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Abbey Carpet Co., Inc. v. Unasi, Inc. [2005] GENDND 1911 (27 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Abbey Carpet Co., Inc. v. Unasi, Inc.

Case No. D2005-1100

1. The Parties

The Complainant is Abbey Carpet Co., Inc., Bonita Springs, Florida, United States of America, represented by Holland & Knight, LLP, United States of America.

The Respondent is Unasi, Inc., Panama.

2. The Domain Names and Registrar

The disputed domain names <abbeycarpets.com> and <wwwabbeycarpet.com> are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2005. On October 21, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. OnOctober 23, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com 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. 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 the Respondent of the Complaint, and the proceedings commenced on October 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2005.

The Center appointed Thomas Hoeren as the Sole Panelist in this matter on November 24, 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

The Complainant is chain of privately owned and operated retail showrooms, located throughout the United States, involved in the sale of quality floor coverings including carpet, hardwood, laminate, tile, area rugs and vinyl. The Complainant also offers window treatments. Starting in 1958 with a first location in the State of California, the Complainant has meanwhile established a franchise organization with over 750 stores in the United States. The products and services of the Complainant are promoted on a website under the URL “www.abbeycarpet.com”.

The Complaint is owner of the following trademarks:

- The US trademark ABBEY CARPET no 1 725 888, registered on October 20, 1992, for carpeting;

- The US trademark ABBEY CARPET no 1 729 786 registered on November 3, 1992, for franchising, namely offering technical assistance in the establishment and operation of retail carpet stores.

The Respondent registered the domain name <abbeycarpets.com> on February 6, 2005, and the domain name <wwwabbeycarpet.com> on November 24, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following allegations: the domain names in question are nearly identical to the trademarks owned by the Complainant. There is no active website associated with the domain name <abbeycarpets.com>. With respect to the domain name <wwwabbeycarpet.com>, the main page of this website includes the name “wwwabbeycarpet.com” at the top and there are a number of links to various carpet manufacturers and sellers of carpeting. Many outlets listed on this website are competitors of the Complainant and its franchisees. “Abbey Carpet” is listed under “Related Categories” on the main page of the website. But clicking on that link does not connect to the website of the Complainant.

Furthermore, the Complainant also submits that the Respondent has no rights or legitimate interests in respect of the domain name in dispute: the Respondent is not a franchisee or otherwise affiliated with the Complainant.

Finally, the Complainant submits that the dispute domain names in question were registered and are being used in bad faith by the Respondent. The domain name <wwwabbeycarpet.com> contains links to many competitors of the Complainant. The Respondent is trading on the goodwill and public recognition in and to the ABBEY CARPET trademark. As to <abbeycarpets.com>, it is not possible to conceive of any plausible actual or contemplated use of this domain name that would not infringe on the trademark rights of the Complainant. In addition, “bad faith” is additionally shown by the additional registration and use of the domain name <wwwabbeycarpets.com> in connection with a website promoting suppliers of carpeting competitive to Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:

“A Panel shall 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 seems applicable.”

Paragraph 4(a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and

(ii) that the Respondent has no rights or no legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is used in bad faith.

A. Identical or Confusingly Similar

The domain names <abbeycarpets.com> and <wwwabbeycarpets.com> are made up of the Complainant’s trademarks ABBEY CARPET on which the Complainant holds two valid US trademark registrations.

The disputed domain names are similar to the Complainant’s trademarks since they consist of the Complainant’s trademarks.

Though the disputed domain names are not identical to the trademarks owned by the Complainant, they are confusingly similar to the Complainant’s trademarks. In comparing the domain name to the Complainant’s marks “wwwabbeycarpets.com”, the prefix “www” is not to be considered a factor of differentiation as it has no distinguishing capacity when included in a domain name, being the acronym of “world wide web”. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346.

The Panel finds that the Complainant has proven that the domain name in dispute is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Respondent has not filed any Response to the Complaint filed. Consequently, the Respondent has not alleged any facts or elements to justify prior rights or legitimate interests of the said domain names.

Furthermore, the Complainant does not appear to have authorized the Respondent to use its trademarks and in particular to register a domain name composed of the Complainant’s trademarks.

Thus, the Panel concludes that the Complainant has demonstrated a prima facie case of Respondent’s lack of rights or legitimate interests. Thus, the second element of the UDRP has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out that certain circumstances may, “in particular but without limitation”, be evidence of bad faith.

I. The domain name <wwwabbeycarpet.com>

The domain name <wwwabbeycarpet.com> includes a number of links within a category called “ Sponsored Links”. Based on the facts as outlined above, it appears that the Respondent registered and is using the domain name in question to attract consumers so that they will access the website operated by the Respondent. Therefore, it appears clear to the Panel that the Respondent has sought to increase the number of “hits” to its site by using the trademark ABBEY CARPET as a part of the domain names in question. That increases the commercial value of the Respondent’s site, which is done through misuse of the trademark in which the Complainant holds rights. Insofar, the Complainant has submitted sufficient proof that the disputed domain name lead to a website which promotes competitor’s websites. This is evidence of bad faith under paragraph 4(b)(iv) of the Policy.

The Panel is thus satisfied that the Respondent registered and is using the domain name <wwwabbeycarpet.com” in bad faith in accordance with the criteria set out under paragraph 4(b)(iv) of the Policy.

II. The domain <abbeycarpets.com>

According to the allegations of the Complainant, the domain name <abbeycarpets.com> has led to a web page with no content. The absence of development of any website using the domain name in dispute or the absence of any other good faith use of the domain names can be indications of the bad faith of the Respondent. As a matter of fact, many panels held that the “use in bad faith” is not limited to positive actions so that the passive holding of a domain name can constitute a ground of use of a domain name in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and eBay Inc v. Sunho Hong, WIPO Case No. D2000-1633; Revlon consumer Products Corporation v. Domain Manager, WIPO Case No. D2003-0602).

Apart from that, the Panel discovered by making a limited research that the content of the website has changed. It is no longer a passive website, but is used in the same way as the domain <wwwabbeycarpets.com>. The domain name <abbeycarpets.com> now relates to an active website including the same list of sponsored links to commercial services as the website related to “www.wwwabbeycarpets.com”. (see Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070). The content change at the website associated with the domain name indicates that the Respondent is using the domain name in bad faith (see the considerations above).

Thus, the Panel concludes that the disputed domain names were registered and are being used in bad faith.

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 names <abbeycarpets.com> and <wwwabbeycarpet.com> be transferred to the Complainant.

Thomas Hoeren
Sole Panelist

Date: November 27, 2005