The Complainant is Mrs. John L. Strong, LLC of Houston, Texas, United States of America represented by Baker Botts, LLP, United States of America.
The Respondents are Dan Jones and LCN.com Ltd of London, United Kingdom of Great Britain and Northern Ireland and Stevenage, United Kingdom of Great Britain and Northern Ireland, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with Advantage Interactive Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2011. On April 4, 2011, the Center transmitted by email to Advantage Interactive Ltd. a request for registrar verification in connection with the disputed domain name. On April 4, 2011, Advantage Interactive Ltd. 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 April 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2011. The Respondent submitted an e-mail to the Center on April 6, 2011.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on May 5, 2011. 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
According to the Complaint, the Complainant is the successor in title to an original United States business founded by Mrs John L. Strong in 1929 as the maker of handcrafted, personalized stationery using hand engraved steel plates and custom made dies. Over time, this business has had many famous clients and has carried on its operations under the names MRS JOHN L STRONG. Following financial difficulties, the business went into bankruptcy in 2009, and its assets were passed into the hands of JP Koots & Co Inc which formed and organized the Complainant in this action, Mrs. John L. Strong, LLC. Despite a short hiatus during the bankruptcy in 2009, it is alleged that the business has been carried on continuously under the name MRS JOHN L STRONG with customers in many other countries than the United States, including the United Kingdom of Great Britain and Northern Ireland, The Kingdom of Saudi Arabia, Monaco and Bahrain.
The Complainant has several United States and European Community (“EC”) trade marks for MRS JOHN L STRONG and variants registered with respect to various kinds of stationery products. These have been registered since July and May 2007, respectively. The Complainant also appears to have several domain names comprising the words “mrsjohnstrong” and “mrsstrong", but it is unclear how long these have been registered.
The disputed domain name was registered on June 2, 2009 and will expire on June 2, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that the three principal requirements of paragraph 4(a) of the Policy have been made out.
As to paragraph 4(a)(i), the Complainant argues that the disputed domain name is confusingly similar to the MRS JOHN L STRONG marks, noting that the disputed domain name contains the dominant part of the marks. The Complainant notes further that its marks were in use for a long period before the Respondent’s registration of the disputed domain name, although this must refer to the use of the Complainant’s mark before their United States and EC registrations in 2007, and there is no evidence, apart from allegation in the Complaint itself as to the volume and extent of this prior usage. It notes further that the Respondent uses the disputed domain name to divert customers to another competitor, The Wren Press, but this appears to be more relevant to paragraphs 4(a)(ii) and (iii) (see further below).
As to paragraph 4(a)(ii), the Complainant argues that there is no evidence that the Respondent is making a legitimate, noncommercial or fair use of the domain name and that MRS STRONG is not the name of any of the goods or services to which the disputed domain name resolves. More relevant here, however, is the alleged diversion of customers to a competitor of the Complainant, the Wren Press, pointing here to a link to The Wren website when customers attempt to go to . Finally, it is said that the Respondent does not have any permission or consent from the Complainant to use the name.
As to paragraph 4(a)(iii), the Complainant alleges that the Respondent has attempted wrongfully to divert customers to The Wren website. This competitor has a store located close to that of the Complainant in New York, and it is alleged that the registration of the disputed domain name was effected by the Respondent Dan Jones when he was an employee working for The Wren Press. Confirmation that Jones was at some prior time associated with the Wren Press, though not necessarily as an employee, is provided by an email to the Complainant’s lawyers from the President of The Wren Press dated March 15, 2011. This also states that The Wren Press does not wish to use the disputed domain name in any way and encourages the Complainant to remove it (see Annex 3 of the Complaint). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the complaint. Such default on the part of the Respondent does not relieve the Complainant from being required to establish that each of the requirements of the Policy, in particular that under paragraph 4(a), is established. Additionally, paragraph 14(b) of the Rules provides that, “if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.”
Accordingly, the Panel proceeds to deal with each of the elements required to be satisfied under paragraph 4(a) of the Policy, noting that it is necessary for the Complainant to satisfy each one if it is to succeed in achieving the relief requested. A. Identical or Confusingly Similar
Paragraph 4(a)(i) requires that the Complainant establish that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”. There are therefore two limbs of paragraph 4(a)(i) that the Complainant must satisfy: first, that it has “rights in a trade or service mark” (this need not be a registered mark), and, secondly, that the disputed domain name is “identical or confusingly similar” to that mark.
As to the first of these requirements, the Complainant has shown that it has rights in a number of registered trade marks that incorporate the words MRS JOHN L STRONG. While comparatively recent (2007), these registrations precede the registration of the disputed domain name, and there is the unrebutted statement by the Complainant that the words had been used as marks by its predecessors in title for a long time prior to this date, even if not registered.
The next question is whether the disputed domain name is identical or confusingly similar to the Complainant’s trade marks. It does not appear that there is any assertion by the Complainants that the disputed domain name is identical here; rather, its argument is that there is confusing similarity. The Panel accepts this submission, in particular that such confusion is likely to arise because the disputed domain name contains two principal components of the Complainant’s marks, namely the words “MRS” and “STRONG”. While no significance can be attached here to the fact that the Complainant itself has several domain names consisting of just the words “mrsstrong” (these not being “marks” within the meaning of paragraph 4(a)(i)), this does serve to underline that there is a ready interchangeability between the full name MRS JOHN L STRONG and the shortened name MRS STRONG that suggests strongly that the two are related.
The Panel therefore finds that the requirements under this paragraph are made out. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is required to show that the Respondent has “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in paragraph 4(c) of the Policy, which provides that:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) You are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Essentially, these are matters for a respondent to put forward for the Panel’s consideration. In the present case, no response has been filed and all that the Complainant can do is to point to evidence that indicates that none of these circumstances exist. In this regard, the matters referred to by the Complainant indicate that the Respondent is not making a legitimate use of the disputed domain name.
Thus, there is no evidence that the Respondent itself has been, or is, making a bona fide offering of goods or services under the disputed domain name: the only evidence before the Panel indicates that the Respondent’s disputed domain name resolves to the website for The Wren Press, a trade rival (see Annex 6), a situation that is now repudiated by the Wren Press (see above). There is no other evidence pointing to a use of the disputed domain name by the Respondent in relation to its own goods or services or business. It is also clear that no licence or authorization has been given by the Complainant to the Respondent to use the disputed domain name. In addition, the Respondent’s former association with The Wren Press suggests strongly that the Respondent must have been aware of the Complainant’s own Manhattan store a few blocks away, and that this was the reason for his choice of the disputed domain name. In this regard, there is no evidence to suggest that the Respondent’s use of the disputed domain name was by way of legitimate or fair comment (as, for example, in the case of a criticism site).
The Panel therefore finds that the requirements of paragraph 4(a)(i) are satisfied. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you [the Respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the Respondent] 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.”
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the disputed domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration of the disputed domain name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use.
In this regard, it is worth noting an early decision of a UDRP panel to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can also amount to use in bad faith, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine sub-paragraphs (i)-(iii) solely to the time of registration; presumably, the sub-paragraphs would also apply to a bad faith use of a disputed after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several panel UDRP decisions; see, for example, Estée Lauder Inc. v. , and Jeff Hanna,WIPO Case No. D2000-0869; and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
In the present proceeding, the situation is complicated by the fact that the Respondent has not filed any Response or provided any evidence as to its intentions in registering and maintaining the disputed domain name. As noted above, under paragraph 14(b) of the Rules, where a party defaults in complying with any requirement of the Rules – and this would include responding to the Complaint - the Panel is entitled to draw from such default such inferences, as it considers appropriate.
In the present case, the circumstances referred to in paragraphs 4(b)(i) and (ii) do not arise. More relevant, however, are the matters referred to in paragraphs 4(b)(iii) and (iv). Of most significance to both of these is the evidence concerning the Respondent Dan Jones’ former association with The Wren Press and the clear inference that he must have been aware of the Complainant’s business and name prior to his registration of the disputed domain name. This points to bad faith on his part at the time of registration, and this bad faith has continued with the use of the disputed domain name to resolve to The Wren Press website (an action now disavowed by The Wren Press). Overall, this circumstance, coupled with the Respondent’s failure to respond and explain its conduct satisfies the Panel that the requirements of paragraph 4(a)(iii) are made out. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Staniforth Ricketson
Sole Panelist
Dated: May 19, 2011
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