WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A.B.C. Carpet Co., Inc. v. Helen Gladstone
Case No. D2001-0521
1. The Parties
Complainant is A.B.C. Carpet Co., Inc., ("Complainant" or "A.B.C."), a corporation incorporated under the laws of the State of New York, with a principal place of business at 888 Broadway, New York, New York 10003 USA.
Respondent is Helen Gladstone ("Respondent" or "Gladstone") an individual residing at 122 Ludlow Street, Westfield, New Jersey 07090 USA.
2. The Domain Name(s) and Registrar(s)
The domain names at issue are , and (the "Domain Names"). The registrar is R, Inc. (the "Registrar") located at 575 8th Avenue, 11th Floor, New York, New York 10018, USA.
3. Procedural History
On April 9, 2001, the WIPO Arbitration and Mediation Center (the "Center") received hardcopy of the Complaint of Complainant. The Complainant paid the required fee.
On April 30, 2001, after the Center sought verification of registration from Network Solutions, Inc. then from the Registrar, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.
The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On May 1, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On May 23, 2001, the Center advised Respondent that she was in default for failing to file her Response. No Response has been received.
On June 6, 2001, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-member panel consisting of the Sole Panelist.
4. Factual Background
Through its more than 100-year history, A.B.C., through a predecessor in interest, has become one of the best known and most respected sellers of carpet and other home furnishings in the world. A.B.C. has used the mark ABC in connection with offering its retail services for over one hundred years. A.B.C. offers a vast array of quality retail services, with revenues in the year 1999 and in the year 2000 totaling over $160 million each year. A.B.C. has used the mark ABC CARPET & HOME since February 1995. Furthermore, A.B.C. has spent, over the years, millions of dollars advertising and marketing its services in connection with its renowned ABC and ABC CARPET & HOME service marks. A.B.C. also has spent considerable funds to promote its products and services under the ABC and ABC CARPET & HOME service marks on the Internet, at its website, which can be accessed through various of its domain names, including "".
The ABC mark has been used by A.B.C.'s predecessor in interest since 1897. The ABC CARPET & HOME mark has been used by Complainant since 1995 and was registered with the United States Patent and Trademark Office ("PTO") in 1998. The service marks ABC and ABC CARPET & HOME shall be collectively referred to as the "Service Marks." Following is a listing of A.B.C.'s registrations of the Service Marks:
Registration No.
Date Issued
Mark
Services
2,185,853
September 1, 1998
ABC CARPET & HOME (Stylized Design)
Retail store services, featuring rugs and carpets, in Class 35.
2,185,854
September 1, 1998
ABC CARPET & HOME (Stylized)
Retail store services, featuring rugs and carpets, in Class 35
2,187,632
September 8, 1998,
ABC CARPET & HOME (Stylized)
Retail store services, featuring rugs and carpets, in Class 35.
2,193,567
October 6, 1998
ABC
Retail store services, featuring rugs and carpets, in Class 35.
2,212,532
December 22, 1998
ABC CARPET & HOME and design
Retail store services, featuring rugs and carpets, in Class 35.
2,212,531
December 22, 1998
ABC and design
Retail store services, featuring rugs and carpets, in Class 35.
27,384,468
September 12, 2000
ABC CARPET & HOME (Stylized)
Retail store services featuring, bedding, bathroom accessories, linens, furniture and home furnishings, in Class 35.
2,386,751
September 19, 2000
ABC CARPET & HOME (Stylized)
Retail store services, featuring bedding, bathroom accessories, linens, furniture and home furnishings in Class 35.
2,394,540
October 17, 2000
ABC
Retail store services, featuring bedding, bathroom accessories, linens, furniture and home furnishings, in Class 35.
On January 24, 2000, Respondent registered with the Registrar the Domain Names and . On January 25, 2000, Respondent registered the Domain Name .
On or about June 5, 2000, A.B.C. sent a letter to Gladstone demanding that she cease and desist use of the Domain Names. On July 28, 2000, attorneys for A.B.C. forwarded by certified mail documents required to assign , and to A.B.C. for Gladstone's signature. Delivery to Gladstone on July 31, 2000, was certified. Having no response, and after Gladstone reiterated her agreement to assign the Domain Names in a telephone conversation, attorneys for A.B.C. again sent her the transfer documents on January 30, 2001. To date Gladstone has failed to assign the Domain Names.
5. Parties� Contentions
A. Complainant�s contentions
i) Complainant contends that it has registrations of the Service Marks, that its registrations of the Service Marks are valid and subsisting, and that they serve as prima facie evidence of Complainant�s ownership and the validity of the Service Marks. 15 U.S.C. � 1115. Complainant further alleges that its registrations are incontestable and conclusive evidence of its exclusive right to use the Service Marks in connection with the stated services. 15 U.S.C. �� 1065 and 115(b).
ii) Complainant argues that the Domain Names are confusingly similar to the Service Marks, pursuant to Paragraph 4(a)(i) of the Policy, because they wholly incorporate the Service Marks with the addition of generic or non-distinctive terms.
Complainant further argues that the Domain Names are intended to confuse consumers searching for information related to A.B.C.
iii) Complainant contends that Respondent has no rights or legitimate interests in the Domain Names, pursuant to Paragraph 4(a)(ii), that Complainant has never granted Gladstone the right to use the Service Marks, either in connection with a bona fide offering of goods and services for any other reason, and that Respondent has failed to demonstrate any of the three circumstances that constitute rights or legitimate interests in the Domain Names.
First, Respondent cannot demonstrate rights or legitimate interest in the Domain Names under Paragraph 4(c)(i) because she has not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services.
Second, Gladstone cannot show she has been commonly known by any name that even remotely resembles the Domain Names or the Service Marks, pursuant to Paragraph 4(c)(ii).
Third, Gladstone is not making a legitimate non-commercial or fair use of the Domain Names, pursuant to Paragraph 4(c)(iii).
iv) Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of Paragraph 4(a)(iii).
Complainant asserts that Respondent�s actions satisfy the "intent to sell" requirement of Paragraph 4(b)(i), because Gladstone sees the enormous value to A.B.C. of avoiding consumer confusion of the Domain Names with the ABC and ABC CARPET & HOME Service Marks. She understands that the greatest value of the Domain Names is in selling them to A.B.C. The websites at "www.", "www.", and "" display a generic graphic indicating that the names are registered and provide links such as "make an offer to get this domain" and "have it appraised to see its value." Complainant argues that the only real value of the Domain Names would be for Gladstone eventually either: (i) to sell the Domain Names to another entity that has the same intent; or (ii) to sell the Domain Names to A.B.C. for a profit.
Complainant further asserts that Respondent�s purpose may also be to post her own website at the Domain Names with the intent of improperly attracting Internet users seeking information about A.B.C. and that the only realistic purpose behind registering the Domain Names is to create a likelihood of consumer confusion that would result ultimately in the diversion of Internet traffic from A.B.C.'s website to another site in violation of Paragraph 4(b)(iv).
Complainant contends that Gladstone's registering and failing to use the Domain Names satisfies the nonexclusive bad faith requirements of Paragraph 4(b). See, Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, at � 7.9 (February 18, 2000).
Complainant contends that Gladstone's bad faith intent is highlighted by the fact that she registered the Domain Name after another party had been sued in New York for registering that name.
Complainant contends that Gladstone's responses through correspondence and telephone calls demonstrate her prior knowledge of Complainant and its business and demonstrate her bad faith in the registration and use of the Domain Names.
B. Respondent�s contentions
i) Respondent fails to contest Complainant�s assertion of rights in the Service Marks.
ii) Respondent fails to contest Complainant�s assertions that the Domain Names are confusingly similar to the Service Marks, pursuant to Paragraph 4(a)(i) of the Policy.
iii) Respondent fails to contest Complainant�s assertion Gladstone has no rights to or legitimate interests in the Domain Names pursuant to Paragraph 4(a)(ii) of the Policy.
iv) Respondent fails to contest Complainant�s assertion that Gladstone registered and used the Domain Names in bad faith, pursuant to Paragraph 4(a)(iii) of the Policy.
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."
Because both the Complainant and Respondent are domiciled in the United States and 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. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April, 10, 2001), n. 3.
Even though Respondent has failed to file a Response or to contest Complainant�s assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) 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,
ii) that the Respondent has no legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith.
Enforceable Trademark Rights
Complainant contends that it has registrations of the Service Marks, that its registrations of the Service Marks are valid and subsisting, and that they serve as prima facie evidence of Complainant�s ownership and the validity of the Service Marks. 15 U.S.C. � 1115. Complainant further alleges that its registrations are incontestable and conclusive evidence of its exclusive right to use the Service Marks in connection with the stated services. 15 U.S.C. �� 1065 and 115(b). Respondent fails to contest Complainant�s assertion of rights in the Service Marks
Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights in the Service Marks.
Identity or Confusing Similarity
Complainant further contends that the Domain Names are confusingly similar to the Service Marks pursuant to the Policy paragraph 4(a)(i).
Respondent has not contested the assertions by Complaint that the Domain Names are confusingly similar to the Service Marks.
As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant�s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that , and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the Complainant�s registered trademark.
The Sole Panelist notes that the entirety of the Service Marks is included in each of the Domain Names.
Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition � 23:50 (4th ed. 1998).
Here the use of the phrases "andhome" and "-home" in the Domain Names are merely the addition of non-distinctive matter to the Service Marks.
Therefore, the Sole Panelist finds that the Domain Names are confusingly similar to the Service Marks pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest
Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Names.
The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:
(i) before any notice to you [Respondent] of the dispute, your 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).
Complainant�s contentions as set forth above are sufficient to establish a prima facie showing that Respondent has no rights or legitimate interest in the Domain Names and that none of the three circumstances set forth in Paragraph 4(c)(i)-(iii) is present. Thus, the Complainant has sustained its burden of proving that the Respondent lacks rights to or legitimate interests in the Domain Names. Furthermore, Respondent has failed to contest Complainant�s assertions.
Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Bad Faith
Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) 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
(ii) 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
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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
As set forth above, Complainant contends that Respondent has violated Paragraphs 4(b)(i) and 4(b)(iv) of the Policy, thus establishing her bad faith.
Purpose of Selling 4(b)(i)
The Sole Panelist finds that Complainant has adequately supported the inference that Respondent�s actions satisfy the "intent to sell" requirement of Paragraph 4(b)(i), because of the enormous value to A.B.C. of avoiding consumer confusion of the Domain Names with the ABC and ABC CARPET & HOME Service Marks. The greatest value of the Domain Names is in selling them to A.B.C. The websites at "www.", "www.", and "" display a generic graphic indicating that the names are registered and provide links such as "make an offer to get this domain" and "have it appraised to see its value." The factors support the finding that the only real value of the Domain Names would be for Gladstone eventually either: (i) to sell the Domain Names to another entity which has the intent to sell them; or (ii) to sell the Domain Names to A.B.C. for a profit.
Therefore, the Sole Panelist finds that Complainant has shown the necessary elements of bad faith under the Policy paragraph 4(b)(i).
Attraction for Commercial Gain Through Confusion 4(b)(iv)
Complainant alleges that the Respondent has intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion.
Complainant asserts that Respondent�s purpose may also be to post her own website at the Domain Names with the intent of improperly attracting Internet users seeking information about A.B.C. and that the only realistic purpose behind registering the Domain Names is to create a likelihood of consumer confusion that would result ultimately in the diversion of Internet traffic from A.B.C.'s website to another site in violation of Paragraph 4(b)(iv).
The Sole Panelist finds that the evidence establishes that Gladstone has made no use of the Domain Names or of the websites to which they resolve and that this is not sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).
Nonexclusive Criteria
The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
Inaction or Lack of Use
One such factor is that Respondent has made no use of the Domain Name. The Sole Panelist finds that Respondent has not developed any active website at any of the websites to which the Domain Names resolve. In Telstra it was established that registration together with "inaction" and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eR, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoS, Inc. v. Ofer, WIPO Case No. D2000-0075.
To quote a prior Panel decision, "[B]ecause Respondent is contributing no value-added to the Internet -- it is merely attempting to exploit a general rule of registration -- the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it." Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044.
See also, Leland Stanford Junior Univ. v. Zedlar Transcription & Translation, FA 0006000094970 (NAF July 11, 2000); Revlon Consumer Prods. Corp. v. Yosef, WIPO Case No. D2000-0468 (July 27, 2000) (citing cases where panel found inaction constitutes bad faith).
In World Wrestling Federation Entertainment Inc (WWFE) v. Rooij, WIPO Case No. D2000-0290 (June 20, 2000) the Panel made a finding of bad faith based on the fact that the domain name website had not been developed, stating "the concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concepts." Id. at 10.15. See also, Mondich v. Brown, WIPO Case No. D2000-0004 (February 16, 2000) (bad faith evidenced by "failure for a substantial period of time to make good faith use of the domain name for [respondent's] business"); Casual Corner Group, Inc. v. Neil Young, No. FA0007000095112 (NAF August 7, 2000); Emory Healthcare, Inc. v. Gulf South Limited, No. FA 0005000094892 (NAF July 5, 2000).
Actual or Constructive Knowledge
A second factor found to support a finding of bad faith is Respondent�s knowledge of the Complainant�s mark. Complainant has alleged, without refutation, that Respondent had actual knowledge of the Service Marks.
In addition, Respondent had constructive notice of the Service Marks, as a trademark search on the date of the registration of the Domain Names would have revealed Complainant�s registrations in the United States. Actual or constructive knowledge of the Complainant�s rights in the Trademarks is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (April 18, 2000); Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000) (Respondent�s knowledge of Complainant�s mark at the time of registration of the domain name suggests bad faith).
Therefore, the Sole Panelist finds that Respondent had actual and constructive knowledge of the Service Marks at the time she registered the Domain Names.
Failure to Respond to Requests to Transfer
A third factor is Respondent�s refusal to voluntarily transfer the contested Domain Names. On or about June 5, 2000, A.B.C. sent a letter to Gladstone demanding that she cease and desist use of the Domain Names. On July 28, 2000, attorneys for A.B.C. forwarded by certified mail documents required to assign the Domain Names to A.B.C. for Gladstone's signature. Delivery to Gladstone on July 31, 2000, was certified. Having no response, and after Gladstone reiterated her agreement to assign the Domain Names in a telephone conversation, attorneys for A.B.C. again sent her the transfer documents on January 30, 2001. To date Gladstone has failed to assign the Domain Names.
Respondent has ignored Complainant�s request to transfer ownership of the Domain Name. Failure to positively respond to a complainant�s efforts to make contact provides "strong support for a determination of �bad faith� registration and use." Encyclopaedia Britannica v. Zuccarini, WIPO Case No. D2000-0330 (June 7, 2000).
Therefore, the Sole Panelist finds that Respondent has failed to comply with the legitimate requests of Complaint that Respondent transfer the Domain Names.
Use of Entire Mark Without Plausible Good Faith Use
A fourth factor is the use of Complainant�s entire mark in the Domain Name, thus making it difficult to infer a legitimate use of the Domain Name by Respondent. In Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (March 10, 2000), Complainant filed a WIPO Complaint against the Registrant of domain name . The WIPO panel agreed with Complainant and inferred bad faith use of , because the domain name included Complainant�s entire trademark. In light of Cellular One�s trademark registrations and applications, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name." See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 � 7.
Respondent�s Domain Name uses the entirety of Complainant�s Service Marks." No plausible explanation exists as to why Respondent selected the Service Marks as part of the Domain Name other than to trade on the goodwill of Complainant. Despite contact by Complainant�s counsel, Respondent has never provided any information to contradict the conclusion that Respondent registered the Domain Names in order to benefit from the Service Marks.
Respondent has failed to come forward with any facts to contradict the assertions of Complainant. Therefore, the Sole Panelist finds that Respondent had no plausible good faith use for the use of the entirety of the Service Marks in the Domain Names.
7. Conclusion
Based upon this evidence, the Sole Panelist finds that Complainant has shown sufficient facts to support a finding that Complainant has demonstrated the existence of the criteria in the Policy paragraph 4(b)(i). In addition, the evidence establishes: (i) inaction by Respondent in the use the Domain Names to post any content on the Internet or for any other legitimate purpose; (ii) actual and constructive knowledge by Respondent of Complainant�s rights in the Service Marks upon the registration of the Domain Name; (iii) Respondent�s failure to positively respond to Complainant�s request for transfer; and (iv) the use of Complainant�s entire mark creating an absence of any plausible use of the Domain Names that would constitute good faith. These factors together form an independent basis upon which the Sole Panelist finds that Respondent has registered and used the Domain Names in bad faith. Therefore, the Sole Panelist concludes that Respondent registered and used the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).
8. Decision
The Sole Panelist concludes (a) that the Domain Names are confusingly similar to Complainant�s registered Service Marks, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Names be transferred to Complainant.
Richard W. Page
Sole Panelist
Dated: July 6, 2001
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