WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Pier 1 Imports, Inc., Pier 1 Licensing, Inc., Pier 1 Services Company v. Whois Data Shield / Hong Kong Names LLC. (Name, Administrator) Case No. D2008-1697 1. The Parties
The Complainants are Pier 1 Imports, Inc., Pier 1 Licensing, Inc., and Pier 1 Services Company, of Texas, United States of America, represented by Baker Botts, LLP, United States.
The Respondent is Whois Data Shield / Hong Kong Names LLC. (Name, Administrator), of Florida, United States / Hong Kong, SAR of China respectively. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2008. On November 6, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On November 7, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on November 10, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on November 12, 2008. The Center verified that the Complaint together with the amended 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 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 11, 2008.
The Center appointed Knud Wallberg as the sole panelist in this matter on December 23, 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
Pier 1 Imports is a large North American specialty retailer of 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. Pier 1 Imports has over 1,000 stores in the United States, Canada, Mexico and Puerto Rico. The company directly imports merchandise from over 50 countries around the world and designs proprietary assortments that become exclusive Pier 1 Imports offerings. The stock of Pier 1 Imports, Inc. is publicly traded on the New York Stock Exchange and Pier 1 Imports reported net sales of over USD1.5 billion for the fiscal year that ended March 1, 2008.
The Complainant Pier 1 Services Company holds several trademark registrations for the marks PIER 1 and PIER 1 IMPORTS in the United States as well as trademark registrations of the mark PIER 1 IMPORTS in the United Kingdom and Australia.
The Complainant Pier 1 Services Company also owns the domain name through which it operates a web site that provides information on the company's merchandise, including furniture, decorative home furnishings, dining and kitchen goods, textiles, toys and gifts. Information regarding PIER 1 IMPORTS Gift Cards is provided on Complainant's website and a link to Complainant's licensee is provided whereby visitors can purchase the gift cards. 5. Parties' Contentions A. Complainant
The Domain Name is virtually identical to the PIER 1 trademark registered and used by the Complainants, except that the Respondent has added the generic wording “gift cards” and the generic top-level domain “.com”. Adding the words “gift cards” does not serve to distinguish the Domain Name from the Complainants' trademarks, but instead compounds the likelihood of confusion between the Domain Name and the Complainants' trademarks because the Complainants sell gift cards.
The Respondent is not a licensee of the Complainants, and has not received any permission or consent to use the trademark PIER 1 or apply for the Domain Name.
The Respondent is not (either as an individual, business or other organization) known by the name PIER1GIFTCARDS and is not making a legitimate noncommercial or fair use of the Domain Name
Further, 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. The Respondent is using the Domain Name to redirect Internet users to a commercial website that provides links to third party retailers of furniture, home accessories, bath and bedding accessories and specialty items for the home, the majority of which compete with the Complainants.
The Complainants allege that the Respondent's Domain Name causes Internet users to mistakenly believe that the Domain Name is affiliated with the Complainants. The initial user confusion that the Domain Name causes is evidence that Respondent registered and used the Domain Name in bad faith pursuant to Policy paragraph 4(a)(iii).
Further, the Complainants allege that by using the Domain Name, the 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 the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location of a product or service on Respondent's website or location pursuant to Policy paragraph 4(b)(iv).
Finally, the Complainants allege that there are other circumstances indicating that the Respondent registered the Domain Name in bad faith. Specifically, the Respondent has engaged in a flagrant pattern of registering domain names containing third party's trademarks. The Respondent has been involved in a large number of UDRP decisions. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainants must prove that each of the three following elements are satisfied:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the 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.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainants. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate. A. Identical or Confusingly Similar
The Domain Name contains the Complainants' distinctive trademark PIER 1 in its entirety. Neither the addition of the descriptive term “gift cards” nor the inclusion of the gTLD denomination “.com” alters the fact that the domain name is confusingly similar to the Complainant's trademark.
The Panel finds that the Domain Name is confusingly similar to the Complainants' registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
The Complainants have not licensed or otherwise permitted the Respondent to use their trademark or to apply for any domain name incorporating the Complainants' trademark.
The Complainants allege and have made a prima facie showing that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has not rebutted this and, based on the record of this case it is unlikely that any such rights or interests exist.
In this context the Panel notes that PIER 1 is a distinctive sign in relation to the goods and services offered by the Complainants. It therefore seems inconceivable that the Respondent could plausibly claim to use the Domain Name for any purpose unrelated to the Complainants or their products, an assumption which is clearly supported by the actual use of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainants must prove the Respondent's registration and use of the Domain Name in bad faith. Paragraph 4(b) sets out, by way of example, a number of circumstances which may be taken as indicative of bad faith.
Given the notoriety of the Complainants' trademark, the distinctive nature of the mark, and the extensive promotion of the trademark, it is inconceivable to the Panel that the Respondent registered the Domain Name without prior knowledge of the Complainants and the Complainants' mark.
The Domain Name resolves to a website that contains links including what is titled “sponsored links” to various entities some of which offers products that are in competition with the products and offered by the Complainants, and some of which offers gift card services or related services of the same nature as the gift cards services offered by the Complainants through a licensee. This clearly indicates that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion to the Complainants' trademark, as to the source, sponsorship, affiliation, or endorsement of Respondent's website, cf. the Rules paragraph 4(b)(iv). That the conduct is intentional is further underlined by the fact that the named Respondent has been the subject of several other similar cases under the UDRP, all finding that the conduct of the Respondent amounted to bad faith.
The Panel concludes that the Complainants have shown that the third condition under the Policy, registration and use in bad faith, is fulfilled. 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.
Knud Wallberg
Sole Panelist
Dated: January 6, 2009
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