national arbitration forum

DECISION

Smartbargains.com, L.P. v. Universal Banner

Claim Number:  FA0412000373634

PARTIES

Complainant is Smartbargains.com, L.P. (“Complainant”), represented by Seán F. Heneghan, 31 Reading Hill Avenue, Melrose, MA 02176.  Respondent is Universal Banner (“Respondent”), 7095 Hollywood Blvd. #772, Los Angeles, CA 90046.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <smartbargainsdirect.com>, <smartbargainsshop.com>, <esmartbargains.com>, <buysmartbargains.com>, <onlinesmartbargains.com> and <shopsmartbargains.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2004; the National Arbitration Forum received a hard copy of the Complaint on December 3, 2004.

On December 1, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <smartbargainsdirect.com>, <smartbargainsshop.com>, <esmartbargains.com>, <buysmartbargains.com>, <onlinesmartbargains.com> and <shopsmartbargains.com> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 December 6, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 27, 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@smartbargainsdirect.com, postmaster@smartbargainsshop.com, postmaster@esmartbargains.com, postmaster@buysmartbargains.com, postmaster@onlinesmartbargains.com and postmaster@shopsmartbargains.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On December 30, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <smartbargainsdirect.com>, <smartbargainsshop.com>, <esmartbargains.com>, <buysmartbargains.com>, <onlinesmartbargains.com> and <shopsmartbargains.com> domain names are confusingly similar to Complainant’s SMARTBARGAINS mark.

2. Respondent does not have any rights or legitimate interests in the <smartbargainsdirect.com>, <smartbargainsshop.com>, <esmartbargains.com>, <buysmartbargains.com>, <onlinesmartbargains.com> and <shopsmartbargains.com> domain names.

3. Respondent registered and used the <smartbargainsdirect.com>, <smartbargainsshop.com>, <esmartbargains.com>, <buysmartbargains.com>, <onlinesmartbargains.com> and <shopsmartbargains.com> domain names in bad faith.

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

FINDINGS

Complainant, SmartBargains.com, L.P., is a wholly owned subsidiary of SmartBargains, Inc.  Since as early as June 2, 2000, Complainant has used the SMARTBARGAINS mark in connection with online retail store services, offering high-quality, brand-name merchandise at discount prices.  Complainant specializes in a wide range of products, from apparel and accessories to fine jewelry, electronics and home furnishings.  Complainant is the owner of the SMARTBARGAINS mark by and through assignment from its predecessor in interest, SmartBargains, Inc., who registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. Nos. 2,672,735 issued January 7, 2003; 2,606,658 issued August 13, 2002; 2,676,170, issued January 21, 2003).  Complainant also owns trademark registration rights for its SMARTBARGAINS mark in the European Union (Reg. No. 1,960,558 issued May 6, 2002).

Respondent registered the <smartbargainsdirect.com>, <smartbargainsshop.com>, <esmartbargains.com>, <buysmartbargains.com>, <onlinesmartbargains.com> and <shopsmartbargains.com> domain names on May 29, 2004.  Respondent’s domain names resolve to a websites that feature retail services that directly compete with Complainant’s online retail services.

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 rights in the SMARTBARGAINS mark through registration with the USPTO and continuous use of the mark in commerce. 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.).

 

Respondent’s <smartbargainsdirect.com>, <smartbargainsshop.com>, <buysmartbargains.com>, <onlinesmartbargains.com> and <shopsmartbargains.com> domain names are confusingly similar to Complainant’s SMARTBARGAINS mark because they incorporate the mark in its entirety and merely add various generic marketing terms, such as “direct,” “shop,” “buy,” “online” and “shop.”  The mere addition of these generic “buzzwords” does not negate the confusing similarity between Respondent’s domain names and Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark); see also State Farm Mut. Auto. Ins. Co. v. Kaufman, FA 94335 (Nat. Arb. Forum Apr. 24, 2000) (finding that <statefarmdirect.com> is confusingly similar to Complainant’s registered mark); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

Furthermore, the addition of the letter “e” before Complainant’s mark in Respondent’s <esmartbargains.com> domain name is insufficient to negate a finding of confusing similarity between the domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names <ecanadiantire.com> and <e-canadiantire.com> are confusingly similar to Canadian Tire’s trademarks); see also Int’l Data Group, Inc. v. Maruyama & Co., Ltd., D2000-0420 (WIPO June 26, 2000) (finding that the domain name <ecomputerworld.com> is confusingly similar to Complainant’s mark, COMPUTERWORLD).

Moreover, the mere addition of the generic top-level domain “.com” is not enough to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”); see also Kioti Tractor Div. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).

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

 

Rights or Legitimate Interests

Respondent has failed to respond to the Complaint.  Therefore, the Panel accepts all reasonable allegations set forth in the Complaint as true.  See Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of complainant’s reasonable allegations and inferences as true); see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a complaint allows a panel to make reasonable inferences in favor of a complainant and accept complainant’s allegations as true).

In addition, the Panel construes Respondent’s failure to respond as an admission that Respondent lacks rights and legitimate interests in the disputed domain names.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

Furthermore, nothing in the record establishes that Respondent is commonly known by the disputed domain names.  Moreover, Respondent is not licensed or authorized to register or use domain names that incorporate Complainant’s marks.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii).  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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the mark precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Moreover, Respondent has used the disputed domain names to direct Internet users to competing retail websites.  Such competing use of domain names confusingly similar to Complainant’s SMARTBARGAINS mark 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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services).

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

Registration and Use in Bad Faith

Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by registering domain names that are confusingly similar to Complainant’s mark and using them to operate competing retail services websites.  See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)  (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business); 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).

Additionally, the Panel finds that Respondent had actual or constructive knowledge of Complainant’s SMARTBARGAINS mark when registering the disputed domain names because Complainant had registered the mark with the USPTO.  Moreover, the fact that Respondent uses the domain names to operate competing retail service websites is further evidence that Respondent had actual or constructive knowledge of Complainant’s mark when registering the disputed domain names.  Therefore, Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

Furthermore, Respondent uses the disputed domain names to operate retail service websites that directly compete with Complainant.  Such commercial use of the domain names is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that Respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where Respondent was not authorized to sell Complainant’s goods).

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 <smartbargainsdirect.com>, <smartbargainsshop.com>, <esmartbargains.com>, <buysmartbargains.com>, <onlinesmartbargains.com> and <shopsmartbargains.com> domain names be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  January 13, 2005

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