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Arizona Leather Co. v. Chris Frank [2005] GENDND 1103 (8 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arizona Leather Co. v. Chris Frank

Case No. D2005-0300

1. The Parties

Complainant is Arizona Leather Co. (“Arizona Leather”), a U.S. corporation incorporated in California and having a principal place of business in Chino, California. Complainant is represented by Stetina, Brunda, Garred & Brucker, Aliso Viejo, California, United States of America.

Respondent is Chris Frank of Scottsdale, Arizona, United States of America.

2. The Domain Name and Registrar

The disputed domain name <arizonaleather.net> (the “Disputed Domain Name”) is registered with eNom, Inc. (“eNom”).

3. Procedural History

The Complaint was received by e-mail on March 23, 2005, and in hardcopy on March 31, 2005, by the WIPO Arbitration and Mediation Center (the “Center”). On March 24, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the Disputed Domain Name. On the same day, eNom transmitted to the Center its verification response, indicating that the requested information is located at “http://whois.enom.com/”. This site confirms that Respondent is listed as the registrant and provides 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 Respondent of the Complaint, and the proceedings commenced on March 31, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on April 29, 2005.

The Center appointed Steven Auvil as the Sole Panelist in this matter on May 25, 2005. 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

Arizona Leather is a retail seller of leather furniture and accessories. Arizona Leather has been doing business in California and Arizona under the “Arizona Leather Company” name since 1996. Arizona Leather owns U.S. Federal Registration No. 2,627,091 for the mark ARIZONA LEATHER COMPANY and associated design for retail stores featuring leather furniture and accessories. Arizona Leather owns an e-commerce site using the “Arizona Leather Company” name located on the web at “www.arizonaleather.com”.

In addition to the Disputed Domain Name, Respondent owned an e-commerce site located on the web at “www.discountleather.net”, identifying and promoting a leather furniture sales business called “Discount Leather Furniture”, a leather furniture sales outlet located in Arizona. Complainant alleges and has submitted evidence demonstrating that the home pages for the Disputed Domain Name and “www.discountleather.net” were substantially the same. The registration of both the Disputed Domain Name and “www.discountleather.net” expired on May 5, 2005. As of the date of this Decision, the Disputed Domain Name and “www.discountleather.net” are both inactive. However, eNom typically holds expired domain names up to 45 days after expiration. Once eNom releases the domain name, the registry will hold the domain for an additional 30 days. The domain cannot be registered until the domain name is released by the registry. In short, the domain name is still registered with eNom and should currently be under registrar lock.

Respondent is located in Scottsdale, Arizona. Although Respondent is physically located in Arizona, based on the evidence submitted, it appears that Respondent is not commonly known as “Arizona Leather”. Instead, Respondent is commonly known as “Discount Leather Furniture”.

While Complainant has a principal place of business in Chino, California, it also operates a retail store in Scottsdale, Arizona (at a location less than two miles from Respondent) and a retail store in Glendale, Arizona (at a location 24 miles from Respondent). However, Complainant has not submitted evidence that these stores were in existence at the time Respondent registered the Disputed Domain Name.

On May 5, 2000, Respondent registered the Disputed Domain Name. Complainant contends that Respondent knew of Complainant and Complainant’s website prior to registering the Disputed Domain Name because, “presumably, Respondent would have attempted to register the domain name <arizonaleather.com> on the same day Respondent registered the domain name <arizonaleather.net> and would not have been allowed to register <arizonaleather.com>. Further, Complainant alleges that Respondent is commonly known as Discount Leather Furniture, does not refer to itself in any way as Arizona Leather, and does not advertise the Disputed Domain Name.

As a result, Complainant brought this proceeding seeking to gain control of the Disputed Domain Name.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is confusingly similar to its ARIZONA LEATHER COMPANY mark, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that the Disputed Domain Name was registered and is being used in bad faith. Complainant requests that the domain name <arizonaleather.net> be transferred to Complainant.

B. Respondent

Respondent did not respond to Complainant’s contentions. Accordingly, Respondent did not deny those contentions.

6. Discussion and Findings

To obtain relief, paragraph 4(a) of the Policy requires Complainant to prove each of the following:

(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) that Respondent has no rights or legitimate interests in the domain name registered by Respondent; and

(3) that the domain name registered by Respondent has been registered and is being used in bad faith.

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.

A. Identical or Confusingly Similar

Respondent does not dispute, and the Panel finds, that the Disputed Domain Name registered by Respondent is identical or confusingly similar to Complainant’s ARIZONA LEATHER COMPANY mark.

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy, paragraph 4(c).

Nothing in the record suggests that Respondent has at any time used the Disputed Domain Name in connection with a bona fide offering of goods or services, or that Respondent is commonly known by the Disputed Domain Name. In fact, Complainant has submitted evidence that Respondent is commonly known as Discount Leather Furniture. Respondent has not presented any arguments or evidence in rebuttal that it ever refers to itself or is commonly known as “Arizona Leather”, or that it is making a legitimate noncommercial or fair use of the Disputed Domain Name. Further, it does not appear that Respondent could make such a showing.

For these reasons, the Panel concludes that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Finally, Complainant argues that Respondent has registered and is using the Disputed Domain Name in bad faith. Specifically, Complainant essentially argues that Respondent’s bad faith is reflected in the fact that, with constructive knowledge of Complainant’s trademark rights, Respondent (1) attempted to redirect web traffic from the Disputed Domain Name to a website that was affiliated with a leather furniture retail outlet, namely Respondent’s, that sold competing leather furniture products; and (2) nothing in the record suggests that Respondent has a bona fide reason for Respondent’s choice of a domain name that is confusingly similar to Complainant’s trademark.

The Panel is persuaded that Respondent knew or should have known of Complainant’s rights in the mark ARIZONA LEATHER COMPANY when Respondent registered the Disputed Domain Name. The record indicates that Complainant’s mark ARIZONA LEATHER COMPANY was registered with the USPTO in 1999. Because Respondent resides in the United States, it may be appropriate to apply the principle of constructive notice of Complainant’s trademark registrations established by 17 U.S.C. § 1072. See Cellular One Group v. Brien, WIPO Case No. D2000-0028 (“Since both parties are domiciled in the United States . . . the Panel shall look to the principles of law in the United States.”)

Considering (1) Respondent’s failure to submit a Response in this proceeding (which permits the Panel to draw appropriate inferences pursuant to paragraph 14(b) of the Rules), and (2) prior WIPO UDRP decisions considering this issue, the Panel is persuaded that Respondent knew or should have known of Complainant’s rights at the time Respondent registered the Disputed Domain Name. See, e.g., eBay Inc. v. SGR Enterprises, WIPO Case No. D2001-0259 (“Actual or constructive notice knowledge of the Complainant’s rights in its trademark is a factor supporting bad faith.”); Kate Spade LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (applying principle of constructive notice in finding bad faith).

Complainant has also alleged that, by using the Disputed Domain Name to direct users to its own furniture website, Respondent was merely attempting to attract users looking for Complainant. The Panel is persuaded that this is the case. The fact that the Disputed Domain Name merely replaces Complainant’s “.com” suffix with a “.net” suffix persuades the Panel that there is bad faith registration and use in this case. Two expressions differing only by the “com” v. “net” suffix have been held to be identical within the meaning of the UDRP Policy and Rules. See, e.g., Volkswagen AG v. NovaNIC, WIPO Case No. D2005-0142 (“the presence of the ‘.net’ generic top-level-domain in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights”).

Both businesses sell furniture to consumers, and there is no evidence in the record suggesting that Respondent has ever made a bona fide commercial or noncommercial use of the Disputed Domain Name.

Considering that (1) Respondent never filed a Response submitting any evidence that Respondent has ever made any bona fide use of the Disputed Domain Name, and (2) the Disputed Domain Name incorporates Complainant’s trademark, and (3) Respondent very likely had constructive notice of Complainant’s registered trademark that is identical to the Disputed Domain Name, and (4) both parties are engaged in the same leather furniture business, the Panel finds no bona fide reason for Respondent’s choice of the Disputed Domain Name. See, e.g., eBay, Inc. v. SGR Enterprises, WIPO Case No. D2001-0259 (“[I]t is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate.”).

All of these factors demonstrate Respondent’s bad faith in registering the Disputed Domain Name.

For these reasons, the Panel concludes that the bad faith element of the Policy is satisfied.

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 name <arizonaleather.net> be transferred to Complainant.

Steven Auvil
Sole Panelist

Dated: June 8, 2005