WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Pier 1 Imports, Inc. , Pier 1 Licensing, Inc., Pier 1 Services Company v. William Vaughan Case No. D2008-1679 1. The Parties
The Complainants are Pier 1 Imports, Inc., Pier 1 Licensing, Inc., Pier 1 Services Company, of United States of America, represented by Baker Botts, LLP of United States of America.
The Respondent is William Vaughan of Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with InnerWise, Inc. d/b/a ItsYourD. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2008. On November 4, 2008, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourD a request for registrar verification in connection with the disputed domain name. On November 4, 2008 InnerWise, Inc. d/b/a ItsYourD transmitted by email to the Center its verification response confirming that the 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” or “UDRP”), 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 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 1, 2008.
The Center appointed David Perkins as the sole panelist in this matter on December 5, 2008. 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 4.A The Complainants
4.A.1 The First Complainant, Pier I Imports, Inc., is one of North America's largest specialty retailers of unique fashion forward, furniture, wicker decorative home furnishings, dining and kitchen goods, epicurean products, bath and bedding accessories, candles and other specialty items for the home. The first Complainant sells these products in over 1,000 stores in the United States of America, Canada, Mexico and Puerto Rico.
4.A.2 The First Complainant directly imports merchandise from over 50 countries around the world and designs proprietary assortments that become exclusive Pier 1 Imports offerings. Its merchandise largely consists of items which feature a significant degree of hand craftsmanship and are, for the most part, imported directly from foreign suppliers.
4.A.3 The First Complainant's principle competitors are the specialty sections of large department stores, furniture and decorative home furnishings retailers, small specialty stores and mass marketing discounters.
4.A.4 For the fiscal year ended March 1, 2008, the First Complainant's sales exceeded US$1.5 billion. The First Complainant's stock is publicly traded on the New York Stock Exchange.
4.A.5 The Second Complainant, Pier 1 Licensing, Inc., owns all the First Complainant's international trademarks, excluding trademarks in the United States of America and Canada. It is a Delaware Corporation and a subsidiary of the First Complainant.
4.A.6 The Third Complainant, Pier 1 Services Company, is a Delaware Statutory Trust. It also is a subsidiary of the First Complainant. It owns the First Complainant's registered trademarks in the United States of America and Canada.
The Complainants' Trademarks
4.A.7 The First to Third Complainants are hereinafter referred to as the Complainants. The Complainants and their predecessors in interest have continuously used the trade names Pier 1 and Pier 1 Imports throughout the United States of America since 1965.
4.A.8 The Third Complainant is the proprietor of the following registered trademarks,
Country Reg. No. Mark Class(es) Date of Application / Registration
United States of America
1,104,059
PIER 1
42
Field February 3, 1978 Registered October 10, 1978
United States of America
948,076
PIER 1 IMPORTS
42
Field November 5, 1971 Registered November 28, 1972
United States of America
1,620.518
PIER 1 IMPORTS
42
Filed ??? 21,1989 Registered October 30, 1990
United States of America
2,228,300948,076
PIER 1 IMPORTS
(Stylised)
35
Filed June 22, 1998 Registered March 2, 1999
United States of America
2,225,971
PIER 1 IMPORTS
(Stylised)
35
Filed February 5, 1998 Registered February 23, 1999
United States of America
2,225,972948,076
PIER 1 IMPORTS (Stylised)
35
Filed February 5, 1998 Registered February 23, 1999
The above registrations were first used in commerce from, respectively, August 1965 [Registrations 948,076 and 1,104,059], November 24, 1996 [Registration 1,620,518], January 1985 [Registration 2,228,300] and 1980 [Registration 2,225,971 and 972].
4.A.9 The Second Complainant is proprietor of the following registered trademarks:
Country Reg. No. Mark Class(es) Date of Application / Registration
United Kingdom
2,067,158
PIER 1 IMPORTS
20,21 and 42
Filed March 30, 1996 Registered May 15, 1998
United Kingdom
2,257,652
PIER 1 IMPORTS
35
Filed January 11, 2001 Registered June 8, 2001
Australia
620,132
PIER 1 IMPORTS
20
Filed January 7, 1994 Registered December 14, 1994
Australia
620,132
PIER 1 IMPORTS
42
Filed January 7, 1994 Registered December 14, 1994
Australia
739,691
PIER 1 IMPORTS
20 and 42
Filed July 22, 1997 Registered April 15, 1999 The domain name
4.A.10 The Third Complainant owns the domain name through which it operates a website that provides information on the Complainants' merchandise. 4.B The Respondent
In the absence of a Response, all that is known of the Respondent appears from the Complaint. The Respondent owns the disputed domain name which was created on October 1, 2001. As appears from Section 5.A below, that domain name is used to direct Internet users to a commercial website which provides links to third party retailers of furniture and home accessories, the majority of which, the Complainants' say, compete with their business. These include “”; “”; “”; “”; “”; “”; “”; “”; “”; “”; “”; “”; “”; “”; “”; “”; “”; “”; “”; “”; “/living-room-furniture”; “”; “”; “”; “”; “”; “”; “”; “”; “”; “”; “”; “”; “”; “” and others. 5. Parties' Contentions 5.A. Complainants Identical and Confusingly Similar
5.A.1 The Complainants' case is that the disputed domain name is identical to its PIER 1 trademark but for the numeral “1” in the trademark being substituted for the word “one” in the domain name and the addition of a hyphen. The addition of a hyphen is, the Complainant says, irrelevant to the assessment of confusing similarity. In that respect they cite Health Devices Corporation d/b/a Doc Johnson Enterprises v. Aspen S T C, NAF Claim No.158254. In that case the Complainant's trademark was DOC JOHNSON and the disputed domain name was .
5.A.2 In the circumstances, the Complainants assert that the disputed domain name is confusingly similar to its PIER 1 and PIER 1 IMPORTS trademarks. Rights or Legitimate Interests
5.A.3 Nor, the Complainants say, does the Respondent have any rights or legitimate interests in the disputed domain name. He cannot, they say, bring himself within any of the circumstances of paragraph 4(c) of the Policy. First, there is no evidence that the Respondent as an individual or business has been commonly known by the disputed domain name. The WHOIS Search lists the Registrant, Administrative Contact and Billing address as “William Vaughan SMTM Investments”, neither which nomenclatures indicates any connection with the disputed domain name as required by paragraph 4(c)(ii) of the Policy. This approach to that paragraph of the Policy was applied in Tercent Inc v. Lee Yi, NAF Claim No.139720 where the disputed domain name was .
5.A.4 Second, the Respondent cannot come within paragraph 4(c)(i) of the Policy, since his use of the disputed domain name which is described in paragraph 4B above is clearly not a bona fide use. Nor can such use qualify as fair use with paragraph 4(c)(iii) of the Policy. This is because, without license or other authorization from the Complainants, the Respondent is using a domain name which is confusingly similar to the Complainants' PIER 1 and PIER 1 IMPORTS trademarks to redirect Internet users to commercial websites which provide links to third party retailers of furniture and home accessories, the majority of which are business competitors of the First Complainant. The Complainants cite a number of decisions under the Policy where such a practice has been held not to amount to a bona fide use of the disputed domain name. For example, Reed Elsevier Inc and Seisint, Inc v. William Vaughan c/o smtm investments ltd, NAF Claim No.1153979. There Complainant's trademark was ACCURINT and the disputed domain name was . That disputed domain name was used by the Respondent to resolve to a website which provided hyperlinks to various third party websites some of which were competitors of the Complainant. This was held not to amount to bona fide use of the domain name. Nor was it a fair use of the disputed domain name within paragraph 4(c)(iii) of the Policy.
5.A.5 Also advanced in support of their case in this respect, the Complainants cite Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430, Zier, Inc. v. Horoshiy, Inc. a/k/a Horoshiy, NAF Claim No. 331944, TM Acquisition Corp. v. Sign Guards, NAF Claim No.132439 and The Black & Decker Corporation v. Clinical Evaluations, NAF Claim No.112629.
5.A.6 Finally, the Complainants say that the Respondent is not a licensee of the PIER 1 or PIER 1 IMPORTS trademarks, nor is he otherwise authorized to use those marks. Here, the Complainants cite Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003 for the proposition that, the absence of a license from the trademark owner demonstrates a lack of rights or legitimate interests in the domain name, where the Complainant's trademark is not one traders would legitimately choose for a domain name unless seeking to create an impression of association with the Complainant. Registered and Used in Bad Faith
5.A.7 The Complainants' case is that the circumstances of paragraph 4(b)(ii) and (iv) apply. As to paragraph 4(b)(ii), the Complainants point to the pattern of conduct evidenced by the Reed Elsevier case cited in paragraph 5.A.4 above in which the Respondent was the same as the Respondent in this case and the use of the domain name was of exactly the same nature as the use in this case of the domain name.
5.A.8 As to paragraph 4(b)(iv) of the Policy, the Complainants refer again to the Reed Elsevier case but also to other cases where use of the disputed domain name has been held to be in bad faith where such was found to be an intentional attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of that website. Those cases are Red Bull GmbH v. Bayer Shipping & Trading Ltd,WIPO Case No. D2003-0271, Zedg.e Ltd v. Moniker Privacy Services/Aaron Wilson,WIPO Case No. D2006-1585 and Sprunk-Jansen A/S v. Chesterton Holdings,WIPO Case No. D2006-1080.
5.A.9 Further, as to use in bad faith, the Complainants say that it is inconceivable that the Respondent could make an active use of the disputed domain name without creating a false impression of association with them. In that respect, the Complainants cite Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409, where the 19 disputed domain names incorporated the famous SONY trademark, either as a prefix (e.g. or as a suffix [e.g. .
5.A.10. Finally, the Complainants point to 10 cases additional to the Reed Elsevier case where the Respondent in this case has been the Respondent and the disputed domain names have been ordered to be transferred to the Complainants. This “other circumstance”, the Complainants say, constitutes powerful evidence that a finding of bad faith registration and use should also be made in this case.
The 10 cases are:
- Univision Communications Inc. v. William Vaughan c/o Smtm investment, [NAF Case No. 1172977] where the complainant's trademark was UNIVISION and the disputed domain name .
- Tanger Factory Outlet Centers, Inc. v. Domain Administration Limited a/k/a David Halstead a/k/a William Vaughan a/k/a smtm investments ltd, [NAF Case. No. 1157272] where the complainant's trademark was TANGER OUTLETS and the disputed domain names were and .
- JohnsonDiversey, Inc. v. William Vaughan c/o SMTM Investments Ltd, [NAF Case. No. 1163473] where the complainant's trademark was JOHNSON DIVERSEY and the disputed domain name .
- Adecco S.A. v. William Vaughan, SMTM Investments Ltd, [WIPO Case No. D2008-0095] where the complainant's trademark was ADECCO and the disputed domain name .
- Nine West Development Corporation v. William Vaughan, smtm investments ltd,WIPO Case No. D2008-0098 where the complainant's trademark was NINE WEST and the disputed domain name .
- Trans World Entertainment Corporation & Trans World New York., LLC v. William Vaughan,WIPO Case No. 2007-1907 where the complainant's trademark was TRANS WORLD ENTERTAINMENT and the disputed domain name )
- Touro College v. William Vaughan, SMTM Investments, Ltd.,WIPO Case No. D2007-1813 where the complainant's trademark was TOURO COLLEGE and the disputed domain name .
- Royal Bank of Canada v. William Vaughan,WIPO Case No. D2007-1752 where the complainant's trademark was RBC and the disputed domain was
- Deceuninck NV v. William Vaughan, smtm investments ltd.,WIPO Case No. D2007-1911 where the complainant's trademark was DECEUNINCK and the disputed domain name
- America International Group, Inc. v. Domain Administration Limited c/o William Vaughan, [NAF Case No. FA 1106369] where the complainant's trademark was AMERICAN GENERAL and the disputed domain name .
In all these cases, the Respondent made no Response and transfer of all the disputed domain names was ordered. 5.B. Respondent
As stated, no Response has been submitted. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 The disputed domain name is visually similar and phonetically identical to the Complainant's PIER 1 trademark, which has been in use since 1965 in the United States of America. The addition of a hyphen in the domain name is immaterial. The Panel has no hesitation in finding confusing similarity. Rights or Legitimate Interests
6.6 In the absence of a Response, there is no evidence before the Panel that any of the circumstances of paragraph 4(c) of the Policy are present in this case. Indeed, the evidence is overwhelming that the Respondent cannot have any rights or legitimate interests in the disputed domain name. The Complainant's PIER 1 and PIER 1 IMPORTS registered trademarks have been in use for over 40 years in the United States of America, the First Complainant is a publicly listed Company on the New York Stock Exchange and it has over 1000 PIER 1 IMPORTS stores in the United States of Americar, Canada, Mexico and Puerto Rico. In addition to its registered trademarks in the United States of America, the Second Complainant has been the proprietor of the registered trademark PIER 1 IMPORTS in Australia, the Respondent's country, since 1994, seven years before the disputed domain name was created.
6.7 The Complainants have not licensed or otherwise authorized the Respondent to use the PIER 1 or PIER 1 IMPORTS trademarks. Notwithstanding, the Respondent is using the disputed domain name which is confusingly similar to the Complainant's registered trademarks for a website which provides links and, presumably, click through revenue - to third party companies which compete with the Complainants' business, in particular with its furniture merchandise. Such use of the disputed domain name is not bona fide use. Nor is it a fair noncommercial use of that domain name since it is clearly being used for commercial gain to mislead consumers. The cases cited by the Complainant are totally in point.
6.8 The evidence clearly points to the Respondent having no rights or legitimate interests in the disputed domain name. Accordingly, the Complaint satisfies the second limb of the Policy in paragraph 4(a)(ii). Registered and Used in Bad Faith
6.9 The Complainants' trademarks have been used for over 40 years and the earliest registered for 37 years. There is overwhelming evidence of a pattern of conduct by the Respondent involving the registration of domain names, which are either identical to or confusingly similar to third party trademarks. Such evidence is in the 11 cases under the Policy, the Reed Elsevier case described in paragraph 5.A.4 and the other 10 cases listed in paragraph 5.A.10. In none of those did the Respondent submit a Response and in all 11 cases transfer of the disputed domain name(s) was ordered. In all of them the use to which the disputed domain name was put namely, directly to a website with hyperlinks to parties competing with the trademark owner is of the same nature as in the present case. Again, in the present case, the Respondent has failed to file a Response.
6.10 That pattern of conduct, replicated in the present case is typical of bad faith registration and use. Again, the cases cited by the Complainants are in point. The evidence of use described in paragraph 4B above coupled with the Panel's findings of confusing similarity and lack of rights or legitimate interests, constitute circumstances of the type set out in paragraph 4(b)(iv) of the Policy.
6.11 On that basis and having regard to the “other circumstances” described in the Complaint paragraphs 5.A.4, 5.A.10 and 6.9 above the Panel finds the disputed domain name to have been registered and used in bad faith. Accordingly, the Complaint satisfies the twin requirements of paragraph 4(a)(iii) of the Policy. 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.
David Perkins
Sole Panelist
Dated: December 16, 2008
Full & Egal Universal Law Academy