DECISION

WeddingChannel.com Inc. v. Albert Jackson

Claim Number:  FA0405000273990

PARTIES

Complainant is WeddingChannel.com Inc. (“Complainant”), represented by Monica Riva Talley, of Finnegan Henderson Farabow Garrett & Dunner, L.L.P., 1300 I Street NW, Washington, DC 20005.  Respondent is Albert Jackson (“Respondent”), PO BOX 2014, George Town, Grand Cayman, KY.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <macysweddingchanel.com>, registered with Iholdings.com. d/b/a Dotregistrar.com. 

PANEL

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 19, 2004; the Forum received a hard copy of the Complaint on May 20, 2004.

On May 24, 2004, Iholdings.com d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <macysweddingchanel.com> is registered with Iholdings.com d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com d/b/a Dotregistrar.com 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 May 25, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 14, 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@macysweddingchanel.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 June 22, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.

PROCEDURAL ISSUES:  MARKS OF MULTIPLE PARTIES

Respondent’s <macysweddingchanel.com> domain name incorporates the WEDDING CHANNEL mark of Complainant, WeddingChannel.com Inc., and the MACY’S mark owned by Federated Western Properties, Inc. (“FWP”), a subsidiary of Federated Department Stores, Inc. (“FDS”).  Complainant has a limited license to use the MACY’S mark.  Complainant also has permission from FWP and FDS to file this Complaint against Respondent requesting the transfer of the <macysweddingchanel.com> domain name to Complainant.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <macysweddingchanel.com> domain name is confusingly similar to Complainant’s WEDDING CHANNEL mark.

2. Respondent does not have any rights or legitimate interests in the <macysweddingchanel.com> domain name.

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

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

FINDINGS

Complainant, WeddingChannel.com, offers wedding planning, gift registry, and communications services.  Complainant began offering its services in July of 1977.  Complainant is one of the top two wedding planning websites on the Internet and is the only online wedding resource endorsed by the Association of Bridal Consultants.

Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for the WEDDING CHANNEL mark (Reg. No. 2,508,302, issued November 20, 2001, Reg. No. 2,519,453, issued December 18, 2001) and the WEDDINGCHANNEL.COM mark (Reg. No. 2,564,964, issued July 9, 2002, Reg. No. 2,590,287, issued July 9, 2002, Reg. No. 2,641,605, issued October 29, 2002, Reg. No. 2,763,090, issued September 16, 2003). 

Complainant owns registrations for the <weddingchannel.com> and <macysweddingchannel.com> domain names, where consumers can access Complainant’s services online. 

Complainant has used the WEDDING CHANNEL mark and <weddingchannel.com> domain continuously and extensively in connection with its wedding services since 1997.  Thus, Complainant’s marks are well known to the public.

Complainant promotes the gift registries of its partners such as Macy’s via specialized WEDDINGCHANNEL home pages that are accessible via domain names incorporating the partner’s mark.  Notably, Complainant owns the domain name <macysweddingchannel.com>, and uses that domain name jointly with its partner Macy’s for a specialized WEDDINGCHANNEL home page prominently featuring Macy’s Bridal and Gift Registry.

 

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 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.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the WEDDING CHANNEL mark through registration with the United States Patent and Trademark office and through continued use of its marks in commerce for the last seven years.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The domain name registered by Respondent, <macysweddingchanel.com>, is confusingly similar to Complainant’s WEDDING CHANNEL mark because the only difference between the two is the typographical misspelling of Complainant’s domain by the omission of one letter, namely, the letter “N” in the word “channel” and the addition of Complainant’s partner’s MACY’S mark.  The mere omission of one letter and the addition of the mark do not significantly distinguish Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).  See also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other drug names does not create a distinct mark capable of overcoming a claim of confusing similarity, “it merely creates a domain name with severe potential to confuse Internet users as to the source, sponsorship and affiliation of the domain”).

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

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the domain name.  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name.  The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist).

Moreover, the Panel may accept all reasonable allegations and inferences in the Complaint as true because Respondent has not submitted a Response.  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 is using the <macysweddingchanel.com> domain name to redirect Internet users to a website that features advertising for a variety of services and that hosts a popular search engine to link viewers to a variety of websites, including sites that offer the same type of services that Complainant offers.  Respondent’s use of a domain name that is confusingly similar to Complainant’s WEDDING CHANNEL mark to redirect Internet users interested in Complainant’s services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (finding that Respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain name); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “it would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the disputed domain name, a simple misspelling of Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

Moreover, Respondent offered no evidence and no proof in the record suggests that Respondent is commonly known by the <macysweddingchanel.com> domain name.  Nothing in the record, including the WHOIS domain name registration information suggests that Respondent is known by the domain name.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also 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).

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

Registration and Use in Bad Faith

Respondent intentionally registered a domain name that contains in its entirety Complainant’s well-known mark and did so for Respondent’s commercial gain.  Respondent’s domain name diverts Internet users who seek Complainant’s WEDDING CHANNEL mark to Respondent’s commercial website through the use of a domain name that is confusingly similar to Complainant’s mark.  Moreover, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s WEDDING CHANNEL mark.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).

Furthermore, Respondent registered the domain name for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website that competed with Complainant.  Registration of a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that Respondent registered and used the domain name primarily for the purpose of disrupting the business of Complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to Complainant’s services under the OPENMAIL mark).

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 <macysweddingchanel.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  July 6, 2004

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