DECISION

Zier, Inc. v. Horoshiy, Inc. a/k/a Horoshiy

Claim Number:  FA0409000331944

PARTIES

Complainant is Zier, Inc. (“Complainant”), represented by David A. Gast, of Malloy & Malloy, P.A., 2800 S.W. Third Avenue, Miami, FL 33129.  Respondent is Horoshiy, Inc. a/k/a Horoshiy (“Respondent”), F.D. Rooseveltweg #518, Curacao, AN. 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <uauniforms.com>, registered with Nameking.com, Inc.

PANEL

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

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 21, 2004; the Forum received a hard copy of the Complaint on September 23, 2004.

On September 24, 2004, Nameking.com, Inc. confirmed by e-mail to the Forum that the domain name <uauniforms.com> is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, Inc. 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 September 30, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 20, 2004 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@uauniforms.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 October 25, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 Company 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 <uauniforms.com> domain name is confusingly similar to Complainant’s UA mark.

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

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

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

FINDINGS

Complainant, Zier, Inc., is the owner of one of the largest retail clothing store chains in the United States.  Complainant maintains twenty-two stores and a robust online and mail order business.  Complainant operates under the UA and UNIFORM ADVANTAGE marks, with UA being the abbreviated form of the UNIFORM ADVANTAGE mark.  Complaint first began using the UNIFORM ADVANTAGE and UA marks at least as early as 1996 and 1998, respectively, in connection with retail stores featuring uniforms and mail order services featuring uniforms.  Complainant also owns trademark rights for the UA mark through registration with the United States Patent and Trademark Office (e.g., Reg. No. 2,130,732, issued January 20, 1998).  Complainant prominently displays the UA mark on virtually all advertising, hangtags and displays.

Respondent registered the <uauniforms.com> domain name on January 1, 2004.  At least as early as September 10, 2003, the domain name has been used to divert Internet traffic from the <uauniforms.com> domain name to Respondent’s website, providing pay-per-click links to other businesses that sell uniforms.  Among the links are Complainant’s main competitors. 

Respondent is associated and directly related to Henry Chan, as the WHOIS report on March 12, 2004, indicated that Henry Chan was the registrant of the disputed domain name.  It is believed that Henry Chan has changed the registrant name of the disputed domain name to the pseudonym Horoshiy, Inc. 

Additionally, Respondent, as Horoshiy, has been involved in at least three domain name disputes where the Panel has ordered the domain names transferred to the respective Complainant.  See Citigroup, Inc. v. Horoshiy, Inc., a/k/a Horoshiy, FA 290633 (Nat. Arb. Forum, Aug. 11, 2004); see also Avery Dennison Corp., v. Horoshiy, Inc., a/k/a Horoshiy, FA 289048 (Nat. Arb. Forum Aug. 2, 2004); see also InfoSapce, Inc., v. Horoshiy, Inc., a/k/a HOroshiy, FA 282775 (Nat. Arb. Forum, July 23, 2004).  Henry Chan has also been involved in numerous domain name disputes (e.g., Royal Bank of Canada v. Chan, D2003-0031 (WIPO Mar. 5, 2003) et. al.).  Similar to the Horoshiy decisions, all the Chan decisions involved fact patterns where the registrant registered domain names confusingly similar to the trademarks of a third party and used the popularity of the marks to generate traffic to a pay-per-click 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 UA mark through registration with the United States Patent and Trademark Office.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s <uauniforms.com> domain name is confusingly similar to Complainant’s UA mark because the domain name incorporates Complainant’s mark with the addition of a generic or descriptive words “uniforms,” which describes Complainant’s business.  The addition of a generic or descriptive term that describes Complainant’s business does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark).

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

Rights or Legitimate Interests

Complainant contends that Respondent does not have rights or legitimate interests in the <uauniforms.com> domain name containing Complainant’s UA mark.  The Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain name due to Respondent’s failure to respond to the Complaint.  The Panel finds that once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Additionally, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is using the <uauniforms.com> domain name to redirect Internet users to Respondent’s website, providing pay-per-click links to other businesses that sell uniforms.  Among the links are Complainant’s main competitors.  Respondent’s use of the confusingly similar domain name to provide links to competitors of Complainant is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  Additionally, Respondent’s use of the confusingly similar domain name to Complainant’s mark to provide click-through commercial links is not a legitimate noncommercial or fair use with regard to Policy ¶ 4(c)(iii).  See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (holding that Respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain name);  see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

Moreover, there is no proof in the record, including the WHOIS database evidencing or suggesting Respondent is commonly known by the <uauniforms.com> domain name.  Thus, Respondent has not established rights or legitimate interests in the disputed 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 interests 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

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

Registration and Use in Bad Faith

Respondent registered the <uauniforms.com> domain name, incorporating Complainant’s mark, for commercial gain.  Respondent’s domain name resolves to Respondent’s website, providing pay-per-click links to other businesses that sell uniforms, including those belonging to Complainant’s main competitors.  Respondent’s attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding Respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to Complainant’s <deluxeforms.com> domain name, thus receiving a commission from Complainant through its affiliate program); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant.

Respondent’s history of previous bad faith registration and use of domain names and involvement in adverse domain name disputes further evidences Respondent’s bad faith registration and use under Policy ¶ 4(b)(ii).  See Hitachi, Ltd. v. Fortune Int’l Dev. Ent,  D2000-0412 (WIPO July 2, 2000) (finding a pattern of conduct where Respondent registered numerous domain names with the number 2000, including <bmw2000.com>, <mercedesbenz2000.com>, <saab2000.net>, etc.); see also Calvin Klein, Inc. v. Spanno Indus., FA 95283 (Nat. Arb. Forum Aug. 21, 2000) (finding that Respondent has registered numerous domain names containing sexual references and domain names which are confusingly similar to third party trademarks; which points to a pattern of conduct on the part of Respondent, revealing that Respondent is registering domain names in order to prevent trademark owners from reflecting their marks in corresponding domain names).

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

 

DECISION

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

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

John J. Upchurch, Panelist

Dated:  November 8, 2004

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