WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Shaheen Department Stores LLC v. Whois Data Shield LLC / Domain Names, Administration Case No. D2008-1778 1. The Parties
The Complainant is Shaheen Department Stores LLC of Louisville, Kentucky, United States of America, (“Shaheen's”) represented by Frost Brown Todd LLC, United States of America.
The Respondents are Whois Data Shield LLC of Jupiter, Florida, United States of America (“First Respondent”) and Domain Names, Administration of Olam, Saint Kitts and Nevis (“Second Respondent”). Unless otherwise stated, a reference herein to “the Respondents” will mean Domain Names, Administration, the registrant of the disputed domain name (“Domain Name”). 2. The Domain Name and Registrar
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 17, 2008. On November 18, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On November 18, 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 Complainant on November 20, 2008, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 25, 2008. The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceeding commenced on November 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2008. The Respondents did not submit any response. Accordingly, the Center notified the Respondent's default on December 17, 2008.
The Center appointed Isabel Davies as the Sole Panelist in this matter on January 20, 2009. 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
The Complainant is Shaheen Department Stores LLC, a chain of family operated department stores providing clothing, school wear, work wear and uniforms, otherwise known as “Shaheen's”. The Complainant is a company incorporated under the laws of the State of Kentucky, United States of America, on December 15, 1999. The business has been in operation since 1922.
The Complainant operates through three department stores in or around Louisville, Kentucky and its website which operates on the domain name . The Complainant supplies products and services to more than 300 schools in Kentucky, Indiana, Ohio, Oklahoma, Missouri and Tennessee, as well as individual consumers.
The Complainant registered its own domain name on June 13, 2000. The Complainant asserts that at the time of registration of this domain name, it had attempted to register the Domain Name, but this had already been registered to a third party. The Complainant approached the third party and offered to buy the Domain Name but this was unsuccessful. The Complainant then monitored the status of the Domain Name and attempted to register the Domain Name in its own name on its next renewal date, however, the Respondents had by that time already registered the Domain Name.
The Complainant has not provided details of any registered trade marks. However, it states in the Complaint that it has used the SHAHEEN'S mark continuously and exclusively in connection with its department stores as both a trade mark and a service mark since 1922. The Complainant contends that this use has caused the mark to be solely and exclusively associated with the Complainant's business and as an indicator of quality products and service, by consumers of clothing, school wear, work wear and uniforms.
According to the Complaint, the Complainant has achieved gross annual sales of approximately USD 7 million, approximately USD 300,000 of which is attributable to sales made through its Internet business and pay-per-click advertising on .
The Complainant has spent approximately USD 150,000 a year advertising its products and services under the name “Shaheen's”. The Complainant has advertised locally, regionally and nationally in the United States, through a variety of media. The Complainant has a widespread customer base, with 98% of its sales coming from individual customers.
The Domain Name is registered with Moniker Online Services, Inc. According to the Registrar's WHOIS database, the registrant of the Domain Name is Domain Names, Administration, the Second Respondent. The Domain Name was acquired by the First Respondent on an unspecified date in 2007.
The Complainant asserts that the Respondents derive money from the website through links to various third party websites that sell similar products and services to those provided by the Complainant and that these links are sponsored on a pay-per-click basis. These third party companies are direct commercial competitors of the Complainant. The Respondents have not denied this or provided any evidence in reply. 5. Parties' Contentions A. Complainant Confusingly Similar Domain Name
The Complainant contends that the Domain Name is confusingly similar to the Complainant's mark. The Complainant contends that the Domain Name incorporates the Complainant's mark in its entirety. The addition of the “.com” suffix does nothing to diminish the similarity between the Domain Name and the Complainant's mark, and the mere omission of the apostrophe does not create a new or different mark. The Complainant cites Columbia Insurance Company, Benjamin Moore v. Whois Data Shield and St Kitts Registry,WIPO Case No. D2007-0741, in support of this.
The Complainant also contends that the Respondents' posting of links to department stores and clothing outlets on the website at the Domain Name will confuse customers into believing that the website and the Domain Name are associated with the Complainant and its products and services. Rights or Legitimate Interest
The Complainant contends that the Respondents have no rights or legitimate interests in the Domain Name. The Complainant claims that it has established trade mark rights in the mark through continual commercial use over the last 80 years. The Complainant contends that the Respondents are not licensees of, or otherwise affiliated with, the Complainant.
The Complainant contends that the sponsored links to various third party websites is prima facie evidence that the Domain Name is used by the Respondents to gain profit by the display of sponsored links, which are not rights or legitimate interests under the Policy. In particular, the links are specifically selected according to the products and services they provide in order to produce click through revenue for the Respondents. The Respondents are accordingly exploiting the Complainant's mark and using it for financial gain as a result of the misdirected Internet traffic.
The Complainant contends that the Respondents are not using the Domain Name in connection with a bona fide offering of goods or services, that the Respondents' names do not contain the word “Shaheen” and that they have no legitimate cause to use this name.
Therefore, the Respondents are intentionally misdirecting customers searching for information on the Complainant's business to competitive links. The Complainant maintains that this is not a legitimate use of this site. Registration and Use in Bad Faith
The Complainant asserts that the Respondents have registered and used the Domain Name in bad faith. The Complainant contends that the Respondents were aware of the Complainant's prior rights in the mark when they registered the Domain Name. Accordingly, the Complainant claims that the Respondents' have intentionally attempted to profit from the confusion created by the Domain Name by tailoring the content of the website hosted on the Domain Name to relate to the Complainant's line of business, in an attempt to capitalise from the misdirected traffic from consumers looking to find information about the Complainant's goods and services.
The Respondents' conduct is allegedly designed to disrupt and harm the Complainant's business by diverting potential customers away from the Complainant's authentic website. This causes commercial detriment in terms of consumer confusion, lost sales and goodwill, and the loss of the general ability to communicate and transact with existing and potential customers.
The Complainant cites Adobe Systems Incorporated v. Domain OZ,WIPO Case No. D2000-0057 and Estes Express Lines v. Whois Data Shield / Hong Kong Names LLC.,WIPO Case No. D2007-0100 in support of the contention that using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant's mark is evidence of bad faith registration under paragraph 4(b)(iv) of the Policy.
The Complainant states that the First Respondent has previously had UDRP proceedings brought against it, demonstrating a pattern and practice of bad faith registration of domain names that infringe the trade marks of others and providing further evidence of the First Respondent's bad faith. The Complainant cites Estes Express Lines, supra, and Columbia Insurance Company, Benjamin Moore, supra, both cases filed against the First Respondent. B. Respondent
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings
In order to establish a cause for relief to be granted, the Complainant must establish each of the three elements required by paragraph 4(a) of the Policy, regardless of the Respondents' failure to submit a Response. The requirements are:
(i) that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant holds rights;
(ii) that the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) that the Domain Name was registered and used in bad faith. A. Identical or Confusingly Similar
The Policy requires that the Complainant has rights in a trade mark that is subject to abuse by the Respondent's registration of the Domain Name. In the absence of a registered mark, the Complainant has to be able to satisfy the Panel that it has sufficient common law trade mark rights in the SHAHEEN'S mark (see Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492). Where an unregistered personal name is being used for trade or commerce, the Complainant can establish common law trade mark rights in the name. To assert common law, unregistered rights, the Complainant must show that the name has become a distinctive identifier associated with the Complainant or its goods and services. The Complainant in this instance has provided a written account of its annual sales and details of the nature and extent of its advertising spend under the mark. It has also provided written evidence of goodwill and reputation.
Therefore, the Panel accepts that the Complainant has acquired common law rights in the mark SHAHEEN'S on the basis of its commercial use of the mark over a continuous period of 80 years.
The Domain Name consists of a word identical to the mark. The gTLD suffix, “.com”, being an inevitable part of the Domain Name, is disregarded in determining whether there is confusing similarity (see Estes Express Lines, supra). Use of the word “shaheens” is confusingly similar to the mark SHAHEEN'S. The two are identical save for the apostrophe, and the fact that the apostrophe is not present in the Domain Name is also not of material significance. Therefore, an average Internet user who has knowledge or recognition of the name Shaheen's might easily mistake the Respondents' website associated with the Domain Name, as being somehow affiliated to or owned by the Complainant.
The Complainant has satisfied the Panel that the Domain Name is identical or confusingly similar to the trade mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy). B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has made out a prima facie case that the Respondents lack rights or legitimate interests in this matter. Therefore, the Respondents are required to rebut this assertion (see Diebold Incorporated v. Paul Terwilliger, WIPO Case No. D2003-0416).
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or demonstrable preparations to use, the Domain name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has been commonly known by the Domain Name; and (iii) legitimate noncommercial or fair use of the Domain Name. No such evidence has been filed.
The Respondents have, by failing to respond, shown no rights or legitimate interests in respect of the Domain Name.
Accordingly, the Complainants are deemed to have satisfied paragraph 4(a)(ii) of Policy, and the Panel finds that the Respondents lack rights or legitimate interests in the Domain Name (paragraph 4(b)(ii) of the Policy). C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy it is incumbent upon the Complainant to prove, on the balance of probabilities, that the Respondent has registered and is using the Domain Name in bad faith.
According to the uncontested evidence, the Respondents have registered the Domain Name. The Complainant's own website address is “www.”. The Complainant provides products and services relating to school wear and uniforms and according to the written evidence is widely known, at least in the United States.
As a result of the Complainant's reputation in the area of school wear, clothing, uniforms and work wear, and the fact that the website hosted on the Domain Name provides links to third party websites which deal with products and services in this area, the Panel finds that the Respondents knew or should have known of the Complainant's prior adoption and use of the mark and that the Domain Name was registered in bad faith.
The Complainant also raised arguments to demonstrate bad faith in relation to the Domain Name registration and infringement of the trade mark rights of other parties. The fact that the First Respondent appears to have engaged in a pattern of bad faith registrations as demonstrated by the WIPO decisions cited by the Complainant: Estes Express Lines, supra and Columbia Insurance Company, Benjamin Moore, supra, both cases filed against the First Respondent, merely reinforces the finding of bad faith in this instance.
Paragraph 4(b) of the Policy provides a number of non-exhaustive circumstances which, if found to be present, are evidence of the registration and use of a domain name in bad faith. Of particular relevance here is 4(b)(iv): 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 Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or location of a product or service on its website or location.
The Panel accepts the Complainant's contention that the Domain Name is used in such a way as to exploit the reputation of the Complainant, in particular by providing links selected according to the products and services offered by the Complainant in order to generate sponsorship and click through revenue for the Respondents. The Respondents are accordingly using the Complainant's unregistered trade mark and service mark to exploit it for financial gain as a result of misdirected Internet traffic.
Accordingly, the Panel is satisfied that the Respondents have intentionally registered the Domain Name to attract Internet users to the website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the site (paragraph 4(b)(iv) 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.
Isabel Davies
Sole Panelist
Dated: February 3, 2009
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