DECISION

Tall Walls, Inc. v. Registrant xcsquare@hotmail.com 852 225225225

Claim Number:  FA0405000271186

PARTIES

Complainant is Tall Walls, Inc. (“Complainant”), represented by Peter T. Wakiyama of Wolf, Block, Schorr and Solis-Cohen LLP, 1650 Arch Street, 22nd Floor, Philadelphia, PA 19103.  Respondent is Registrant xcsquare@hotmail.com 852 225225225 (“Respondent”), P.O. Box 71826, Kowloon Central Post Office, Hong Kong, NA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tallwalls.com>, registered with OnlineNIC, Inc.

PANEL

The undersigned certifies she has acted independently and impartially and that to the best of her knowledge 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 May 11, 2004; the Forum received a hard copy of the Complaint May 13, 2004.

On May 13, 2004, OnlineNIC, Inc. confirmed by e-mail to the Forum that the domain name <tallwalls.com> is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. verified that Respondent is bound by the OnlineNIC, 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 May 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 9, 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@tallwalls.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 21, 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 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, <tallwalls.com>, is identical and confusingly similar to Complainant’s TALL WALLS and TALL WALLS INC FOR THAT BIG IMPRESSION marks.

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

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

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

FINDINGS

Complainant has used the TALL WALLS mark since at least as early as January of 2002.  Complainant filed a trademark application for the TALL WALLS mark with the United States Patent and Trademark Office (“USPTO”) March 18, 2004 (Ser. No. 78/386885) for use in connection with “retail and online store featuring art, lighting and decorative accessories made specifically for tall and larger scale walls.” 

Complainant also filed a service mark application with the USPTO April 4, 2002, for the TALL WALLS INC FOR THAT BIG IMPRESSION mark.  The mark is used in the same manner as the TALL WALLS mark.  A notice of allowance was granted by the USPTO December 16, 2003, in connection with the TALL WALLS INC FOR THAT BIG IMPRESSION mark.

Respondent registered the disputed domain name <tallwalls.com> August 3, 2002.  Respondent uses the domain name to host a website that links to various commercial vendors of art, lighting, and décor.

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 owns two registration applications with the USPTO for the TALL WALLS and TALL WALLS INC FOR THAT BIG IMPRESSION marks.  Previous panels have concluded that registration applications are sufficient under the Policy to establish rights in a mark.  One panel has even articulated that evidence indicating a complainant is “actively seeking trademark protection” is enough to establish rights in a mark under the Policy.  Aston v. Pierrets, FA 117322 (Nat. Arb. Forum Sept. 27, 2002) (“Evidence that Complainant is actively seeking trademark protection for a mark in question is enough to show rights in the mark sufficient to establish standing.”); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy). 

Consistent with prior panel decisions, the Panel finds Complainant has established rights in the TALL WALLS mark under the Policy.  The fact that a notice of allowance has been granted by the USPTO for the TALL WALLS INC FOR THAT BIG IMPRESSION mark is further evidence of Complainant’s rights.  See Royal Caribbean Cruises Ltd. v. Gold Anchor Serv., D2003-0443 (WIPO July 17, 2003) (finding rights in a trademark where the complainant filed an application with the United States Patent and Trademark Office and a notice of allowance had been granted); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications).

The disputed domain name <tallwalls.com> is identical to Complainant’s TALL WALLS mark because the name incorporates the mark in its entirety.  The addition of the generic top-level domain “.com” is irrelevant for purposes of determining the similarity between the disputed domain name and Complainant’s mark under Policy ¶ 4(a)(i).  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).

Therefore, the disputed domain name <tallwalls.com> is identical to Complainant’s TALL WALLS mark pursuant to Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant established with extrinsic proof in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety in the domain name that Respondent registered.  Respondent has not responded to Complainant’s allegations.  In particular, Respondent has not alleged rights to or legitimate interests in the disputed domain name.  Therefore, the Panel may construe Respondent’s silence as an implicit admission 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.”).

Respondent also failed to provide evidence to show that Respondent is commonly known by the disputed domain name <tallwalls.com> pursuant to Policy ¶ 4(c)(ii).  Therefore, the Panel concludes Respondent is not commonly known by the domain name <tallwalls.com>.  See 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 TALL WALLS mark to provide links to businesses that offer goods and services that compete with those offered by Complainant under its mark.  Such use does not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under 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 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).

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

Registration and Use in Bad Faith

Complainant alleges that Respondent acted in bad faith by registering Complainant’s mark in a domain name.  Respondent registered the disputed domain name to host a website that provides links to third-party businesses in competition with Complainant’s business.  The fact that Respondent used the domain name in this competing manner and used Complainant’s own mark to accomplish this end is evidence of bad faith registration and use pursuant to 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)); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) & (iv).”).

The evidence supports a finding that Respondent intentionally attempted to attract Internet users to its website, presumably for commercial gain, by creating a likelihood of confusion with Complainant’s mark, which also constitutes bad faith 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, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)).

Therefore, 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 <tallwalls.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: July 6, 2004

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