, <yahootunnel.com>, <yahooupdate.com>, <yaooho.com>, <yaool.com>, <yhoolagins.com>, <yhoou.com>, <ylahoo.com>, <yohoogames.com>, <yugihoo.com>, <ywahoo.com>, <wwwyahou.com>, <yahhoomail.com> and <yhooh.com> domain names); Cancer Treatment Centers of America, Inc. (CTCA) v. Henry Chan, WIPO Case No. D2003-0611 (September 18, 2003) (ordering the transfer of the <cancercenterofamerica.com> and <cancertreatmentcenterofamerica.com> domain names); duPont Publishing, Inc. v. Henry Chan, No. FA0312000218902 (January 26, 2004) (ordering the transfer of the <dupontregristry.com> domain name); Federated Western Properties, Inc. v. Henry Chan, WIPO Case No. D2003-0472 (September 17, 2003) (ordering the transfer of the <bonmarcheservices.com>, <macysflowerclub.com>, <macysvisa.com>, <richsdepartmentstores.com> and <burdinesservices.com> domain names); Government Employees Insurance Company v. Henry Chan, WIPO Case No. D2004-0129 (May 13, 2004) (ordering the transfer of the <buffalojobsgeico.com>, <geicoauto.com>, <geicopriveleges.com>, <geicopriviledges.com>, <gicodirect.com> and <partnersgeico.com> domain names); and Western Financial Bank v. Henry Chan, Claim Number: FA0311000213458 (January 7, 2003) (ordering the transfer of the <westernfinancialbank.com> domain name).