Pier 1 Imports, Inc.; Pier 1 Licensing, Inc. v. Raymond E. Farr, Jr.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Pier 1 Imports,

Inc. and Pier 1 Licensing, Inc., v. Raymond E. Farr, Jr.

Case No.

D2001-0357

1. The Parties

The Complainants in this

proceeding are Pier 1 Imports, Inc., and Pier 1 Licensing, Inc., both Delaware

corporations and both having a principal place of business at 301 Commerce

Street, Suite 600, Fort Worth, Texas 76102, USA (hereinafter individually and

collectively referred to as "Complainants").

The Respondent in this

proceeding is Raymond E. Farr, Jr. ("Respondent"), the registrant

of the domain name in issue with a listed mailing address of 19383 La Guardia

St., Rowland Hts., California 91748, USA.

2. The Domain Name and

Registrar

The domain name in issue

is <pier2imports.com>.

The registrar of the domain

name in issue is DomainBank, Inc. ("Registrar") located at 23 West

4th Street, Bethlehem, Pennsylvania 18015-1603, USA.

3. Procedural History

On March 12, 2001, the

Complainants filed a Complaint with the WIPO Arbitration and Mediation Center

("Center") concerning the domain name <pier2imports.com> and

paid the required filing fee for appointing a single member Panel.

On March 16, 2001, in response

to a "Request for Verification" it received from the Center, the Registrar

provided a Verification Response which stated, in pertinent part, that: (i)

it is the registrar of the domain name <pier2imports.com>; (ii) "Raymond

E Farr JR :-)" is the registrant of the domain name in issue with a listed

mailing address of 19383 La Guardia St., Rowland Hts., California 91748, USA;

(iii) the Registrar did not receive a copy of the Complaint; and (iv) the

domain name is currently in "active" status.

Although the Registrar

indicated in its Verification that it had not received the Complaint from the

Complainants, the Complainants certified in the Complaint that a copy of the

Complaint was sent to the Registrar by e-mail. Based upon this statement, the

Center found the Complaint to be in compliance with the formal requirements

of ICANN’s Uniform Domain Name Dispute Resolution Policy ("Policy"),

ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"),

and WIPO’s Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy ("Supplemental Rules").

On March 19, 2001, the

Center sent a "Notification of Complaint and Commencement of Administrative

Proceeding" ("Notification") and the Complaint to the Respondent

at the e-mail addresses, postmaster@pier2imports.com and rayefarr@aol.com, and

to the postal address and facsimile number listed in the domain name registration.

Copies of the Notification and Complaint were also sent to the Registrar, ICANN

and the Complainants. The Center did not receive error messages when the Notification

and Complaint were sent to the above-mentioned e-mail addresses and facsimile

number listed in the domain name registration. The Center did receive a notice

from the courier service for non-delivery of the Notification and Complaint

to the postal address listed in the domain name registration.

On April 11, 2001, after

the twenty-day period had expired as required by paragraph 5(a) of the

Rules and no response from the Respondent was received, the Center sent a "Notification

of Respondent Default" to the Respondent by e-mail with a copy to the Complainants.

On April 20, 2001, the

Center invited the undersigned Panelist to serve as a single member panel in

this proceeding. On April 23, 2001, the Panelist submitted a "Statement

of Acceptance and Declaration of Impartiality and Independence" with the

Center. On April 26, 2001, the Center sent a "Notification of Appointment

of Administrative Panel and Projected Decision Date" by e-mail to the parties

notifying them that an Administrative Panel consisting of a single Panelist

had been appointed in the proceeding.

Based upon a request from

the Panelist, the Center sent Administrative Panel Procedural Order No. 1 on

May 8, 2001, to the parties requesting further information concerning the Respondent's

Website and Complainants' notice to the Respondent of their rights in the domain

name in issue. On May 11, 2001, the Complainants submitted Complainants' Response

to Administrative Panel Procedural Order No. 1 ("Complainants' Response") to

the Center. No response was received from the Respondent in response to the

Panelist’s request.

Having reviewed the entire

record submitted for this proceeding, the Panelist concurs with the Center's

finding that the Complaint is in compliance with the Policy, Rules and Supplemental

Rules and finds that the panel was properly constituted and appointed. The Panelist

also finds that the Center has discharged its responsibility under paragraph 2(a)

of the Rules "to employ reasonably available means calculated to achieve

actual notice to Respondent" of this proceeding and that the Respondent

is in default for failing to file a response to the Complaint or to the Administrative

Panel Procedural Order No. 1. The Panelist shall therefore draw inferences from

the Respondent's defaults as the Panelist considers appropriate based upon paragraph

14(b) of the Rules and shall issue a decision based on the Complaint, the Complainants'

Response, the Policy, the Rules and the Supplemental Rules.

4. Factual Background

The Complaint is based

on the mark PIER 1 IMPORTS registered with the U.S. Patent and Trademark Office.

In support of the Complaint, the Complainants rely on the following U.S. registrations:

PIER 1 IMPORTS, Reg. No.

948,076 (first use and first use in commerce 8/65; issued 11/28/72) for retail

gift store services;

PIER 1 IMPORTS, Reg. No.

1,620,518 (first use and first use in commerce 11/24/66; issued 10/30/90) for

retail store services in the field of home furnishings, house-hold utensils

and decorative items, toys and clothing;

PIER 1 IMPORTS FOR A CHANGE,

Reg. No. 1,907,947 (first use and first use in commerce 8/1/93; issued 7/25/95)

for retail store services in the fields of furniture, decorative home furnishings,

dining and kitchen goods, textiles, clothing, jewelry and fashion accessories;

PIER 1 IMPORTS (stylized),

Reg. No. 2,228,300 (first use and first use in commerce 1/85; issued 3/2/99)

for retail store services in the fields of furniture, decorative home furnishings,

dining and kitchen goods, textiles, toys and gifts;

PIER 1 IMPORTS (stylized),

Reg. No. 2,225,971 (first use and first use in commerce 1980; issued 2/23/99)

for retail store services in the fields of furniture, decorative home furnishings,

dining and kitchen goods, textiles, toys and gifts; and

PIER 1 IMPORTS (stylized),

Reg. No. 2,225,972 (first use and first use in commerce 1980; issued 2/23/99)

for retail store services in the fields of furniture, decorative home furnishings,

dining and kitchen goods, textiles, toys and gifts.

The Complainants provided

copies of certified copies for three of the above registrations and provided

registration information for the other three registrations in Annex 3 to the

Complaint to show the Complainants' ownership of these registrations.

A search result from a

query of the Registrar's Whois database shows that the domain name <pier2imports.com>

was registered on August 2, 2000 to the Respondent and there is currently a

corresponding Website accessible at this domain name.

A search result from a

query of Network Solutions, Inc.'s Whois database shows that the domain name

<pier1imports.com> was registered on August 8, 1997 to Pier 1 Licensing,

Inc., and that there is a corresponding Website located at this domain name.

5. Parties’ Contentions

Complainants

The Complainants assert

that Pier 1 Imports, Inc., is one of North America’s largest specialty retailers

of imported decorative home furnishings, gifts and related items with over 800

stores in 48 states as well as Canada, Puerto Rico, the United Kingdom, Mexico

and Japan as of fiscal 2000 year-end. The Complainants assert that Pier 1 Imports,

Inc., directly imports merchandise from over 60 countries around the world and

designs proprietary assortments that become exclusive Pier 1 Imports offerings

and that it reported record sales of $1,231.1 million for fiscal 2000. The Complainants

assert that the stock of Pier 1 Imports, Inc., is publicly traded on NASDAQ

under the symbol PIR and that Pier 1 Licensing, Inc., an indirect subsidiary

of Pier 1 Imports, Inc., owns all of the company's marks.

The Complainants assert

that they and their predecessors-in-interest have continuously used the trade

name and mark PIER 1 IMPORTS in interstate commerce throughout the United States

since August 1965 and own the six U.S. registered marks mentioned above.

The Complainants assert

that the domain name <pier2imports.com> is virtually identical to the

Complainants’ mark PIER 1 IMPORTS, but for the substitution of the number "2"

for the number "1." The Complainants assert that the use of the PIER

1 IMPORTS mark long predates any use or registration of the domain name in issue

by the Respondent of the <pier2imports.com> domain name.

The Complainants assert

that the Respondent has no legitimate interest in the <pier2imports.com>

domain name. The Complainants assert that the Respondent is not making a legitimate

noncommercial or fair use of the <pier2imports.com> domain name nor has

the Respondent been a licensee of the Complainants or received any permission

or consent to register the domain name in issue. The Complainants also state

that they did not make any prior attempts to contact the Respondent prior to

the commencement of this proceeding.

The Complainants assert

that the <pier2imports.com> domain name was registered by the Respondent

primarily for the purpose of disrupting the business of a competitor (the Policy,

¶4(b)(iii)) because the domain name resolves to a Website that claims that Pier 2

Imports is a national distributor of unique and affordable gifts ranging from

home furnishings, toys and gifts to fashionable jewelry. The Complainants allege

that, assuming the information contained in the Respondent’s Website is true

and is not a pretext, the Respondent is a competitor of the Complainants and

that the Respondent registered and is using the <pier2imports.com> domain

name primarily to disrupt the Complainants’ business.

In the alternative, the

Complainants allege that by using the <pier2imports.com> domain name,

the Respondent has intentionally attempted to attract, for commercial gain,

Internet users to its Website or other online location, by creating a likelihood

of confusion with the Complainants’ mark as to the source, sponsorship, affiliation,

or endorsement of the Respondent’s Website or location or of a product or service

on the Respondent’s Website or location (the Policy, ¶4(b)(iv)). As previously

stated, the Complainants allege that the <pier2imports.com> domain name

resolves to a Website that claims that Pier 2 Imports is a national distributor

of unique and affordable gifts ranging from home furnishings, toys and gifts,

to fashionable jewelry. The Complainants allege that, assuming that the information

contained in the Respondent’s Website is true and is not a pretext, the Respondent

has intentionally attempted to attract, for commercial gain, Internet users

to its Website or other online location, by creating a likelihood of confusion

with the Complainants’ PIER 1 IMPORTS mark. The Complainants submitted copies

of pages of the Respondent's Website as evidence of the Respondent conducting

business as a national distributor of unique affordable gifts ranging from home

furnishings, toys and gifts to fashionable jewelry. The Complainants assert

that this evidence reflects that the Respondent is intentionally attempting

to attract for commercial gain Internet users to its Website and specifically

cites for support a Web page from the Respondent's Website that shows home furnishing

products being offered for sale.

Respondent

No responses were received

from the Respondent with respect to this proceeding.

6. Discussion and Findings

The Proceeding -

Three Elements

Paragraph 4(a) of the Policy

states that the domain name holder is to submit to a mandatory administrative

proceeding in the event that a third party complainant asserts to an ICANN approved

dispute resolution service provider that:

(i) the domain name

holder’s domain name is identical or confusingly similar to a trademark or service

mark in which the complainant has rights ("Element (i)"); and

(ii) the domain name

holder has no rights or legitimate interests in respect of the domain name ("Element

(ii)"); and

(iii) the domain name

of the domain name holder has been registered and is being used in bad faith

("Element (iii)").

The Panelist can only rule

in a complainant’s favor after the complainant has proven that the above-listed

elements are present.

Element (i) - Domain Name

Identical or Confusingly Similar to the Mark

A complainant in a proceeding

brought under the Policy must have rights in the relevant trademark or service

mark cited in that proceeding. In the present proceeding, the service mark documentation

provided by the Complainants only shows Pier 1 Licensing, Inc., as being the

listed owner of four of the six cited U.S. registrations. The Complainants did

not provide an explanation in the Complaint as to the relationship between the

Complainants and Pier 1 Imports Holdings, Inc., the listed owner in the documentation

for U.S. Registration Nos. 948,076 and 1,620,518. Online searching concerning

these registrations, however, verified that the Complainant, Pier 1 Licensing,

Inc., is the last listed owner of these registrations with the U.S. Patent and

Trademark Office. The Panelist therefore finds this sufficient to conclude that

the Complainants have rights in the cited marks, particularly, the mark PIER

1 IMPORTS.

A comparison of the second-level

domain "pier2imports" of the domain name in issue with the Complainants’ mark

PIER 1 IMPORTS shows that the only difference between the second-level domain

and the mark is the substitution of the number "2" for the number "1". Such

a substitution does not prevent the domain name in issue from being considered

confusingly similar to the Complainants’ mark PIER 1 IMPORTS. Based upon the

evidence submitted and the uncontested assertions made by the Complainants,

the Panelist therefore finds that Element (i) has been satisfied based upon

the domain name being confusingly similar to the Complainants’ mark.

Element (ii) - Rights or

Legitimate Interests in the Domain Name

Paragraph 4(c) of the Policy

sets out circumstances, in particular but without limitation, which, if found

by the Panelist to be proven based on the evaluation of all of the evidence

presented, can demonstrate the domain name holder’s rights to or legitimate

interests in the domain name. These circumstances include:

(i) before any notice

to the holder of the dispute, the holder’s use of, or demonstrable preparations

to use, the domain name or a name corresponding to the domain name in connection

with a bona fide offering of goods or services; or

(ii) the domain name

holder (as an individual, business, or other organization) has been commonly

known by the domain name, even if the holder has acquired no trademark or service

mark rights; or

(iii) the domain name

holder is making a legitimate noncommercial or fair use of the domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark or service mark at issue.

No evidence has been presented

that at any time have the Complainants ever assigned, granted, licensed, sold,

transferred or in any way authorized the Respondent to register or use the mark

PIER 1 IMPORTS in any manner. Further, no evidence has been presented that the

Respondent is commonly known by the domain name in issue, as a business, organization

or otherwise, or could be considered as making any type of legitimate noncommercial

or fair use of the domain name.

In addition, no evidence

has been presented that, before any notice to the Respondent of this dispute,

the Respondent had been using or was making demonstrable preparations to use

the domain name in connection with any type of bona fide offering of goods or

services. Rather the evidence provided by the Complainants shows that the Respondent

is diverting Internet users, who misspell or make a typographical error when

entering the Complainants’ domain name <pier1imports.com>, to a Website

entitled "Pier2imports is a national distributor so why by [sic] retail" that

offers for sale "unique affordable gifts ranging from home furnishings,

toys and gifts to fashionable jewelry." The Respondent’s offering of such

goods and services for sale under a domain name that is confusingly similar

to the Complainants’ mark coupled with that domain name directing Internet users

to a site that furthers confusion suggests to those users that they are purchasing

goods and services from the Complainants. Reviewing the evidence submitted and

the findings in their entirety, the Panelist cannot find that such constitutes

a bona fide offering of goods or services for sale by the Respondent. Accordingly,

the Panelist concludes that the Respondent has failed to establish rights or

legitimate interests in the domain name and that Element (ii) has been satisfied.

Element (iii) - Domain

Name Registered and Used in Bad Faith

Paragraph 4(b) of the Policy

states that evidence of registration and use in bad faith by the domain name

holder includes, but is not limited to:

(i) circumstances indicating

that the holder has registered or has acquired the domain name primarily for

the purpose of selling, renting, or otherwise transferring the domain name registration

to the complainant who is the owner of the trademark or service mark or to a

competitor of that complainant, for valuable consideration in excess of the

holder’s documented out-of-pocket costs directly related to the domain name;

or

(ii) the holder has

registered the domain name in order to prevent the owner of the trademark or

service mark from reflecting the mark in a corresponding domain name, provided

that the holder has engaged in a pattern of such conduct; or

(iii) the holder has

registered the domain name primarily for the purpose of disrupting the business

of a competitor; or

(iv) by using the domain

name, the holder has intentionally attempted to attract, for commercial gain,

Internet users to the holder’s website or other online location, by creating

a likelihood of confusion with the complainant's mark as to the source, sponsorship,

affiliation, or endorsement of your website or location or of a product or service

on the holder’s website or location.

Though the Complainants

assert that the domain name was registered by the Respondent "’primarily

for the purpose of disrupting the business of a competitor’ (the Policy, ¶4(b)(iii)),"

the Complainants have not provided any explanation concerning the Respondent's

business or evidence to support such an assertion. Therefore, the Complainants

may not rely on Paragraph 4(b)(iii) of the Policy in their attempt to prove

bad faith.

The Complainants also assert

that the Respondent by using the domain name in issue has intentionally attempted

to attract, for commercial gain, Internet users to his Website or other online

location, by creating a likelihood of confusion with the Complainants’ mark

as to the source, sponsorship, affiliation, or endorsement of the Respondent’s

site or location or of a product or service on the Respondent’s site or location.

Based upon the findings and evidence submitted, the Panelist concludes that

the Respondent registered the domain name in issue primarily for the purpose

of intercepting Internet users who, when attempting to access the Complainants'

Website, mistakenly or inadvertently misspell or make a typographical error

when entering the Complainants' domain name <pier1imports.com>. The evidence

further supports a finding that the Respondent registered and is using the domain

name in issue to create initial interest confusion among Internet users who

visit the Respondent's site as to the source, sponsorship, affiliation or endorsement

of the site and the products and services offered thereon for his apparent commercial

gain. Accordingly, when considering this evidence and findings in their entirety,

the Panelist concludes that the Respondent registered and is using the domain

name in issue in bad faith and that Element (iii) has been satisfied.

7. Decision

The Panelist concludes

that: (i) the domain name <pier2imports.com> is confusingly similar to

the Complainants’ mark PIER 1 IMPORTS; (ii) the Respondent has no rights or

legitimate interests in the domain name; and (iii) the Respondent has registered

and is using the domain name in bad faith. The Panelist therefore requires that

the registration of the domain name <pier2imports.com> be transferred

to the Complainant, Pier 1 Licensing, Inc.

Marylee

Jenkins

Sole Panelist

Dated: June

22, 2001

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