WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bellbourne House Limited v. Forsyte Corporation Case No. D2009-0204 1. The Parties
The Complainant is Bellbourne House Limited, London, the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Ipulse, London, United Kingdom.
The Respondent is Forsyte Corporation, Nassau, Bahamas. 2. The Domain Names and Registrar
The disputed domain name (the “Domain Name”) is registered with AdoptAD Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2009. On February 18, 2009, the Center transmitted by email to AdoptAD Inc. a request for registrar verification in connection with the Domain Name. On February 23, 2009, AdoptAD Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 24, 2009, the Center requested that the Complainant clarify which mutual jurisdiction the Complainant intended to submit to in the Complaint. On February 25, 2009, the Complainant amended the Complaint to clarify that the Complainant intended to submit to the jurisdiction of the courts in Ontario, Canada, where the registrar's principal offices are located. The Center verified that the amended 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 February 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2009. The Respondent has not submitted a Response. Accordingly, the Center notified the Respondent of its default on March 19, 2009.
The Center appointed Sally M. Abel as the sole panelist in this matter on April 2, 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.
On April 15, 2009, the Panel issued Administrative Panel Procedural Order No. 1 (“Order No. 1”), requiring the Complainant to define and provide evidence of the its rights in the asserted trademark, for purposes of paragraph 4(a)(i) of the Policy, and giving the Respondent additional time to respond to the Complainant's anticipated submission. In response to Order No. 1, on April 17, 2009, the Complainant submitted a copy of an agreement dated January 1, 2007, between the Complainant and its sister company Hawkscrest Limited, the latter of whom owns the trademark in question, pursuant to which the Complainant was granted an exclusive license to the marks CAROLINE CASTIGLIANO and CASTIGLIANO for use in connection with bridal wear in the United Kingdom for at least five years (“License Agreement”). There was no submission from the Respondent. 4. Factual Background
The Complainant, Bellbourne House Limited, is an apparently well-known purveyor of bridal wear and related products in the United Kingdom. It claims to have used the CAROLINE CASTIGLIANO and CASTIGLIANO marks in connection with these goods since at least 1991, and to be internationally known for its bridal wear and related products.
The Complainant holds the exclusive license to the UK trademark CAROLINE CASTIGLIANO (Reg. No. 2439109, filed November 21, 2006 in classes 25 and 35) and the Community trademark CASTIGLIANO (Reg. No. E5479753, filed November 17, 2006 in classes 14, 25, and 35) from its sister company Hawkscrest Limited.
The Complainant registered its domain name in 2000, and has been marketing its bridal wear and other products under the CAROLINE CASTIGLIANO mark via the domain since that year. The Complainant also owns two variations on its primary domain name, and .
On August 23, 2006, the Respondent registered the Domain Name . The Domain Name is currently parked through the domain name registrar AdoptAD, Inc. The Domain Name provides sponsored links to the web pages of various companies, some purporting to offer wedding and/or bridesmaid dresses.
On December 19, 2008, the Complainant sent a letter by email to the Respondent, demanding that the Respondent immediately transfer the Domain Name to the Complainant. That same day, the Respondent replied to the Complainant's letter, claiming that the Respondent is a Barbados corporation and thus not subject to the jurisdictions in which the Complainant has registered its marks. The Respondent also offered to sell the Domain Name to the Complainant for US $1,500. On December 22, 2008, the Complainant replied to the Respondent, claiming that the Respondent's sale of goods within the UK brought it within UK jurisdiction. The Complainant received no response to that letter. On January 5, 2009, the Complainant sent a copy of its UDRP complaint to the Respondent with a request that the Respondent transfer the Domain Name in order to avoid UDRP proceedings. On January 6, 2009, the Complainant sent a letter informing the Respondent that it would now commence UDRP proceedings. The Complainant received no response to either of those letters. On February 16, 2009, the Complainant filed the Complaint with the Center. The Respondent did not respond to the Complaint, or to the Panel's subsequent order. 5. Parties' Contentions A. Complainant
The Complainant alleges that the Domain Name is “legally” identical to its licensed mark CAROLINE CASTIGLIANO.
The Complainant alleges that it is the only party with legitimate rights in the Domain Name, and that it did not authorize the registration of the Domain Name by Respondent. The Complainant further alleges that by using the Domain Name to offer goods and services similar to those offered by the Complainant under the CAROLINE CASTIGLIANO mark, the Respondent is intentionally attempting to attract Internet users to its site for commercial gain by creating a likelihood of confusion with the Complainant's mark, rather than making any legitimate use of the Domain Name.
The Complainant alleges that the Respondent registered the Domain Name in bad faith in order to block the Complainant from using the Domain Name and to take unfair advantage of the Domain Name. The Complainant also alleges that the Respondent's offer to sell the Domain Name to the Complainant for US $1,500, followed by silence, demonstrates the Respondent's bad faith. B. Respondent
The Respondent did not file a Response or otherwise reply to the Complainant's contentions. 6. Discussion and Findings
The Rules provide: “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint.” Rules, paragraph 5(e). See also Rules, paragraph 14. The Respondent has filed no Response in this case and there are no exceptional circumstances presented. The Complaint establishes that the Complainant has met its burden of proof on each of the required elements. A. Identical or Confusingly Similar
The Complainant is the exclusive licensee of the CAROLINE CASTIGLIANO mark owned by the Complainant's sister company, Hawkscrest Limited. An exclusive licensee of a mark has sufficient rights in the mark to initiate proceedings under the Policy. Telcel S.A. v. jerm and Jhonattan Ramirez,WIPO Case No. D2002-0309. The Panel notes, with concern, that the License Agreement expressly precludes the Complainant from instituting proceedings to protect the licensed marks “unless otherwise agreed” (License Agreement, paragraph 5). However, because it is obvious that the same individual signed the License Agreement on behalf of both parties, the Panel concludes that the Complainant likely has the required consent. Based on the foregoing, the Panel finds that Complainant has established that it has “rights” in the CAROLINE CASTIGLANO mark for purposes of this proceeding.
Hawkscrest Limited registered the CAROLINE CASTIGLIANO mark in November of 2006 three months after the Respondent registered the Domain Name. However, the Complainant has operated under the CAROLINE CASTIGLIANO mark since 1991, and has had an online presence under that mark since 2000. A common law trademark that has become distinctive through use in any country confers sufficient rights to satisfy the first required element. QuakeAID v. Solid D, Inc.,WIPO Case No. D2002-0815. Here, the Complainant has produced sufficient evidence to prove that it had rights in the mark at the time the Domain Name was registered.
The Domain Name differs from the Complainant's mark only in that the Domain Name removes the space between the two words of the Complainant's mark and adds the generic top level domain designation “.com”. These distinctions, being necessary features of any domain name, do not create a meaningful difference between the mark and the Domain Name. Ann Coulter v. Mark Vadnais, NAF Claim No. FA137221. The Domain Name is thus effectively identical to the Complainant's mark.
The Complainant has met its burden with regard to this element of the Policy. B. Rights or Legitimate Interests
Nothing in the record suggests that the Respondent has any rights or legitimate interests in the Domain Name. On the contrary, the record suggests that the Respondent's only use of the Domain Name has been to offer advertisements that exploit the likelihood of confusion created by the Domain Name's similarity to the Complainant's mark. Such bad-faith use creates no legitimate interest in a domain name. N.C.P. Marketing Group, Inc. v. Entredomains,WIPO Case No. D2000-0387. The Respondent has not filed a Response or otherwise attempted to rebut this showing.
The Complainant has met its burden with regard to this element of the Policy. C. Registered and Used in Bad Faith
The Panel finds the Respondent's registration and use of the Domain Name in question are in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The mark CAROLINE CASTIGLIANO has long and extensive use associated with the Complainant. It is reasonable to infer, given the evidence presented by the Complainant, that the Respondent was aware of the Complainant's mark when it registered and began to use the Domain Name. It further appears, based on the Respondent's use of the Domain Name to provide sponsored links to the sites of the Complainant's competitors, that the Domain Name was registered and used for the sole purpose of diverting users looking for the Complainant's website. Therefore, in the absence of evidence to the contrary, the Panel concludes that the Respondent's registration of the Domain Name and the Respondent's use of the Domain Name to misleadingly divert Internet users to its website for commercial gain constitute bad faith registration and use in violation of the Policy.
Further, the Respondent's offer to sell the Domain Name to the Complainant for an amount significantly in excess of reasonable out-of-pocket costs is an additional indicator of bad faith pursuant to paragraph 4(b)(i) of the policy. The Chase Manhattan Corporation and Robert Fleming Holdings Limited v. Entertainment Charlotte,WIPO Case No. D2000-0619.
The Complainant has met its burden on this element 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.
Sally M. Abel
Sole Panelist
Dated: April 23, 2009
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