WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pier 1 Imports Inc., Pier 1 Licensing Inc., Pier 1 Services Company v. Digi Real Estate Foundation
Case No. D2007-0897
1. The Parties
Complainants are Pier 1 Imports Inc., Pier 1 Licensing Inc., and Pier 1 Services Company, Fort worth, Texas, United States of America; represented by Baker Botts, LLP, United States of America.
Respondent is Digi Real Estate Foundation, Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2007. On June 20, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 21, 2007, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on June 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 19, 2007.
The Center appointed Eduardo Machado as the sole panelist in this matter on August 2, 2007. 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 is one of North America’s largest specialty retailers of unique fashion-forward, decorative home furnishings, gifts and related items, with over 1200 stores in 49 states, Canada, Mexico and Puerto Rico. The company reported net sales of over $1.7 billion for the fiscal year that ended February 25, 2006. The stock of Pier 1 Imports, Inc. is publicly traded on the New York Stock Exchange under the symbol PIR. Pier 1 Licensing, Inc. is a Delaware corporation and a subsidiary of Pier 1 Imports, Inc. Pier 1 Services Company is a Delaware statutory trust and subsidiary of Pier 1 Imports, Inc. Pier 1 Licensing, Inc. owns all of the company’s international trademarks, excluding the U.S. and Canadian trademarks which are owned by Pier 1 Services Company. All the above entities have sufficient common interest in the Domain Name for joinder to be permissible.
Complainants and their predecessors-in-interest have continuously used the trade name and trademark PIER 1 IMPORTS in interstate commerce throughout the United States of America since August 1965. The PIER 1 IMPORTS mark is an arbitrary and distinctive mark.
Complainant Pier 1 Services Company owns the following U.S. registrations for the PIER 1 IMPORTS trademark:
PIER 1 IMPORTS, United States 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, United States 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), United States 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, United States 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), United States 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.
In addition, Complainants own, among others, the following registrations in other countries:
PIER 1 IMPORTS, United Kingdom Reg. No. 2067158, filed March 30, 1996 and registered May 15, 1998 for ‘armoires, baskets, bars, beds, headboards for beds, benches, garden furniture, blinds (venetian, window and door), blinds, screens, bookcases, boxes of plastic or wood, buffets, cabinets, cupboards, sideboards, dressers, vanities, wardrobes, wall units, shelves, �tag�re, racks, serving carts, chairs, rockers, chaise lounges, couches, love seats, settees, furniture pads, chests of all types, consoles, curtains of beads or reeds, curtain tie-backs, cushions, pillows, desks, fans (hand and wall), futons, hampers, headboards, highboys, hutches, mirrors, frames for photos, frames for pictures, ottomans, stands, steps of wood, stools, pedestals, tables, table bases, table tops, trays (non metal), non-metallic hampers and containers, stands for electronic entertainment equipment’ in International Class 20, ‘bakeware, baskets not of metal, beverage dispensers, beverageware, bowls, bread boards, bread boxes, buckets (for wine, ice of champagne), cake servers, candle holders not of precious metal, canister sets, trash cans, carver rests, casserole dishes, chopping blocks for kitchen use, containers for food, cookware, servingware, decorative boxes not of metal, dinnerware, dish stands, holders for flowers and plants, knife blocks, knife boards, napkin holders, soap dispensers, soap dishes, soap brackets, towel holders, boxes for dispensing paper towels, serving trays, pitchers, urns, vases, plates, dishes, kitchenware, drinkingware, vases, sculptures of metal and stone, statues of earthenware’ in International Class 21, and ‘advice and consultancy services relating to the selection and/or suitability of household, office and garden furniture, fixtures and fittings, kitchenware, decorative items, general household equipment, toys and clothing’ in International Class 42.
PIER 1 IMPORTS, United Kingdom Reg. No. 2257652, filed January 11, 2001 and registered June 8, 2001 for ‘the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a department store’ in International Class 35.
PIER 1 IMPORTS, Australia Reg. No. 620132, filed January 7, 1994 and registered January 7, 1994 for ‘all goods’ in International Class 20.
PIER 1 IMPORTS, Australia Reg. No. 620133 filed January 7, 1994 and registered December 14, 1994 for ‘retail store services in the field of furniture, housewares and household decorating items and related services’ in International Class 42.
PIER 1 IMPORTS, Australia Reg. No. 739691, filed July 22, 1997 and registered April 15, 1999 for ‘armoires; baskets; bars, being furniture items; beds; venetian blinds and other window blinds in this class; bookcases; boxes of plastic or wood; buffets; carts, being furniture items; chairs of all types; chaise lounges; chests of all types; consoles; curtains of beads or reeds; curtain tie-backs; cushions; desks; dressers; entertainment centers, being furniture items; etageres; futons; hampers; headboards; highboys; hutches; love seats; mirrors; ottomans; pedestals; photo frames; picture frames; pillows; screens; sculptures of plaster, wax and wood; settees; shelves; sideboards; sofas; steps of wood; stools of all kinds; table bases; table tops; trays (non-metal); trunks; umbrella stands; vanities; wardrobes; wall units; window shades in this class; cabinets, chests, racks, stands and tables of all kinds in this class; fans (hand and wall) in this class’ in International Class 20 and ‘retail services being retailing of home furnishings, household utensils, decorative items, toys, clothing’ in International Class 42.
Complainant Pier 1 Services Company also owns the domain name through which it operates a website selling a variety of furniture, decorative home furnishings, dining and kitchen goods, textiles, toys and gifts.
On February 9, 2007, Complainants sent a cease and desist letter to Digi Real Estate Foundation via Federal Express to the Registrant’s reflected address. The letter was returned undeliverable.
5. Parties’ Contentions
A. Complainant
The complainants’ contend that the disputed domain name is virtually identical to their PIER 1 IMPORTS trademark, and that the mere subtraction of the letter “r” in the disputed domain name is not sufficient to negate the confusing similarity with Complainants’ trademarks.
The Complainants further contend that the Respondent has no rights or legitimate interest in the disputed domain name as:
(a) Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
(b) Respondent is not (either as an individual, business or other organization) known by the name “Pier1Impots”.
(c) “Pier1Impots” is not the name of any of the goods or services promoted on the website pages to which the domain name resolve.
(d) 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.
(e) 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, the majority of which compete with Complainants.
(f) Respondent is not a licensee of Complainants, and has not received any permission or consent to use the trademark PIER1IMPOTS or apply for the Domain Name.
Also, the Complainants contend that the domain name has been registered and is being used in bad faith as:
(a) Domain Name causes Internet users to mistakenly believe that the Domain Name is affiliated with Complainants.
(b) 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 Respondent’s website or location of a product or service on Respondent’s website or location pursuant to Policy paragraph 4(b)(iv).
(c) 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 Complainants. 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 Complainants’ valuable trademark.
(d) Respondent has a pattern of conduct of registering domain names similar to known trademarks.
(e) Respondent has provided false and misleading information in connection with the registration of the Domain Name.
The Complainants request that the disputed domain name be transferred to Complainant Pier 1 Services Company.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The Panel finds that the domain name is confusingly similar to the PIER 1 IMPORTS marks since the dominant portion of Complainants’ registered marks is reflected in the disputed domain name. The domain name differs from Complainants’ registered PIER 1 IMPORTS marks only in that it does not contain the letter ‘r’.
The Panel finds that subtracting letters from a trademark to form a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of the Complainant. It was held in Est�e Lauder Inc. v. , 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 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 disputed Domain Name and the Complainants’ trademark are insufficient to found any sustainable argument that the two are not confusingly similar.
Of relevance are the following domain names, which were all held by previous panels to be confusingly similar to the PIER 1 IMPORTS trademarks of the Complainants: Pier 1 Imports, Inc. and Pier 1 Licensing, Inc., v. Raymond E. Farr, Jr. WIPO Case No. D2001-0357, ; Pier 1 Imports, Inc. and Pier 1 Licensing, Inc. v. Success Work, WIPO Case No. D2001-0419, ; Pier 1 Imports, Inc., Pier 1 Services Company and Pier 1 Holdings, Inc. v. Motohisa Ohno WIPO Case No. D2004-0623, ; Pier 1 Imports, Inc., Pier 1 Services Company and Pier 1 Holdings, Inc. v. Horoshiy, Inc.WIPO Case No. D2004-0979, .
The Panel finds that the Complainants have established the first element of the Policy.
B. Rights or Legitimate Interests
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services. At the time the Complaint was filed, the domain name provided, in part, links to websites that were in direct competition with Complainants.
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Panel finds that the Complainants have established the second element of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to respondent’s website or other online location by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s site or of a product or service offered on respondent’s site. Policy paragraph 4(b)(iv).
The Panel finds that Respondent registered the domain name in bad faith.
Complainant’s allegations of bad faith are not contested. The trademark registrations of record confirm Complainants’ allegations that it had long been using its PIER 1 IMPORTS marks when the disputed domain name that is the subject of this Complaint was registered. The Panel finds persuasive Complainant’s allegation that the Respondent must have been aware of the Complainants’ rights in the mark and, further that Respondent knowingly infringed the Complainants’ trademark when it registered the subject domain name.
Under the Policy, it is evidence of bad faith registration and use that, “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.”, Policy paragraph 4(b)(iv). Respondent used Complainants’ known trademark to attract users to Respondents’ website where they are offered links to Complainants’ competitors. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of a product or service on Respondents’ website.
At the time the Complaint was filed the disputed domain name resolved to a page that offered visitors links to sites of other companies, including Complainants’ competitors. Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 (“the Panel is persuaded that Respondent’s registration and use of the disputed domain name for re-directing Internet users, particularly customers and potential customers of Complainants’, from Complainants’ website to the website of OfficeMax, a company which directly competes with Complainants, constitutes bad faith and use. Prior WIPO UDRP decisions also support this conclusion.”) See also E, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”).
Finally, the Panel finds that Complainants’ contention that Respondent is engaged in a pattern of conduct of registering several known marks as domain names is correct. The Panel has verified that Respondent has been involved in at least 20 prior WIPO UDRP cases where it has registered domain names incorporating or based upon famous trademarks in which it does not have any legitimate rights.
Accordingly the Panel finds that the Complainant has made out bad faith registration and use of the domain name by the Respondent.
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, be transferred to the Complainant, Pier 1 Services Company.
Eduardo Machado
Sole Panelist
Dated: August 16, 2007
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