DECISION

Bedford Fair Apparel, Inc. v. Henry Chan

Claim Number: FA0305000157322

PARTIES

Complainant is Bedford Fair Apparel, Inc., Tucson, AZ, USA (“Complainant”) represented by Kristin Page-Iverson of Lewis and Roca, LLP. Respondent is Henry Chan, Hung Hom, CHINA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <willowridgecatolog.com> registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 14, 2003; the Forum received a hard copy of the Complaint on May 16, 2003.

On May 19, 2003, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <willowridgecatolog.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On May 20, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 9, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@willowridgecatolog.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 16, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <willowridgecatolog.com> domain name is confusingly similar to Complainant’s WILLOW RIDGE mark.

2. Respondent does not have any rights or legitimate interests in the <willowridgecatolog.com> domain name.

3. Respondent registered and used the <willowridgecatolog.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the WILLOW RIDGE mark (Reg. No. 1,349,496 registered on July 16, 1985) in relation to clothing, namely, dresses, blouses, skirts, shorts, pants, jackets, suites, T-shirts, sweaters, one-piece suits, lingerie, pajamas, robes and belts. Complainant distributes a catalog under the WILLOW RIDGE mark, amassing $50 million in advertising costs in the past three years. Since April 1, 2002, Complainant has maintained a website at <willowridge.com>, which has averaged 1.5 million viewings per month and resulted in over $6 million in sales.

Respondent registered the <willowridgecatolog.com> domain name on March 3, 2003. Respondent is using the disputed domain name to divert Internet traffic to a portal website that consists of links to a number of other websites, including websites that directly compete with Complainant.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established its rights in the WILLOW RIDGE mark through registration with the USPTO and continuous use in commerce since 1983.

Respondent’s <willowridgecatolog.com> domain name is confusingly similar to Complainant’s WILLOW RIDGE mark because the disputed domain name appropriates Complainant’s entire mark and simply adds the nonsensical word “catolog” to the end of the mark. The word “catolog” is presumably a misspelling of the word “catalog,” which is a term that directly relates to Complainant’s business. The addition of a misspelling of a generic term that directly relates to Complainant’s business does not sufficiently differentiate the disputed domain name from Complainant’s mark with regard to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has neglected to respond to the Complainant’s allegations. Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Furthermore, Respondent has failed to invoke any circumstances that could demonstrate rights to and legitimate interests in the disputed domain name. When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights to or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Respondent is using the <willowridgecatolog.com> domain name to divert Internet traffic to a commercial website that provides links to websites in direct competition with Complainant’s business. Respondent’s use of the disputed domain name demonstrates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

Moreover, Respondent has proffered no proof and there is no evidence in the record that indicates Respondent is commonly known by WILLOW RIDGE CATOLOG or <willowridgecatolog.com>. Therefore, Respondent has failed to establish its rights to or legitimate interests in the disputed domain name with regard to Policy ¶ 4(c)(ii). See MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using the <willowridgecatolog.com> domain name to divert Internet traffic to a commercial, portal website that offers links to websites in competition with Complainant. Respondent’s attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

Moreover, Respondent has engaged in a practice called “typosquatting.” Typosquatting involves the registration of misspellings of words in domain names to divert Internet users to the typosquatter’s website for commercial gain. Typosquatting itself evidences bad faith registration and use under Policy ¶ 4(a)(iii). See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Black & Decker Corp. v. Azra Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of [a] web-address,” evidence that the domain name was registered and used in bad faith).

The Panel finds that Policy ¶ 4(a)(iii) has been established.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <willowridgecatolog.com> domain name be TRANSFERRED from Respondent to Complainant.

                                                                     

Honorable Paul A. Dorf (Ret.), Panelist

Dated:   June 20, 2003