DECISION

Mervyn's Brands, Inc. v. Peter Carrington a/k/a Party Night, Inc.

Claim Number:  FA0306000161275

PARTIES

Complainant is Mervyn's Brands, Inc., Minneapolis, MN, USA (“Complainant”) represented by Eunice P. de Carvalho, of Faegre & Benson LLP.  Respondent is Peter Carrington a/k/a Party Night, Inc., Amsterdam, NETHERLANDS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mervynes.com>, registered with Key-Systems Gmbh d/b/a Domaindiscount24.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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 30, 2003; the Forum received a hard copy of the Complaint on June 2, 2003.

On June 5, 2003, Key-Systems Gmbh d/b/a Domaindiscount24.Com confirmed by e-mail to the Forum that the domain name <mervynes.com> is registered with Key-Systems Gmbh d/b/a Domaindiscount24.Com and that Respondent is the current registrant of the name. Key-Systems Gmbh d/b/a Domaindiscount24.Com has verified that Respondent is bound by the Key-Systems Gmbh d/b/a Domaindiscount24.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 June 5, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 25, 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@mervynes.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 July 1, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 <mervynes.com> domain name is confusingly similar to Complainant’s MERVYN’S mark.

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

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

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

FINDINGS

Complainant uses the MERVYN’S mark in relation to its retail department store services.  Complainant holds numerous valid registrations for the MERVYN’S mark with the U.S. Patent and Trademark Office, including, Reg. No. 1,063,553 (registered April 12, 1977). 

Complainant also operates an informational and on-line shopping site at <mervyns.com> that markets the same products as its retail department stores.

Respondent registered the disputed domain name on May 5, 2002.  Respondent is using the disputed domain name to redirect Internet traffic to <hanky-panky-college.com>, an adult oriented website.

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 that it has rights in the MERVYN’S mark through registration with the U.S. Patent and Trademark Office and through use of the mark in commerce.

Respondent’s <mervynes.com> domain name is confusingly similar to Complainant’s MERVYN’S mark because it merely misspells the mark by replacing the apostrophe between the last two letters of the mark with an “e”.  Respondent is taking advantage of a common spelling error by Internet users when they are attempting to access Complainant’s website.  Complainant’s MERVYN’S mark is the dominant element of the disputed domain name; therefore, Respondent’s <mervynes.com> domain name is confusingly similar to Complainant’s mark.  The fact that the disputed domain name does not include the mark’s apostrophe is not sufficient to distinguish it from Complainant’s mark.  See TM Acquisition Corp. v. Peter Carrington, FA 124850 (Nat. Arb. Forum Nov. 4, 2002) (finding that <centurey21.com> was confusingly similar to the CENTURY 21 mark because Respondent misspelled the mark by merely adding an “e” between the last two letters of the mark); see also Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant urges that Respondent has no rights to or legitimate interests in the disputed domain name.  Respondent did not provide the Panel with a Response in this proceeding.  Thus, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Bayerische Motoren Werke AG v Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); 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).

Moreover, due to Respondent’s failure to dispute the allegations in the Complaint, the Panel may presume that Respondent lacks rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Respondent is using the <mervynes.com> domain name, a simple misspelling of Complainant’s mark, to redirect Internet traffic to an adult oriented website.  This use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

In addition, Respondent is not affiliated with Complainant and the evidence fails to establish that Respondent is authorized or licensed to register or use domain names or marks containing the MERVYN’S mark.  The WHOIS information for the <mervynes.com> domain name indicates Respondent, Peter Carrington a/k/a Party Night, Inc., as the registrant; however, it fails to establish Respondent as an “individual, business, or other organazation” commonly known by the <mervynes.com> domain name.  Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also 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>).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

It can be inferred that Respondent had knowledge of Complainant’s MERVYN’S mark when it registered the disputed domain name because the domain name is merely a misspelling of Complainant’s mark.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Furthermore, Respondent registered the <mervynes.com> domain name and linked it to an adult oriented website.  The use of a domain name confusingly similar to a registered mark to divert Internet traffic to a website with sexually explicit content is itself evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of 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 <mervynes.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  July 14, 2003

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