DECISION

Samsonite Corporation v. Scholarcraft Commercial Furniture

Claim Number:  FA0404000250235

PARTIES

Complainant is Samsonite Corporation (“Complainant”), represented by Colleen J. Hart of Kamlet Shepherd & Reichert, LLP, 1400 Sixteenth Street, Suite 250, Denver, CO 80202.  Respondent is Scholarcraft Commercial Furniture (“Respondent”), P.O. Box 170748, Birmingham, AL 35217.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <samsonitecommercial.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically March 31, 2004; the Forum received a hard copy of the Complaint April 5, 2004.

On April 5, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <samsonitecommercial.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On April 7, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 27, 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@samsonitecommercial.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 May 7, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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. The domain name registered by Respondent, <samsonitecommercial.com>, is confusingly similar to Complainant’s SAMSONITE mark.

2. Respondent has no rights to or legitimate interests in the <samsonitecommercial.com> domain name.

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

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

FINDINGS

Complainant is a multinational corporation that distributes and sells a variety of travel goods including luggage, clothing, furniture and other similar items and store services.  Complainant has used the mark SAMSONITE to identify these goods and services for more than 50 years.

Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) relating to the SAMSONITE mark.  Among such registrations is registration number 2,050,798 for the SAMSONITE trademark, issued April 8, 1997, in connection with furniture.

In addition, Complainant registered and operates active websites at <samsonite.com> and <samsonitecompanystores.com>.  Together, these websites generate approximately 112,210,493 hits per month.

Respondent registered the disputed domain name, <samsonitecommercial.com>, December 10, 1998.  Respondent is using the disputed domain name to host a website that markets furniture produced by Scholarcraft Commercial Furniture.  The website contains a link to the Scholarcraft Commercial Furniture website.

Complainant alleges that Respondent has no connection or affiliation with Complainant and has not received from Complainant any license, authorization, or consent to use SAMSONITE in a domain name or any other manner.  Respondent did not counter this allegation with an offer of proof to the contrary.

Complainant explains, however, that it formerly licensed the mark SAMSONITE to a third-party, SILLC Holdings, LLC, and that SILLC Holdings, LLC used the SAMSONITE mark as part of its company name, Samsonite Commercial Furniture.  In May 2002, Complainant further urges, Samsonite Commercial Furniture liquidated its assets.  Although Respondent purchased at least some of the physical assets of the company upon liquidation, according to Complainant, the licensing agreement between Complainant and SILLC Holdings, LLC indicates that all rights in the use of the SAMSONITE mark terminated prior to the sale of the physical assets of Samsonite Commercial Furniture.  Again, Respondent made no offer of proof to the contrary.

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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 to and/or Confusingly Similar

Complainant established by extrinsic proof in this proceeding that it has rights to the SAMSONITE mark by registration of a mark with a governmental authority.  This establishes rights in a mark under the Policy.  Complainant registered the SAMSONITE mark with the USPTO, the governing authority for trademark registrations within the U.S.  Therefore, Complainant has established rights in the SAMSONITE mark.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also 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.”).

A domain name that incorporates a third-party trademark and that contains an additional generic or descriptive term has been consistently found to be a domain name that is confusingly similar to the mark under the Policy.  Here, the disputed domain name <samsonitecommercial.com> includes Complainant’s SAMSONITE mark in its entirety and has merely added the term “commercial.”  Consistent with prior decisions, the Panel finds the disputed domain name is confusingly similar to Complainant’s SAMSONITE mark under Policy ¶ 4(a)(i).  See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporated the VIAGRA mark in its entirety, and deviated only by the addition of the word “bomb,” the domain name was rendered confusingly similar to Complainant’s mark); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

Complainant has met the requirements of Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant established in this proceeding that it has rights to and legitimate interests in the SAMSONITE mark that is contained in its entirety in the disputed domain name.  Complainant further alleged that Respondent has no such rights.  By failing to respond to the Complaint, Respondent has left Complainant’s assertions uncontested.  In such circumstances, the Panel presumes that Respondent lacks rights to 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 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 Vert. 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).

Nothing in the record indicates that Respondent is commonly known by the disputed domain name <samsonitecommercial.com>.  In fact, the WHOIS information lists Respondent’s name as “scholarcraft commercial furniture.”  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).

Respondent and Complainant both sell furniture and the Panel is permitted to presume that Respondent is a competitor of Complainant and that Respondent incorporated its competitor’s trademark, namely SAMSONITE, to market Respondent’s competing goods.  Such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See 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).

Furthermore, Respondent has not stepped forward to counter Complainant’s allegations that Respondent has no license or right to use the SAMSONITE mark.  See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that Respondent lacked rights and legitimate interests in the domain name because Respondent was not authorized by Complainant to use its trademarks and the mark was distinct in its nature, such that one would not legitimately choose it unless seeking to create an impression of an association with Complainant).

Complainant has met the requirements of Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant alleges that Respondent registered the disputed domain and used it in bad faith to sell goods under the <samsonitecommercial.com> domain name in competition with Complainant.  The primary effect of such sales is to disrupt the business of a competitor and this evidences Respondent’s primary purpose in registering the disputed domain name. Again, Respondent did not offer proof to the contrary.  The Panel finds that Respondent registered the disputed domain name using Complainant’s mark primarily for the purpose of disrupting the business of a competitor pursuant to Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); 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 further that the evidence supports the reasonable conclusion that Respondent intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with Complainant’s mark pursuant to Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

Complainant has met the requirements of Policy ¶ 4(a)(iii).

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 <samsonitecommercial.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: May 21, 2004.

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