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Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo [2005] GENDND 84 (24 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Walter E. Smithe Furniture, Inc. v. Registrant (187640)

Case No. D2004-0937

1. The Parties

The Complainant is Walter E. Smithe Furniture, Inc., Itasca, Illinois, United States of America, represented by Sidley Austin Brown & Wood, United States of America.

The Respondent is Registrant (187640), Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <walteresmithe.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2004. On November 9, 2004, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. OnlineNic, Inc. d/b/a China-Channel.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 November 18, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2004.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on December 20, 2004. 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

A. Factual Background.

(a) Complainant is the owner of following trademarks utilizing the Walter E. Smithe name:

1) “WALTER E. SMITHE,” Registration No. 2,313,947, for use in connection with goods and services involving “furniture.”

2) “WALTER E. SMITHE 50 years Custom Furniture,” Registration No. 2,314,085,

3) “SMITHE FURNITURE MAKERS,” Registration No. 2,527,913,

4) “SMITHE,” Registration No. 2,076,774,

5) “SMITHE-CRAFT,” Registration No. 1,549,201, and has

6) a pending registration for “Smithe-Kote,” a fabric protector for use on furniture.

(b) Complainant is the registrant of the domain name <smithe.com>, which resolves to Walter E. Smithe’s primary website, “www.smithe.com”.

(c) Complainant has utilized the name “Walter E. Smithe” to promote, advertise and market its company and products since 1945.

5. Parties’ Contentions

A. Complainant

Complainant claims that when a user enters the domain name <walteresmithe.com>, that user is directed to the website “www.walteresmithe.com”. This website has the title “walteresmithe.com” in the top left corner of the page. The left column of the website has links associated with various items of furniture, such as “Bedroom Furniture,” “Dining room,” or “Sofa.” There are also direct links to retailers specializing in the provision of furniture, such as “Furniture stores.”

Complainant contends that the contested website at “www.walteresmithe.com” is a referral site that does not appear to sell furniture directly. Upon Complainant’s information and belief, the contested domain name <walteresmithe.com> has never been used in any bona fide trade or business other than diverting consumers away from Complainant’s own website.

Complainant has attempted to contact Respondent via e-mail and by letter. In response, Respondent changed his or her WhoIs information, although the content of the site remains the same.

Respondent thus altered certain aspects of his or her WhoIs information but kept the same post office box and e-mail address while purporting to relocate from Hong Kong to Russia. Respondent’s WhoIs information is thus patently false.

Complainant has filed this Complaint in order to protect its marks and halt Respondent’s conduct.

B. Respondent

The Respondent (or the real registrant, whoever it is) did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has proven that the contested domain name <walteresmithe.com> is identical to the name, trademarks and service marks of Complainant, Walter E. Smithe.

The confusing similarity of the contested domain name <walteresmithe.com> to Complainant’s trademarks and service marks is apparent from a simple visual comparison. The disputed domain name is a replica of Complainant’s “Walter E. Smithe” name and mark. The phrase “Walter E. Smithe” does not have any generic meaning in any known language, and is in fact the name of the Complainant’s founder and the name of the company’s current president.

Respondent’s registration and use of the domain name <walteresmithe.com> is certain to confuse consumers looking for information related to custom furniture products and services provided by Complainant.

The disputed domain name <walteresmithe.com> is legally identical to the registered trademark of Complainant, WALTER E. SMITHE. This is sufficient to satisfy the requirement that the domain name in question be confusingly similar to a mark in which Complainant has rights. Moreover, it is similar to other trademarks owned legally by Complainant.

The Panel therefore finds that the domain name <waltersmithe.com > is confusingly similar to Complainant’s trademark and as a consequence, the action brought by Complainant meets the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Respondent has no rights nor legitimate interests in the contested domain name <walteresmithe.com>. Although Respondent has concealed his or her identity, Respondent is not Complainant’s licensee in any respect, nor is Respondent authorized to use Complainant’s marks. Respondent has not been commonly known by the contested domain name, nor does Respondent run any enterprise commonly or legitimately known by the name “Walter E. Smithe”. Indeed, given that Complainant is named for its founder, Walter E. Smithe, it is extremely unlikely that Respondent could have any legitimate interest in the domain name. “Walter E. Smithe” is not a generic phrase that would be of legitimate use to anyone other than the family of Walter E. Smithe.

Nonetheless, Respondent was also given the opportunity to contest the case against him or her. However, Respondent did not submit any evidence that would demonstrate that he or she has any rights to, or legitimate interests in the domain name <walteresmithe.com>.

The Panel therefore infers from Respondent’s silence and Complainant’s contentions that Respondent has no rights to, or legitimate interests in the domain name <walteresmithe.com>. The Panel considers the requirement of Paragraph 4(a)(ii) of the Policy fulfilled.

C. Registered and Used in Bad Faith

Complainant is the owner of the trademark WALTER E. SMITHE registered in 2000.

Respondent has registered and is using <walteresmithe.com> to divert Internet traffic to websites offering competing products by trading on consumer confusion with Complainant’s trademarks.

Paragraph 4(b) of the Policy sets out four circumstances, without limitation, that demonstrate bad faith including that “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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.”

Respondent’s use of the contested domain name <walteresmithe.com> to divert Internet traffic to unrelated sites is evidence of Respondent’s bad faith.

Respondent is clearly using the Domain Name to attract Complainant’s customers to Respondent’s site so that they can be redirected to sites belonging to competitors of Complainant.

Respondent here has engaged in a classic pattern of behavior condemned by the Policy. He or she has intentionally registered a domain name that is identical to Complainant’s registered trademark WALTER E. SMITHE. He or she has done so without any true or legitimate interest in the disputed name.

As a result, the Panel finds that the domain name <walteresmithe.com> was registered and is used by Respondent in bad faith and considers the requirements of Paragraph 4(a)(iii) of the Policy to be fulfilled.

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 <walteresmithe.com> be transferred to the Complainant.

Piotr Nowaczyk
Sole Panelist

Date: January 3, 2005