WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Garys & Company Newport Beach, Inc. v. David Webb
Case No. D2005-0892
1. The Parties
The Complainant is Garys & Company Newport Beach, Inc., Newport Beach, California , United States of America, represented by Fulwider Patton Lee & Utecht, LLP, United States of America.
The Respondent is David Webb, Richardson, Texas, and United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Dotster, Inc.
3. Procedural History
The Complainant was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August�19,�2005. On August�22,�2005, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On the same day, Dotster, Inc. 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 September�2,�2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September�22,�2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September�23,�2005.
The Center appointed Jonathan Hudis as the sole panelist in this matter on October�13,�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
Complaint Garys & Company Newport Beach, Inc. (hereinafter “Complainant”) operates a chain of retail clothing stores. Among Complainant’s chain stores are the original GARYS™ stores, GARYS COLE-HAAN™, GARYS ISLAND DICK’S LAST RESORT�, GARYS PER DONNA�, GARYS STUDIO™, P.O.S.H.™, and GARYS RACK™. The original GARYS™ store made its debut as far back as�1966 and was the brainchild of Gary Wasserman who sold upscale men’s clothing to an elite clientele.
The GARYS ISLAND™ line of stores began as a department inside the flagship GARYS™ store in Newport Beach, California. The department was originally created to fulfill the increasing interest and popularity of Hawaiian shirts. The department did so well that an entire store was established across from the GARYS™ flagship location. The tagline “Dick’s Last Resort” was added to GARYS ISLAND (& design).
Ten other GARYS ISLAND DICK’S LAST RESORT� locations have since followed with the original location remaining at the Newport Beach site. Each location is at least 1,500-square-foot in size and is known for carrying upscale, quality resort-wear for men, women and children. GQ Magazine named the company as one of the top ten men’s clothing stores in the nation. Through the company’s many years of use, GARYS is now known for consistent high quality goods and enjoys a reputation in the industry unparalleled by most. Indeed, searches of the popular search engines Yahoo! and Google for the phrase “garys island” return literally hundreds of websites, articles, press releases and links to Complainant’s stores and the popular Fashion Island shopping center where Complainant’s flagship store began so many years ago.
Complainant is the owner of United States Service Mark Registration No. 1,989,739 for the mark GARYS ISLAND DICK’S LAST RESORT and No. 1,978,077 for GARYS ISLAND DICK’S LAST RESORT & DESIGN, both for “retail men’s, women’s and children’s casual clothing store services” in International Class 042. Complainant’s rights to use these marks in connection with the identified services has become incontestable under U.S. law.
In or around 1996, Complainant first registered the URL as a portal site for all of the Garys lines of stores. Around that same time, Complainant also registered a separate URL and set up a separate website for the Garys Island Dick’s Last Resort stores at . Through this website, Complainant offered information about the company, an online shopping cart for purchases, advice about fashion trends, and upcoming events and news releases.
In or around March�2004, Complainant, because of an oversight, failed to renew its registration for the domain name. Complainant learned of the matter when one of its customers reported a failed attempt to locate a website for the company.
The disputed domain name now is being used by Respondent for a website with the title “What you need, when you need it.” Compounding the confusion, the website lists “Popular Categories” of searches, the first of which is Complainant’s “Gary’s Island”. The second category listed is “Tommy Bahama” – the line of clothing that Complainant is famous for having pioneered. Rounding out the top of “Popular Categories” lists are the terms “Shopping” and “Newport Beach” – the city from which Complainant is widely-known for having launched.
Also, when a visitor reaches Respondent’s website, “pop-up” windows for one of several companies are activated. The “pop-up” is hidden in that it comes up behind the window in which the visitor is viewing the website. Thus, the visitor will not realize that the pop-up window has been activated until the main window has been closed. Complainant asserts, and Respondent has not contested, that Respondent earns advertising revenues from these pop-ups.
Complainant contacted Respondent by telephone and offered to reimburse Respondent’s out of pocket costs associated with the registration of the domain name if he would agree to transfer the domain back to Complainant. When Respondent became non-committal and Complainant suggested that Respondent’s actions were improper since the company owned a federally registered trademark, Respondent indicated that he owned hundreds of domain names, that he has a lawyer, and that there was nothing Complainant could do to him. The conversation ended with Respondent indicating that he would consider Complainant’s offer and get back to the company with his response. As of the filing of the Complaint, Complainant had not heard back from Respondent and Respondent’s website remained unchanged.
5. Parties’ Contentions
A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to GARYS ISLAND™ and GARYS ISLAND DICKS LAST RESORT�; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Transfer of the contested domain name will be ordered if Complainant has shown that the following three elements are present (Paragraph 4(a) of the Policy):
(i) The contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) The contested domain name has been registered and is being used in bad faith.
In an administrative proceeding pursuant to the Policy, Rules and Supplemental Rules, the Complainant must prove that each of these three elements is present.
A non exhaustive list of circumstances, if found by the Panel to be present, which may be considered as evidence of the registration and use of domain names in bad faith, may be found at Paragraph 4(b) of the Policy. On the other hand, a non exhaustive list of circumstances, if found by the Panel to be proved based upon its evaluation of all the evidence presented, demonstrating the Respondent’s rights or legitimate interests in the domain names, may be found at Paragraph 4(c) of the Policy.
Respondent had the opportunity to respond and present evidence that it has rights or legitimate interests in respect of the contested domain names. It chose not to do so. Complainant is not entitled to relief simply by reason of the default. However, the Panel can and does draw evidentiary inferences from the failure to respond. Cyberguard Corporation v. Cyber Surveillance Group, WIPO Case No. D2001-0972 (October�25,�2001).
For example, Paragraph 14 of the Rules provides that:
(a) In the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the Complaint.
(b) If a party, in the absence of exceptional circumstances does not comply with any provision of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Complainant has adequately demonstrated its ownership, federal registration, and use of the mark GARYS ISLAND DICK’S LAST RESORT, which are evidenced by its U.S. federal registrations and use of the mark on the website.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s registered and incontestable GARYS ISLAND DICK’S LAST RESORT mark, in that GARYS ISLAND forms a dominant portion of the mark.
Therefore, the Panel finds for the Complainant on the first element: the disputed domain name is confusingly similar to Complainant’s GARYS ISLAND DICK’S LAST RESORT mark. (Policy, Paragraph 4(a)(i))
B. Rights or Legitimate Interests
Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in respect of the domain name under the Policy. The burden of proof on this issue thus shifts to Respondent. See, e.g., Dr. Ing h.c. F. Porsche v. Simon Postles, Case No. D2001-1360 (March�21,�2002). However, Respondent chose to not present any evidence or argument showing that he may have rights or legitimate interests in respect of the disputed domain name.
Complainant contends that Respondent’s use of the disputed domain name manifests his sole intent to gain financially from advertising and traffic revenue generated by Internet users attempting to access Complainant’s website and services. Such use does not manifest use of, or show demonstrable preparations to use, the domain name in connection with bona fide offering of goods or services.
The Panel, therefore, finds for the Complainant on the second element-Respondent has no rights or legitimate interests in respect of the disputed domain name. (Policy, paragraph 4(a)(ii))
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies circumstances that evidence registration and use of the domain name in bad faith.
In this case, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site. Respondent had constructive, if not actual notice of Complainant’s trademarks. Additionally, Respondent’s use of the domain name for a web page offering sponsored search results, including a link named “Garys Island” and links to Complainant’s competitors, indicates that Respondent is aware of Complainant and is intentionally using the domain name to profit from creating a likelihood of confusion with Complainant’s marks.
Thus, Respondent has registered and is using the domain name in bad faith under paragraph 4(a)(iii) of the Policy, and the Panel finds for Complainant on this third and final element.
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 contested domain name be transferred to the Complainant.
Jonathan Hudis
Sole Panelist
Date: October �26,�2005
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