WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Home Interiors & Gifts, Inc. v. Home Interiors
Case No. D2000-0010
The Parties
The Complainant is Home Interiors & Gifts, Inc., a corporation organized under the laws of the State of Texas, United States of America, having its principal place of business at Dallas, Texas, United States of America. The Respondent is Home Interiors, an entity of form unknown, with an address in Myrtle Beach, South Carolina, United States of America.
The Domain Name(s) and Registrar(s)
The domain names at issue are and , which domain names are registered with Network Solutions, Inc., based in the State of Virginia, the United States of America.
Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on January 20, 2000, and the signed original together with four copies forwarded by express courier under cover of a letter of the same date. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated January 25, 2000.
A Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain names at in issue are registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar�s Whois database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact; (4) provide a copy of the registration agreement that was in effect at the time of the original registration of the domain names, as well as any subsequent amendments to the agreement; (5) provide a copy of the domain names dispute policy (if different from ICANN�s Uniform Domain Name Dispute Resolution Policy) that was in effect at the time of the original registration of the domain names, as well as any subsequent amendments to the policy.
On January 27, 2000, NSI confirmed by e-mail that the domain names and are registered with NSI and that the Respondent, Home Interiors, was the current registrant of the names. The registrar also forwarded the requested Whois details, as well as referenced the NSI Service Agreement in effect for the domain name registrations at issue. NSI confirmed that the Service Agreement in effect bound the Respondent to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy").
A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 23, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on January 28, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of February 16, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI�s Whois confirmation, as well as to postmaster@ and postmaster@; no e-mail addresses were found at any web page relating to the disputed domain name. In addition, the Complaint was sent by express courier to all available postal addresses. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
On February 18, 2000, having received no Response from the designated Respondent, using the same contact details and methods as were used for the Commencement Notification, the WIPO Center transmitted to the parties a Notification of Respondent Default.
On February 23, 2000, in view of the Complainant�s designation of a single panelist (but without prejudice to any election to be made by the Respondent) the WIPO Center invited M. Scott Donahey to serve as a panelist in Case No. D2000-0010, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received M. Scott Donahey�s Statement of Acceptance and Declaration of Impartiality and Independence on February 24, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was March 8, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Uniform Rules, the WIPO Supplemental Rules, and without the benefit of any Response from Respondent.
Factual Background
The Complainant has provided evidence of the registration of the following marks: HOME INTERIORS
i.
Registration Number:
Goods & Services:
Affidavits:
First Use:
1,495,137
Framed pictures
8 & 15 accepted
July 15, 1987
ii.
Registration Number:
Goods & Services:
Affidavits:
First Use:
1,531,380
Direct home sales services in the field of household products
8 & 15 accepted
June 17, 1987 HOME INTERIORS & GIFTS
i.
Registration Number:
Goods & Services:
Affidavits:
First Use:
1,064,388
Lighting fixtures; plaques made of metal; wall decorations in the form of wall hung planters and trivets, made either of metal, ceramics, wood or glass; coffee pots, teapots, sugar bowls, creamers, cups, pitchers, covered bowls, jars and vases made either of metal, ceramic or glass; sconces and candelabras.
8 & 15 accepted
December 20, 1958
ii.
Application Number:
Goods & Services:
First Use:
75/604,365
Direct home selling services in the field of household products.
December 1958
iii.
Application Number:
Goods & Services:
Affidavits:
First Use:
75/578,863
Room fragrances, potpourri; room fragrances, candles.
October 28, 1998
HOME INTERIORS & GIFTS and Design
i.
Application Number:
Goods & Services:
First Use:
75/844,794
Direct home selling services in the field of household products, home furnishings and decorative accessories.
September 15, 1999 HOME INTERIORS & GIFTS, INC. and Design
i.
Registration Number:
Goods & Services:
First Use:
1,390,778
Notepads, letterhead stationery paper, pencils, and stickers wall decorations in the form of wall hung planters and trivets of metal, ceramics, wood and glass; and sconces wearing apparel, namely jackets.
May 15, 1985 HOME INTERIORS & MORE
i.
Registration Number:
Goods & Services:
First Use:
75/636,133
Catalogs and order forms in the field of housewares and other home decorative items; mail order catalog services featuring housewares and other home decorative items.
February 8, 1999
Complaint, Annex G.
The Respondent registered the domain names and on October 13 and 20, 1998. Complaint, Annexes A and B.
Complainant is authorized to use and has used its trade and service marks in connection with housewares, household furnishings, home sales services, and other household products. Complaint, paras. 8 and 9 and Annex G. Complainant is authorized to use its trademarks and service marks in connection with framed pictures, direct homesale services in the field of household products, lighting fixtures, plaques, wall decorations, coffee pots, teapots, sugar bowls, creamers, cups, pitchers, covered bowls, jars and vases, sconces and candelabras, room fragrances, potpourri, candles, home furnishings, decorative accessories, notepads, letterhead, stationery paper, pencils, and catalog and order forms in the field of houseware, and other decorative items. Complaint, para. 8 and Annex G.
5. Parties� Contentions
A. Complainant
Complainant contends that Respondent has registered as a domain name a mark which is identical to the service mark and trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
B. Respondent
Respondent has not contested the allegations of the Complaint.entered
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 deems applicable." Since both the Complainant and Respondent are domiciled in the United States, and since United States� courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, that the Respondent has no legitimate interests in respect of the domain name; and, the domain name has been registered and used in bad faith.
The domain names and are identical or confusingly similar to trademarks or service marks in which the Complainant has rights. The Respondent failed to present any evidence that would tend to establish that Respondent has legitimate interests in respect of the domain names. The question arises whether the domain names at issue have been registered and are being used in bad faith.
Complainant's marks were registered as early as 1958, forty years before Respondent registered the domain names at issue. Complaint, Annexes A, D, and G. Respondent has established a web site at to post advertisements from competitors of Complainant and to link to commercial web sites hosted by competitors of Complainant. Complaint, Annex C. The web site Respondent established at displays only a counter establishing the number of "hits," or visitors to the web site, since March 15, 1999, apparently to demonstrate to Complainant and others who might be interested in purchasing the domain name of its value. Complaint, Annex D.
Paragraph 4,b of the Policy sets forth "in particular but without limitation" circumstances which "shall be evidence of registration and use of a domain name in bad faith." Those circumstances are: circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or 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 web site or location or of a product or service on your web site or location.
Respondent has not offered to sell, rent, or otherwise transfer the registration of either domain name to Complainant, nor has Complainant produced any evidence that Respondent has offered to rent, sell, or otherwise transfer the registration to a competitor of Complainant. See, Policy, � 4,b(1). Complainant has alleged that Respondent's registration of two domain names identical or confusingly similar to Complainant's registered service marks constitutes "a pattern of . . . conduct" designed to prevent an owner of a mark from reflecting the mark in a domain name, as required under Paragraph 4,b(ii). The Panel respectfully disagrees. The Panel does not believe that the registration of two domain names rises to the level of a pattern of conduct. Nor has Complainant established that Respondent has "registered the domain name primarily for the purpose of disrupting the business of a competitor." Policy, para. 4,b(iii).
Has Complainant met its burden in proving that Respondent intentionally attempted to attract for commercial gain Internet users to Respondent's site by creating a likelihood of confusion with Complainant's mark? This is a much closer question, but once again the Panel believes that Complainant has not met its burden. There is no question that Respondent derives commercial gain from those who arrive at to find advertising for and links to competitors of Complainant. However, "home interiors" is descriptive in nature, and while it is conceivable that an Internet user entering "www." is searching for a web site belonging to Complainant, and may thus be confused at arriving at Respondent's site, it is at least equally likely that a user is entering the descriptive term, and when the user arrives at the web site featuring advertisements and links to various suppliers of goods and services related to home interiors, the user feels that the web site satisfies his need for information related to the general topic.
However, just because Respondent's conduct does not fall within the "particular" circumstances set out in paragraph 4,b, does not mean that the domain names at issue were not registered in and are not being used in bad faith. The combination of the descriptive terms "home interiors" and "gifts" into one phrase results in a name that is more distinctive than descriptive, and an Internet user entering "www." is more likely than not expecting to arrive at a web site hosted by Complainant, the holder of numerous registered trademarks and service marks dating back to as early at 1958. Moreover, the generic Top Level Domain ("gTLD") has come to suggest a commercial enterprise bearing the tradename of the web site host as the Second Level Domain ("SLD") name which precedes the . Finally, the fact that the Respondent has posted only a counter at the web site which records traffic to the site is tantamount to an advertisement that the web site is for sale and is an indicator of its value.
The fact that Respondent registered both names within a one week period in October, 1998, while not sufficient to establish a pattern of conduct, is suggestive that Respondent knew of Complainant's marks. The facts that Complainant notified Respondent as early as December 22, 1998, that Respondent's registrations were confusingly similar to Complainant's marks (Complaint, Annex E), that Complainant offered to purchase the marks at issue for $500, that Respondent failed to respond to the referenced notice and offer, and that the Respondent failed to respond to this Complaint suggest that Respondent has no rights or legitimate interests in the domain names at issue, and that the domain names have been registered and are being used in bad faith. See, Mondich and American Wine Biscuits, Inc. v. Brown, d/b/a Big Daddy's Antiques, ICANN Case No. D00-0004, � 6, at 4; Telstra Corporation Limited v. Nuclear Marshmallows, ICANN Case No. D2000-0003, � 7.12 at 10-11.
6. Decision
For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are identical or confusingly similar to the trademarks and service marks in which the Complainant has rights, and that Respondent has no rights or legitimate interests in respect of the domain names, and that the Respondent's domain names have been registered and are being used in bad faith.
Accordingly, pursuant to Paragraph 4,i of the Policy, the Panel requires that the registration of the domain names and be transferred to the Complainant.
M. Scott Donahey
Sole Panelist
Dated: March 7, 2000
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