DECISION

Pesche's Inc. v. Ling Shun Shing

Claim Number:  FA0405000268494

PARTIES

Complainant is Pesche's Inc. (“Complainant”), represented by Mark V.B. Partridge, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 S. Wacker Drive, Suite 5000, Chicago, IL 60606.  Respondent is Ling Shun Shing (“Respondent”), 138 Yi Xue Yuan Rd., Shanghai, 200032, P.R. China.

REGISTRAR AND DISPUTED DOMAIN NAME

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

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 6, 2004; the Forum received a hard copy of the Complaint on May 10, 2004.

On May 7, 2004, iHoldings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <pesches.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 12, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 1, 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@pesches.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 7, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 <pesches.com> domain name is identical to Complainant’s PESCHE’S mark.

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

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

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

FINDINGS

Complainant has operated a long-established flower shop, garden center, nursery and greenhouse business in the Chicago area since 1924.  Complainant has used the PESCHE’S mark in connection with its businesses for over 80 years.

Complainant registered the PESCHE’S mark for “full service florist delivery, greenhouse growers, retail sales of flowers and gifts” with the State of Illinois on November 23, 1987 (Reg. No. 61,475).

Over the past five years, Complainant has expended more than $1 million in advertising for the goods and services sold under the PESCHE’S mark.  In that same period of time, Complainant sold more than $50 million in goods and services under the PESCHE’S mark.

Respondent registered the disputed domain name <pesches.com> on October 14, 2002.  Respondent uses the domain name to direct Internet users to a search portal at the domain name <dp.information.com>.  The portal website provides links to a number of commercial sites that provide floral delivery services.  Respondent’s website prominently features the phrases “Your search for pesches.com returned the following results” and “Below are the top sites related to Pesches Flowers Des Plaines Illinois!!”

Upon entering Respondent’s website attached to the disputed domain name, Internet users are unable to exit the website without clicking on a succession of advertisements for various products and services.

Respondent has a history of registering and using domain names in bad faith that are confusingly similar to the trademarks of third parties, as shown by six previous adverse UDRP decisions rendered against Respondent.  E.g. ABC Distributing, Inc. v. Ling Shun Shing, FA 126640 (Nat. Arb. Forum Dec. 11, 2002); Bank of Am. Corp. v. Ling Shun Shing, FA 132447 (Nat. Arb. Forum Dec. 30, 2002); LTD Commodities, LLC v. Ling Shun Shing, FA 146938 (Nat. Arb. Forum Apr. 1, 2003); ChevronTexaco Corp. v. Ling Shun Shing, FA 146570 (Nat. Arb. Forum Apr. 14, 2003); Citigroup Inc. v. Ling Shun Shing, D2003-0328 (WIPO June 2, 2003); and Ameriquest Mortgage Co. v. Ling Shun Shing, D2003-0294 (WIPO June 6, 2003).

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

Registering a mark with a U.S. state governing authority has been found to evidence rights in a mark under the Policy.  Thus, in the instant case, Complainant has established rights in the PESCHE’S mark through its registration of the mark with the State of Illinois.  See Board of Regents of the Univ. of Idaho v. Anti-Globalization Domains, FA 205127 (Nat. Arb. Dec. 8, 2003) (“Registration with the State of Idaho is sufficient to establish Complainant's rights in a mark.”); see also Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (“Complainant has established it rights in the CAPE COD SPORTSWEAR, LTD. mark through registration with the State of Massachusetts and continuous use in commerce since 1995.”); see also Frontier-Oldsmobile-Cadillac, Inc. v. Smith, FA 156845 (Nat. Arb. Forum July 16, 2003) (“Complainant has established rights in the FREEDOM CHEVROLET mark through proof of registration of that mark in the State of North Carolina.”).

The disputed domain name <pesches.com> is identical to Complainant’s PESCHE’S mark because the domain name contains the PESCHE’S mark in its entirety and has merely removed the apostrophe from the mark, which is irrelevant for purposes of determining Policy ¶ 4(a)(i).  See 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); see also Loreal USA Creative Inc. v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from a mark); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (finding the removal of an apostrophe from a complainant’s mark in a domain name is insignificant in determining the similarity between the domain name and mark because such punctuation is not reproducible in domain names); see also Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not responded to the Complaint.  Therefore, the Panel may construe such an omission as substantive evidence that Respondent lacks rights to and legitimate interests in the disputed domain name.  Moreover, the Panel may accept as true any reasonable inferences from Complainant’s assertions without the benefit of a Response. 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); 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 <pesches.com> 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 Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”); 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); 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").

Respondent is using a domain name that is identical to Complainant’s mark to display links to commercial competitors of Complainant.  As evidence, Complainant has provided a printout of the domain name’s attached website that lists various businesses that claim to sell a “Wide assortment of fresh flowers” and “flower arrangements.” Additionally, the website lists Complainant’s PESCHE’S mark five times in various headings and even contains the geographic location of Complainant’s Illinois business four times.  Such content substantiates Complainant’s claim that Respondent is not using the domain name in connection with 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) because Complainant is using the domain name, which is identical to Complainant’s mark, to link to competitors of Complainant.  See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that Respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because Respondent used the names to divert Internet users to a website that offered competing services with those offered by Complainant under its marks); 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).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The disputed domain name is identical to Complainant’s PESCHE’S mark.  Thus, Complainant is unable to use a corresponding domain name in the “.com” top-level domain due to Respondent’s registration of the <pesches.com> domain name.  The fact that Respondent has a history of registering domain names in bad faith under the Policy is sufficient to establish that Respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(ii).  Under that provision, bad faith is established when a respondent registers a domain name to prevent the owner of a mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct.  The Panel finds the evidence in this case comports with a finding of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Nat’l Abortion Fed. v. Barry, FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding that, since respondent had numerous adverse decisions under the Policy, respondent had a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii)); see also Chadbourne & Parke LLC v. Am. Dist. Systems, Inc., D2003-0553 (WIPO Sept. 8, 2003) (“There simply can be no dispute that the Respondent's pattern of conduct has been proven in this regard by regarding only the litany of prior panel decisions and transfer awards against it just relating to law firm names.”).

As previously expounded, Respondent is using the disputed domain name to direct Internet users to competitors of Complainant.  Bad faith registration and use of a domain name can be established under Policy ¶ 4(b)(iii) if a respondent registered a domain name primarily to disrupt the business of a competitor.  The evidence in this case, including the frequent references on Respondent’s website to Complainant’s mark, the geographic location of Complainant’s business, and the goods and services that compete with Complainant, is sufficient for this Panel to find that Respondent registered the domain name primarily to disrupt Complainant’s business under Policy ¶ 4(b)(iii).  See 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); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).  

The evidence cited above also establishes that Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s PESCHE’S mark under 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 pursuant to Policy 4(b)(iv)).

 

Complainant has established 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 <pesches.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  June 21, 2004

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