A.B.C. Carpet Co., Inc. v. Tom Boltz

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

A.B.C. Carpet Co., Inc. v. Tom Boltz and abccarpetandhome.org

Case No. D2001-0531

1. The Parties

Complainant, A.B.C. Carpet Co., Inc. ("ABC"), is a New York corporation

with its principal place of business in New York, New York, U.S.A.

Respondent, Tom Boltz, appears to be a resident of Dickson, Tennessee, U.S.A.

Respondent abccarpetandhome.org appears to be a fictitious entity, and also

appears to be nothing more than one of the contested domain names inserted in

the domain name application template as the owner. The registrar’s WhoIs database

information shows the same contact information and address for both Respondents.

2. The Domain Name and Registrar

The domain names at issue in this proceeding are <abccarpetandhome.net>

and <abccarpetandhome.org>. Both domain names are registered with Network

Solutions, Inc. ("NSI") of Herndon, Virginia.

3. Procedural History

On April 11, 2001, ABC’s Complaint was submitted in hardcopy to the WIPO Arbitration

and Mediation Center (the "Center") for decision in accordance with

the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet

Corporation for Assigned Names and Numbers ("ICANN") on August 26,

1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution

Policy, approved by ICANN on October 24, 1999 (the "Rules") and the

WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the

"Supplemental Rules"). See Rules, Para. 3(b). An electronic

copy of the Complaint was received by the Center on April 25, 2001.

The Complaint was filed in accordance with the requirements of the Rules and

Supplemental Rules, payment was properly made, and ABC has complied with the

formal filing requirements. On April 25, 2001, NSI verified that it is the registrar

for the two-contested domain names, that Version 5.0 of its service agreement

with Respondents is in effect, and that the contested domain names are in active

status.

In its Complaint, ABC states that a copy of the Complaint, together with the

cover sheet as prescribed by the Supplemental Rules, was sent to Respondents

on April 9, 2001, by Federal Express. Complainant’s counsel has not advised

the Center that the Federal Express delivery was unsuccessful. Thus, the Panel

deems the Complaint to have been properly served. Rules 2(b)(ii) and 3(b)(xii).

Additionally, as advised by the Center, Respondents were notified of the filing

of ABC’s Complaint and the commencement of this proceeding by e-mail to the

contact address listed in the Registrar’s database, to "postmaster"

at the domain names in dispute, to the technical contact for the disputed domain

names and by courier to the postal address listed in the Registrar’s WhoIs database.

While the Center’s e-mails to the "postmaster" e-mail addresses were

returned as undeliverable, there is no indication that the e-mail transmissions

to the administrative and technical contacts did not reach their destinations.

Additionally, there is no indication that the courier delivery of the Complaint

and attachments to the address listed in the Registrar’s WhoIs database for

the disputed domain names did not reach its intended destination. The Panel,

therefore, deems the Complaint and Commencement Notification to have been properly

served on Respondents by the Center. Rules 2(a)(i)(ii)(iii) and 4(a).

It also appears that a response was not timely filed. On May 16, 2001, a Notice

of Default was sent by the Center to the parties.

In its Complaint, ABC elected to have this proceeding decided by a single member

panel. On May 21, 2001, the Center contacted the undersigned to solicit interest

in being the sole panelist who would decide this matter. After investigating

and clearing potential conflicts of interest, the undersigned notified the Center

on May 22, 2001, of the ability and availability to serve as the sole panelist

for this matter. Also on May 22, 2001, the undersigned submitted to

the Center a Statement of Acceptance and Declaration of Impartiality and Independence.

Thus, the administrative panel for this proceeding was properly constituted.

On May 23, 2001, the Center forwarded to the undersigned the case file for

this proceeding. On May 25, 2001, a Notice of Appointment of Administrative

Panel and Projected Decision Date was sent by the Center to the Parties. The

Center notified the parties that the undersigned would be the sole Panelist

to decide this matter.

4. Factual Background

For more than 100 years, through a predecessor in interest, ABC states that

it has been engaged in the fine carpet and home furnishings business. Complainant,

through its predecessor in interest, claims use of the mark ABC in connection

with offering its retail services since 1897. ABC states that its revenues in

1999 and 2000 totaled over $160 million, each year. Complainant has used the

mark ABC CARPET & HOME in connection with its retail services since February

1995. ABC asserts that it has spent, over the years, millions of dollars to

advertise and market its services in connection with its ABC and ABC CARPET

& HOME service marks. Complainant also says that it has expended considerable

funds to promote its products and services under the ABC and ABC CARPET &

HOME service marks on the Internet at its web site. While this matter was pending

for decision, the Panel reviewed ABC’s web site, which was accessed through

the URL http://abchome.com. ABC’s web site provides information about its stores’

offerings of fine rugs, broadloom, antiques, furniture, textiles and various

imported items for the home.

Complainant owns numerous U.S. Service Mark Registrations for the marks ABC

and ABC CARPET & HOME. Copies of ABC’s service mark registrations were attached

to its Complaint.

On December 5, 2000, and January 25, 2001, Respondent registered with

NSI the domain names <abccarpctandhome.net> and <abccarpetandhome.org>

respectively. While this matter was pending for decision, the Panel reviewed

the web sites accessed through the URLs http://www.abccarpetandhome.net and

http://www.abccarpetandhome.org. These web sites presently display a generic

NSI graphic indicating that they are "under construction."

According to ABC, on May 7, 1998, Mehdi Naeini registered the domain name <abcarpetandhome.net>

with NSI. On August 17, 2000, after unsuccessful negotiation concerning the

transfer of the domain name from Mr. Naeini to ABC, ABC filed suit in the United

States District Court for the Eastern District of New York against Mr. Naeini.

The case is styled A.B.C. Carpet Co., Inc., A.B.C. Home Furnishings, Inc.,

and A.B.C. Oriental Carpet, Inc., v. Mehdi Naeini, Civil Action No. 00 CIV

4882. Complainant states that the lawsuit remains pending. In September 2000,

Mr. Naeini advised ABC’s attorneys that he "gave back" the domain

name to NSI. As late as November 15, 2000, however, NSI’s WhoIs database still

listed Mehdi Naeini as the domain name registrant. Making a routine check in

December 2000, ABC discovered that Mr. Boltz was listed as the new registrant.

ABC states that Mr. Boltz registered the domain name <abccarpetandhome.net>

after Mehdi Naeini had been sued for registering this same domain name.

Further, Mr. Boltz registered the domain name within days of the date

it was made available by NSI after having been relinquished by Mehdi Naeini.

After discovering these facts, an attorney for ABC called Mr. Boltz and left

a message identifying herself. The parties appear to have exchanged telephone

messages after this initial call, but ABC characterizes the exchange as an initial

eagerness on Mr. Boltz’s part to return ABC’s first call. Due to Respondent’s

default, there is no evidence to dispute this characterization. When the parties

eventually spoke directly, the attorney for ABC stated that ABC protested Mr.

Boltz’s registration of the <abecarpetandhome.net> domain name. Thereafter,

attorneys for ABC were unable to reach Mr. Boltz on several occasions.

On January 22, 2001, ABC sent a certified letter to Mr. Boltz demanding that

he cease and desist use of the <abccarpetandhome.net> domain name and

transfer it to ABC. That letter was not accepted by Mr. Boltz and was returned.

On January 24, 2001, and again on January 25, 2001, ABC’s attorney sent e-mails

to Mr. Boltz repeating ABC’s demands. On January 31, 2001, attorneys for ABC

again forwarded the cease and desist letter by certified mail to Mr. Boltz.

Delivery of the letter to Mr. Boltz on February 5, 2001 was confirmed.

To date, except to register the additional domain name <abccarpetandhome.org>

on January 25, 2001, Mr. Boltz has failed to respond to ABC’s inquiries.

Further, says ABC, Mr. Boltz registered the domain name <abccarpetandhome.org>

three days after he learned of Complainant’s cease and desist letter concerning

the domain name <abccarpetandhome.net>. Although ABC’s January 22, 2001,

certified letter was returned unclaimed, ABC states that its attorneys had advised

Mr. Boltz of the content of the letter by telephone. As stated, the same letter

was sent again to the same address, and was picked up by Mr. Boltz on February

5, 2001.

5. Parties’ Contentions

A. Complainant

Complainant states that the above facts support the factors required by Para.

4(a) of the Policy, and as such the registrations for the <abccarpetandhome.net>

and <abccarpetandhome.org> should be transferred to ABC, namely: (i) the

domain names are identical or confusing similar to the ABC and ABC CARPET &

HOME marks; (ii) Mr. Boltz has no rights or legitimate interest in the

domain names; and (iii) Mr. Boltz has registered and is using the

domain names in bad faith.

Because Mr. Boltz has not used domain names for the operation of active web

sites, ABC contends that the only real value of such domain names would be for

Mr. Boltz eventually either: (i) to post his own web site at the domain

names with the intent of improperly attracting Internet users seeking information

about ABC; (ii) to sell the domain names to another entity that has the same

intent (such as cybersquatting upon domain names containing famous trademarks

that are often used to divert traffic to pornography-related sites); or (iii)

to sell the domain names to ABC for a profit.

ABC contends that the circumstances surrounding Mr. Boltz’s initial contact

with ABC’s attorney and then his refusal to further respond strongly suggest

that Mr. Boltz purposefully refused to sign for the January 22, 2001, letter,

and registered <abccarpetandhome.org> with full knowledge of ABC’s assertion

of its rights in its marks. These circumstances further suggest, says ABC, that

Mr. Boltz expected an offer to purchase the <abccarpetandhome.net> domain

name from him, hence his eager return of the first phone call, followed by evasiveness

and silence after he learned the purpose of the first phone call, and then his

audacious registration of yet another domain name incorporating ABC’s service

mark in toto.

ABC requests that the <abccarpetandhome.net> and <abccarpetandhome.org>

domain names be transferred to it.

B. Respondent

As Respondents have failed to respond to the Complaint, the Panel does not

have the benefit of their point of view.

6. Discussion and Findings

As an initial matter, the Panel must clarify who the "Respondents"

are in this proceeding. From a review of the registrar’s WhoIs information for

the contested domain names, Tom Boltz is the listed registrant for the domain

name <abccarpetandhome.net>. As stated in Section 1 of this opinion, Respondent

abccarpetandhome.org is a fictitious entity, and appears to be nothing more

than the contested domain name <abccarpetandhome.org> inserted in the

domain name application template as the owner. The address and contact information

for the two domain names is identical. Respondents, herein, are treated as joint

entities acting in concert.

Transfer of the contested domain names will be ordered if ABC has shown that

the following three elements are present:

(i) the contested domain names are identical or confusingly similar to trademarks

or service marks in which ABC has rights; and

(ii) the domain name registrants have no rights or legitimate interests in

respect of the domain name; and

(iii) the contested domain names have been registered and are being used in

bad faith.

In an administrative proceeding pursuant to the Policy, Rules and Supplemental

Rules, the Complainant must prove that each of these three elements are present.

Policy, Para. 4(a).

The following circumstances, in particular but without limitation, if found

by the Panel to be present, shall be evidence of the registration and use of

a domain name in bad faith:

(i) circumstances indicating that the registrant registered or 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 registrant’s documented out-of-pocket costs directly related

to the domain name; or

(ii) the registrant 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 it is shown that the registrant has engaged in a

pattern of such conduct; or

(iii) the registrant registered the domain name primarily for the purpose

of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted

to attract, for commercial gain, Internet users to his web site or other on-line

location, by creating a likelihood of confusion with the complainant's mark

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

web site or location or of a product or service on his web site or location.

Policy, Para. 4(b).

On the other hand, any of the following circumstances, in particular but without

limitation, if found by the Panel to be proved based on its evaluation of all

evidence presented, shall demonstrate the registrant’s rights or legitimate

interests to the domain name:

(i) before any notice to the registrant of the dispute, his 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 registrant (as an individual, business, or other organization) has

been commonly known by the domain name, even if the registrant has acquired

no trademark or service mark rights; or

(iii) the registrant 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. Policy, Para. 4(c

).

Respondents had the opportunity to respond and present evidence that they have

rights or legitimate interests in respect of the contested domain names. They

chose not to do so. ABC is not entitled to relief simply by reason of the default,

however, but the Panel can and does draw evidentiary inferences from the failure

to respond. See Miles D. Ltd. d/b/a Jazz Alley v. Shosha, Case

No. AF-00318 (eResolution, August 29, 2000, citing, Royal Bank of

Canada v. D3M Domain Sales, Case No. AF-0147 (eResolution, May 1, 2000).

For example, Paragraph 14 of the Rules provides that:

"(a) In the event that a Party, in the absence of exceptional circumstances,

does not comply with any of the time periods established by these Rules or the

Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply

with any provision of, or requirement under, these Rules or any request from

the Panel, the Panel shall draw such inferences there from as it considers appropriate."

Thus, ABC’s rights in the marks ABC and ABC CARPET & HOME are demonstrated

by its numerous United States federal registrations for these marks, the uncontested

statements of its long use of these marks, and the use made of the marks on

ABC’s web site. The Panel also finds that the contested domain names are confusingly

similar to service marks in which ABC has rights. See, Arthur Guinness

Son & Co. (Dublin) Ltd. v. Tim Healy/BOSTH. WIPO

Case No. D2001-0026 (March 23, 2001) (finding confusing similarity despite

addition of other words to Complainant’s mark); McKinsey & Company, Inc.

and McKinsey Holdings, Inc. v. Jerome Zimmermann, WIPO

Case No. D2001-0009 (March 22, 2001) (finding several variants of mark

either identical or confusingly similar); EFG Bank European Financial Group

SA v. Jacob Foundation, WIPO Case No.

D2000-0036 (March 22, 2000) (finding variations of "EFG Private Bank"

confusingly similar to Complainant’s trademark); Fossil Inc. v. NAS,

Case No. 1000092525 (NAF February 23, 2000) (finding the domain name <fossilwatch.com>

confusingly similar to Complainant’s "Fossil" trademark because addition

of generic term "watch" identifies Complainant’s product).

Respondents have not come forward with evidence or argument in an effort to

show that they have any rights or legitimate interests in respect of the contested

domain names. Web pages that resolve to URLs associated with each of the contested

domain names contain nothing more than standard NSI "under construction"

pages. The Panel, therefore, finds that Respondents do not have any demonstrated

rights or legitimate interests in respect of these two domain names.

The Panel now must decide whether ABC has come forward with sufficient evidence

that the contested domain names have been registered and are being used in bad

faith. The Panel finds that such circumstances have been shown.

The circumstances here indicate that Respondents registered or acquired the

domain names primarily for the purpose of selling, renting, or otherwise transferring

the domain name registrations to ABC, who is the owner of the ABC and ABC CARPET

& HOME marks, or to a competitor of ABC, for valuable consideration in excess

of Respondents’ documented out-of-pocket costs directly related to the domain

names. Policy, Para. 4(b)(i). The eagerness with which Mr. Boltz returned

ABC’s attorney’s first telephone call, followed by Mr. Boltz’s failure to answer

phone calls or e-mails after he learned that ABC objected to Respondent’s registration

of the domain names, absent evidence to the contrary, supports the supposition

that Mr. Boltz had hoped to sell the names for a handsome profit.

Respondents have registered the contested domain names in order to prevent

ABC, as owner of the ABC and ABC CARPET & HOME marks, from reflecting the

marks in corresponding domain names; and by registering two such domain names

under the circumstances shown here Respondents have engaged in a pattern of

such conduct. Policy, Para 4(b)(ii).

By registering the contested domain names, and allowing them to resolve to

"under construction" web pages, Respondents have intentionally attempted

to attract, for commercial gain, Internet users to their web sites or other

on-line locations, by creating a likelihood of confusion with the ABC’s marks

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

sites or locations. Policy, Para. 4(b)(iv).

Further, the registration of the <abccarpetandhome.net> and <abccarpetandhome.org>

domain names without their resolution to active web sites also constitutes "use"

of these domain names in bad faith. Even completely dormant domain names can

satisfy the use requirement of Para. 4(b) of the Policy. See, Telstra

Corp. Ltd. v. Nuclear Marshmallows, WIPO

Case No. D2000-0003, at § 7.9 (February 18, 2000). Based upon the language

of the Policy and its legislative history, the Telstra panel concluded

that "inaction" (e.g., passive holding) in relation to a domain

name registration can, in certain circumstances, constitute a domain name being

used in bad faith. Under the circumstances described in the Complaint and supporting

documents, the Panel finds that the domain names <abccarpetandhome.net>

and <abccarpetandhome.org> were registered and are being used in bad faith.

The Panel also finds as additional evidence of bad faith: (i) Respondents’

refusal to communicate with ABC’s attorneys after being notified of ABC’s rights

and its objection to the registration of the <abccarpetandhome.net> domain

name, and (ii) the false registrant name in which the <abccarpetandhome.org>

domain name was registered.

7. Decision

For the foregoing reasons, the Panel directs that the domain names <abccarpetandhome.net>

and <abccarpetandhome.org> be transferred to Complainant, A.B.C. Carpet

Co., Inc.

Jonathan Hudis

Panelist

Dated: June 1, 2001

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