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Paisley Park Enterprises v. James Lawson [2005] GENDND 64 (1 February 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Pier 1 Imports, Inc., Pier 1 Services Company and Pier 1 Holdings, Inc. v. Horoshiy, Inc.

Case No. D2004-0979

1. The Parties

The Complainants are Pier 1 Imports, Inc., Pier 1 Services Company and Pier 1 Holdings, Inc., Fort Worth, Texas, United States of America, represented by Baker Botts, LLP, United States of America.

The Respondent is Horoshiy, Inc., F. Curacao, Netherlands Antilles, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <peir1import.com> is 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 November 19, 2004. On November 23, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On November 23, 2004, 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 and technical contacts. 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 December 3, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was December 23, 2004. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 28, 2004.

The Center appointed Jon Lang as the sole panelist in this matter on January 6, 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

Pier 1 Imports, Inc., is one of North America’s largest specialty retailers of unique decorative home furnishings, gifts and related items, with over 1000 stores in 50 U.S. States, Canada, Mexico, Puerto Rico, and the United Kingdom. The shares of Pier 1 Imports, Inc., are publicly traded on the New York Stock Exchange. Pier 1 Services Company is a Delaware statutory trust and an indirect subsidiary of Pier 1 Imports, Inc. Pier 1 Holdings Inc., is Managing Trustee of Pier 1 Services Company.

It is said in the Complaint that the Complainants (and their predecessors-in-interest) have continuously used the trade name and trademark PIER 1 IMPORTS in interstate commerce throughout the United States since August 1965, and that Pier 1 Services Company owns the following registrations for the PIER 1 IMPORTS trademark:

PIER 1 IMPORTS, Reg. No. 948,076, filed November 5, 1971, and registered on November 28, 1972, for ‘retail gift store services’ in International Class 42.

PIER 1 IMPORTS, Reg. No. 1,620,518, filed July 21, 1989, and registered on October 30, 1990, for ‘retail store services in the field of home furnishings, household utensils and decorative items and toys’ in International Class 42.

PIER 1 IMPORTS (stylized), Reg. No. 2,228,300, filed January 22, 1998, and registered on March 2, 1999, for ‘retail store services in the fields of furniture, decorative home furnishings, dining and kitchen goods, textiles, toys and gifts’ in International Class 35.

PIER 1 IMPORTS & Design, Reg. No. 2,225,971, filed February 5, 1998, and registered on February 23, 1999, for ‘retail store services in the fields of furniture, decorative home furnishings, dining and kitchen goods, textiles, toys and gifts’ in International Class 35.

PIER 1 IMPORTS (stylized), Reg. No. 2,225,972, filed February 5, 1998, and registered on February 23, 1999, for ‘retail store services in the fields of furniture, decorative home furnishings, dining and kitchen goods, textiles, toys and gifts’ in International Class 35.

Copies of the certificates of registration for each of these marks have been provided at Annex 3 to the Complaint. The registrations are in full force and effect, and use of the marks have not been abandoned.

Pier 1 Services Company also owns the domain name <pier1imports.com> through which it operates a website selling a variety of furniture, decorative home furnishings, dining and kitchen goods, textiles, toys and gifts.

5. Parties’ Contentions

A. Complainant

In essence, the Complainants allege that the domain name in issue (hereafter the “Domain Name”) is virtually identical to the PIER1 IMPORTS trademark used by them; that the Respondent is not (either as an individual, business or other organization) known by the name PEIR1IMPORT and is not making a legitimate noncommercial or fair use of the Domain Name; and that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. The Complainants say that the Respondent is using the Domain Name to redirect Internet users searching for their (the Complainants’) presence on the Internet to a commercial website that provides links to third party retailers of furniture and home accessories, the majority of which compete with Complainants and that in all the circumstances, the Domain Name should be transferred to them.

B. Respondent

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

6. Discussion and Findings

The Complainants rely on the matters set out in their Complaint and assert that each of the three elements of Paragraph 4(a) of the Policy have been met, namely that

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is argued that the Domain Name is confusingly similar to the registered trademark in which the Complainants have rights. The Domain Name is <peir1import.com>; the trademark is PIER 1 IMPORTS. The only difference, apart from the ‘.com’ suffix (which, in accordance with previous Policy decisions, is to be ignored for the purposes of determining identicability or confusing similarity) is that the ‘i’ and the ‘e’ in ‘Pier’ have been reversed (in the Domain Name) and there is no ‘s’ at the end of ‘import’ as there is at the end of the trademark. Neither difference is significant for the purposes of Paragraph 4(a)(i) of the Policy. It was held in Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869, that the absence of one “e” in the domain name was not to be regarded as sufficient to avoid a finding that the domain name <estelauder.com> was confusingly similar to the complainant’s mark, ESTEE LAUDER. The Panel is of the view in this matter that the minor differences between the Domain Name and the Complainants’ trademark are insufficient to found any sustainable argument that the two are not confusingly similar.

Therefore, whilst the Domain Name is not identical, the Panel finds that the Domain Name is confusingly similar to the trademark. The only further issue to decide under this limb of the requirements of Paragraph 4(a) of the Policy is, therefore, whether the Complainant has rights in the trademark to which the Domain Name is similar. The Panel notes the trademark registrations annexed to the Complaint at Annex 3 and the Complainants’ evidence referred to earlier, and answers that question in the affirmative.

B. Rights or Legitimate Interests

It is alleged by the Complainants (a), that the Respondent is not (either as an individual, business or other organisation) known by the name PEIR1IMPORT, (b) that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name and (c) that there is no evidence whatsoever of the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. These allegations are broadly a mirror image of what a Respondent must prove for the purposes of Paragraph 4(c) of the Policy in order to demonstrate his rights to and legitimate interests in the Domain Name.

It is further alleged, and it appears to be the case from the evidence submitted by the Complainants at Annex 4 of their Complaint, that the Respondent is using the Domain Name to redirect Internet users to a commercial website that provides links to third party retailers of furniture and home accessories. It is said that the majority of these third party retailers compete with the Complainants. The Complainants refer to Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430 in which it was held that use of a domain name offering links to other competing websites does not constitute a bona fide offering of goods or services giving rise to any right or legitimate interest. The Complaints also refer to Zier, Inc. v. Horoshiy, Inc. a/k/a Horoshiy, NAF Case No. FA331944, in which a similar decision was made. Finally, reference is made by the Complainants to Black & Decker Corp. v. Clinical Evaluations, NAF Case No. FA112629, a decision in which it was held that the Respondent’s use of the disputed domain name to redirect Internet users to commercial websites unrelated to Complainant, (and presumably with the purpose of earning a commission or pay-per-click referral fee), did not evidence rights or legitimate interests in the domain name.

In the absence of any evidence to the contrary, the Panel accepts the allegations made by the Complainants. It is expressly provided in Paragraph 14(b) of the Rules that a Panel shall draw such inferences from a party’s non-compliance (with the Rules) as it considers appropriate. This Panel draws the inference, based on the lack of any Response, that the Respondent could not have said anything that would be regarded as supportive of an assertion that it did in fact have rights or legitimate interests in the Domain Name.

The Panel accepts, as is alleged, that the Respondent is taking advantage of consumers’ known disposition to misspell or mistype domain names so as to divert Internet traffic to websites operated by competitors of the Complainants. Indeed, it seems unlikely that a Domain Name owner not having this intention would choose the Domain Name, <peir1import.com> for the purpose for which it appears to be used. Neither the Respondent nor the website “www.peir1Import.com” appear to have any legitimate connection with the Complainant yet the wrongful impression of association can so easily be given. In the absence of any information from the Respondent by way of a Response setting out why it has rights to or legitimate interests in the Domain Name and given that it is alleged, and the Panel accepts, that the Respondent is not a licensee of the Complainants and has not received any permission or consent to use the trademark PIER 1 IMPORTS or apply for the Domain Name in issue, the Panel finds for the Complainant on this issue.

The practice of an unrelated third party taking a well known trading name or trademark and slightly changing its spelling so as to divert Internet users from their intended destination is by no means a new device and there is no shortage of UDRP decisions where findings for the Complainant have been made in these circumstances. That being said, however, every case must be looked at on its own facts, and having done so, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith, the final element to be established by a successful Complainant.

The circumstances described in Paragraph 4(b)(iii) are:

“you [The Respondent] have registered the domain name primarily for the purposes of disrupting the business of a competitor;”

and in Paragraph 4(b)(iv) are

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Complainants allege that Respondent’s Domain Name causes Internet users to mistakenly believe that the Domain Name is affiliated with the Complainants and that this user confusion is evidence that the Respondent registered and used the Domain Name in bad faith pursuant to Paragraph 4(a)(iii) of the Policy. They rely on Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409, in which bad faith registration was found. It was said in that decision that it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant.”

Further, the Complainants allege, (for the purposes of Paragraph 4(b)(iv) of the Policy) that by using the Domain Name, the Respondent 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 Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location. It is said that the website print out at Annex 4 demonstrates that the Respondent is using the Domain Name to redirect Internet users to a commercial website that provides links to third party retailers offering furniture and home accessories, the majority of which are competitors of the Complainants. The Complainants allege that the Respondent has registered a Domain Name which inevitably and misleadingly diverts consumers to that address and has the effect of tarnishing the Complainants’ trademark. The Complainants refer to a number of past decisions under the Policy in which findings of bad faith registration and use have been made in these or similar circumstances; Pier 1 Imports, Inc., Pier 1 Services Company and Pier 1 Holdings, Inc. v. Motohisa Ohno., WIPO Case No. D2004-0623 (finding bad faith registration of <peironeimports.com> where the Respondent’s website provided links to websites offering competing furniture and home accessories); Pier 1 Imports, Inc. and Pier 1 Licensing, Inc. v. Success Work, WIPO Case No. D2001-0419 (finding bad faith registration of <peir1.com> where the Respondent was offering a variety of Internet-related equipment and services at the displayed website and using the domain name to attract traffic for commercial gain by creating a confusing similarity with the Complainants’ mark); Pier 1 Imports, Inc. and Pier 1 Licensing, Inc. v. Raymond E. Farr, Jr., WIPO Case No. D2001-0357 (finding bad faith registration of <pier2imports.com> where Respondent’s website offered home furnishing products for sale). The Respondent also relies on the decision in Bay, Inc. v. Progressive Life Awareness Network, WIPO Case No. D2001-0068, where bad faith was established on it being found that the Respondent took advantage of the recognition that eBay created for its mark and profited by diverting users seeking the eBay website to the Respondent’s site.

In short, it is said that the Respondent’s diversion of Internet users to its website for commercial gain through use of its confusingly similar Domain Name constitutes bad faith registration and use contrary to Paragraph 4(b)(iv) of the Policy. Whilst there is no evidence of commercial gain by the Respondent in this Complaint, the Panel notes that it would be unlikely the Respondent would not have obtained some commercial gain from using the Domain Name in the way that it has. Accordingly, for the purpose of Paragraph 4(b)(iv) of the Policy, the Panel infers that the Respondent derives a commercial gain from its activities described in the Complaint.

The Complainants allege that there are other circumstances indicating bad faith and point to a number of Panel decisions under the Policy involving the Respondent. They suggest that the Respondent’s registration and use of the disputed Domain Name are part of a flagrant pattern of conduct. They refer to Zier, Inc. v. Horoshiy, Inc. a/k/a Horoshiy, NAF Case No. FA331944 (November 8, 2004); Kellogg Company and Kellogg North America Company v. Horoshiy, Inc. a/k/a Horoshiy, NAF Case No. FA320234 (November 5, 2004); Européenne de Traitement de L’Information v. Horoshiy, Inc., WIPO Case No. D2004-0706 (November 4, 2004); Metropolitan Life Insurance Company v. Horoshiy, Inc. a/k/a Horoshiy, NAF Case No. FA323764 (October 25, 2004); JAKKS Pacific, Inc. v. Horoshiy a/k/a Horoshiy, NAF Case No. FA323757 (October 25, 2004); Bob Jones University v. Horoshiy, Inc. a/k/a Horoshiy, NAF Case No. FA318853 (October 22, 2004); Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615 (October 18, 2004); Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (September 27, 2004); Medco Health Solutions, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0625 (September 27, 2004); ADP of North America Inc. v. Horoshiy, Inc. a/k/a Horoshiy, NAF Case No. FA304896 (September 21, 2004); Lillian Vernon Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0611 (September 16, 2004); Citigroup Inc. v. Horoshiy, Inc. a/k/a Horoshiy, NAF Case No. FA290633 (August 11, 2004); Avery Dennison Corporation v. Horoshiy, Inc. a/k/a Horoshiy, NAF Case No. FA289048 (August 2, 2004); InfoSpace, Inc. v. Horoshiy, Inc. a/k/a Horoshiy, NAF Case No. FA282775 (July 23, 2004). In each of these cases, the Respondent was found to have registered and used the domain names in bad faith.

Having reviewed the evidence presented by the Complainants and drawn the inference it has, the Panel finds that the Respondent’s conduct falls within the circumstances described in Paragraph 4(b)(iv) and that therefore it has registered and used the Domain Name in bad faith for the purposes of the Policy. Whilst past conduct of a Respondent has been taken into account by other Panels (for instance, W.W. Grainger, Inc. v. wwgranger/Administrator Domain, WIPO Case No. D2004-0762) in determining the question of bad faith, given the Panel’s finding under Paragraphs 4(b)(iv) of the Policy, the Panel does not need to decide whether the Respondent’s past pattern of behaviour is itself evidence of bad faith registration and use for the purposes of this Complaint. Finally, the Panel makes no finding in relation to the Complainant’s allegations under Paragraph 4(b)(iii); it would appear that under this sub-paragraph the Respondent must be a competitor of the Complainant and it is not clear here that they are.

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 <peir1import.com> be transferred to the Complainants.

Jon Lang
Sole Panelist

Dated: January 17, 2005