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Generic Top Level Domain Name (gTLD) Decisions |
WeddingChannel.com Inc. v. Hanying Li:
This domain 4 sale
Claim Number: FA0411000363955
Complainant is WeddingChannel.com Inc. (“Complainant”),
represented by Monica Talley, of Finnegan Henderson Farabow Garrett &
Dunner L.L.P., 1300 I Street NW, Washington, DC 20005. Respondent is Hanying Li: This domain 4 sale (“Respondent”), 1861 Princeton Ave.,
Lawrenceville, NJ 08648-4518.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <weddingchanne.com>,
registered with Enom, Inc.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
15, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 16, 2004.
On
November 17, 2004, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <weddingchanne.com>
is registered with Enom, Inc. and that Respondent is the current registrant of
the name. Enom, Inc. has verified that Respondent
is bound by the Enom, 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
November 18, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 8, 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@weddingchanne.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 15, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
Judge Harold Kalina (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without
the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <weddingchanne.com> domain name is confusingly similar to
Complainant’s WEDDING CHANNEL and WEDDINGCHANNEL.COM marks.
2. Respondent does not have any rights or
legitimate interests in the <weddingchanne.com>
domain name.
3. Respondent registered and used the <weddingchanne.com> domain name
in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
WeddingChannel.com Inc., offers wedding planning, gift registry and
communication services. Complainant’s
total revenue in 2003 was more than $29 million. Currently, Complainant’s database contains more than 1.3 million
registries.
Complainant
holds trademark registrations with the United States Patent and Trademark
Office for the WEDDING CHANNEL mark (Reg. No.
2,508,302 issued November 20,
2001 and Reg. No. 2,519,435 issued December 18, 2001) and for the
WEDDINGCHANNEL.COM mark (Reg. No.
2,564,964 issued April 30, 2002, Reg. No.
2,590,287 issued July 9, 2002, Reg. No. 2,641,605 issued October 29, 2002, and
Reg. No.
2,763,090 issued September 16, 2003).
Complainant filed the trademark application for its WEDDING CHANNEL mark
on May 19, 1997 and filed for its WEDDINCHANNEL.COM mark
on September 23,
1999. Complainant has been using these
marks in commerce since at least July 1997.
Complainant’s
main website is operated at the <weddingchannel.com> domain name. Complainant’s website is one of the top two
wedding planning sites on the Internet.
Complainant’s website offers a virtually endless array of advice,
information, guidance and resources for planning a wedding. In January 2004, Complainant logged more
than 60 million page views from the United States and around the world.
Respondent
registered the <weddingchanne.com>
domain name on June 7, 2000.
Respondent uses the <weddingchanne.com>
domain name to direct Internet users to a commercial directory website
advertising various goods and services, some of which compete
directly with
Complainant.
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.
Complainant
established rights in the WEDDINGCHANNEL and WEDDINGCHANNEL.COM marks through
registration with the USPTO and through
continuous use of the marks in commerce
since 1997. 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.).
Furthermore,
although Respondent registered the <weddingchanne.com>
domain name before Complainant’s trademark registrations for the WEDDING
CHANNEL and WEDDINGCHANNEL.COM marks were issued, Complainant’s
rights in the
marks date back to Complainant’s filing dates of the applications for
registration. Thus, Complainant had
rights in the WEDDING CHANNEL and WEDDINGCHANNEL.COM marks prior to
Respondent’s registration of the disputed
domain name. See
FDNY Fire Safety Educ. Fund, Inc. v.
Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding Complainant’s
rights in the FDNY mark relate back to the date that its successful
trademark
registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q.
435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie
proof of continual use of the mark, dating back to the filing
date of the
application for registration).
Respondent’s <weddingchanne.com> domain name
is confusingly similar to Complainant’s WEDDINGCHANNEL.COM mark. Respondent’s
domain name would be identical to Complainant’s
mark if not for the misspelling
of the word “channel” by omitting the letter “l.” This slight alteration of
Complainant’s mark is
not enough to defeat a finding of confusing similarity
under Policy ¶ 4(a)(i). See State Farm
Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June
15, 2000) (finding that the domain name <statfarm.com> is confusingly
similar to Complainant’s
STATE FARM mark); see
also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum
Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly
similar to Complainant’s
COMPAQ mark because the omission of the letter “a” in
the domain name does not significantly change the overall impression of the
mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See
Am. Online, Inc. v. Clowers,
FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to
challenge a complainant’s allegations allows a panel to accept
all of the
complainant’s reasonable allegations and inferences as true);
see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences
in favor of a complainant and accept the complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain name. 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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain name. Moreover, Respondent is not licensed or
authorized to register or use domain names that incorporate Complainant’s
marks. Therefore, the Panel concludes
that Respondent lacks rights and legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat.
Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly
known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant;
(2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the
domain name in question).
Additionally, Respondent
is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). Respondent is using a domain
name confusingly similar to Complainant’s mark to direct Internet users to a
directory website advertising
goods and services that compete with
Complainant. See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum
May 12, 2003) (finding that Respondent did not have rights or legitimate
interests in a domain name that
used Complainant’s mark and redirected Internet
users to a website that pays domain name registrants for referring those users
to
its search engine and pop-up advertisements); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum
Apr. 5, 2003) (holding that Respondent’s use of the disputed domain name, a
simple misspelling of Complainant’s
mark, to divert Internet users to a website
that featured pop-up advertisements and an Internet directory, was neither a
bona fide
offering of goods or services nor a legitimate noncommercial or fair
use of the domain name); see also
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s appropriation of Complainant’s mark to market
products that
compete with Complainant’s goods does not constitute a bona fide
offering of goods and services); see also
Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb.
Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant,
had no rights or legitimate interests
in a domain name that utilized
Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO
Aug. 21, 2000) (finding that the disputed domain names were confusingly similar
to Complainant’s mark and that
Respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona fide offering of goods).
Moreover, the
fact that Respondent’s domain name is merely a typosquatted variation of
Complainant’s marks tends to prove that Respondent
lacks any rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******,
FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s
<wwwdinersclub.com> domain
name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in
and of itself that Respondent lacks rights
or legitimate interests in the disputed
domain name vis á vis Complainant); see
also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3,
2003) (finding no rights or legitimate interests where Respondent used the
typosquatted <wwwdewalt.com>
domain name to divert Internet users to a
search engine webpage, and failed to respond to the Complaint).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iii) by registering a domain name
confusingly similar to Complainant’s
mark and using it to market competing products and services. The fact that the domain name resolves to a
site that advertises various wedding and bridal services in competition with
Complainant
is evidence that Respondent misspelled Complainant’s mark
intentionally in order to siphon off traffic from unsuspecting Internet
users. See EthnicGrocer.com, Inc. v. Unlimited
Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation
from Complainant's marks suggests that Respondent, Complainant’s competitor,
registered
the names primarily for the purpose of disrupting Complainant's
business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that
competes with Complainant’s business).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <weddingchanne.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
December 29, 2004
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