Ross-Simons, Inc. v. Citynet Network

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Ross-Simons, Inc. v. Citynet Network

Case No. D2003-0971

1. The Parties

The Complainant is Ross-Simons, Inc., United States of America ("USA"). The Respondent is Citynet Network, , USA.

2. The Domain Names and Registrar

The disputed domain names are <rossimon.net>, <wwwrosssimon.com> and

<wwwrosssimons.com>. All are registered with eNom, Inc. of the United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 8, 2003. On December 9, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. The Center obtained verification confirming for each domain name that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally

notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2004.

In accordance with the Rules, paragraph 5(a), the due date for Response was

January 6, 2004. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on January 8, 2004.

The Center appointed Jordan S. Weinstein as the sole panelist in this matter

on January 15, 2003. The Panel finds it was properly constituted.

The Panel has submitted the Statement of Acceptance and Declaration of Impartiality

and Independence, as required by the Center to ensure compliance with the Rules,

paragraph 7.

4. Factual Background

The Plaintiff sells jewelry, tableware, gifts, collectibles, home décor

and related items through retail and outlet stores as well as through mail order

and on-line catalogs under the name ROSS-SIMONS. Complainant owns U.S. Trademark

Registration No. 1,317,429, issued on January 29, 1985 for the mark

ROSS-SIMONS in connection with retail stores and mail-order services specializing

in jewelry, china, silver and gift items. The registration claims first use

of the mark in commerce in July of 1952. The registration is now incontestable.

Respondent has linked each of its three domain names to websites promoting

the sale of giftware, candle holders and accessories through on-line retail

catalogs named BRIGHTCANDLES.COM and CANDLE SHOWCASE.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has sold fine jewelry, tableware, gifts, collectibles,

home décor and related items under the name ROSS-SIMONS for over fifty

years. Complainant’s items are sold through retail and outlet stores of the

same name, as well as through mail-order and on-line catalogs of the same name.

Complainant asserts that it mails more than sixty-million ROSS-SIMONS catalogs

to consumers each year, and its on-line catalog, located at "www.ross-simons.com",

reaches millions of customers. Complainant asserts that it has built up substantial

value and good will in its ROSS-SIMONS mark and registration, by virtue of its

continuous and exclusive use of the mark since at least as early as 1954. Complainant

asserts it has established a strong customer base and is known throughout its

trading area as a provider of quality jewelry, tableware, collectibles, home

décor and related items, and retail store, mail-order and on-line catalog

services.

Complainant registered the domain name <ross-simons.com> on May 16, 1996

and has operated a website with an on-line catalog from this Internet address

since at least December of that year. Complainant’s registered trademark ROSS-SIMONS

is featured prominently on the website, and has been so featured since the website

was first uploaded in December of 1996. Complainant’s website advertises, promotes

and sells Complainant’s jewelry, tableware, collectibles, home décor

and related items. In addition, the website communicates special events and

promotions to Complainant’s customers, provides customer service information,

and allows customers to create and edit registries for weddings and other special

occasions, and to search the registries of others on the website.

Complainant asserts that Respondent registered the Internet domain names <rossimon.net>,

<wwwrosssimon.com> and <wwwrosssimons.com> in or around April of

2003, with the domain name registrar eNom, Inc. These domain names were registered,

of course, long after Complainant first used and registered its ROSS-SIMONS

mark and domain name. Subsequently, Respondent began using the domain names

<wwwrosssimons.com> and <wwwrosssimon.com> to point to its website

featuring an on-line catalog named BRIGHTCANDLES.COM. About the same time, Respondent

began using the domain name <rossimon.net> to point to a website catalog

named CANDLE SHOWCASE, which advertises and sells a variety of candles, candle

holders, candle accessories and related items. On each of Respondent’s websites,

Respondent advertises and sells a variety of candles, candle holders, candle

accessories and related items. Complainant asserts that the items sold on Respondent’s

BRIGHTCANDLES.COM on-line catalog are virtually identical to or of the same

type of giftware as that featured or sold by Complainant in its on-line catalog,

mail-order catalog and brick and mortar outlets.

Complainant asserts that Respondent’s three domain names <rossimon.net>,

<wwwrosssimon.com> and <wwwrosssimons.com> are confusingly similar

to Complainant’s ROSS-SIMONS registered mark. Complainant asserts that the only

difference between its registered trademark and the Respondent’s domain names

<wwwrosssimon.com> and <wwwrosssimons.com> is the insertion of "www"

in front of Complainant’s registered mark and domain name, and the deletion

of the hyphen and (in one instance) of one of the four s’s in its mark. Complainant

asserts the only differences between its registered mark and Respondent’s domain

name <rossimon.net> are the deletion of two of the four s’s and of the

hyphen.

Complainant asserts that consumers looking for Complainant on the Internet

who mis-type or misspell Complainant’s domain name by typing in one of Respondent’s

domain names instead will not be directed to Complainant, but rather will end

up on one of Respondent’s competing retail websites where Respondent sells its

competing home décor and gift items.

Complainant asserts that Respondent has no right or legitimate interest with

respect to the domain names because these names do not comprise Respondent’s

legal name or a name which is commonly used to identify Respondent. Respondent’s

on-line catalogs, to which consumers are directed by Respondent’s domain names,

are operated under the names CANDLE SHOWCASE and BRIGHTCANDLES.COM, which of

course are not remotely similar to ROSS-SIMONS. Complainant asserts that prior

to notice of this dispute, Respondent did not use the domain names <rossimon.net>,

<wwwrosssimon.com> and <wwwrosssimons.com> or trademarks corresponding

to these domain names in connection with the bona fide offerings of goods or

services; and that Respondent has not made a legitimate non-commercial or fair

use of the domain names. Rather, Complainant asserts that Respondent is using

the domain names <rossimon.net>, <wwwrosssimon.com> and <wwwrosssimons.com>

to divert Internet traffic to Respondent’s websites, where Respondent advertises

and sells competing gift and home décor items. Complainant asserts that

it never authorized, licensed or otherwise permitted Respondent to use Complainant’s

registered mark ROSS-SIMONS or any confusingly similar variation thereof, nor

to apply for or use any domain name comprising or incorporating Complainant’s

registered mark.

Complainant asserts that Respondent registered and used its domain name in

bad faith because Respondent is "typosquatting"; i.e. registering

domain names which are common misspellings of a mark to which another party

has rights; because Respondent has linked those "typosquatting" domain

names to website which sell products competing with and virtually identical

to Complainant’s products; and because Respondent has registered several other

"typosquatting" domain names confusingly similar to famous or well-known

trademarks of others, including "ferrari.net", <4ebay.com>,

and others.

Finally, Complainant asserts that Respondent has acted in bad faith by providing

false and misleading contact information for its three domain names, lacking

a street address, and listing an incomplete fax number and a telephone number

that is not in service.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, and therefore

is in default. In light of the default this panel may draw such inferences from

the default as it considers appropriate (Rule 14(b)). Nevertheless the panel

shall proceed to a decision on the Complaint (Rule 14(a)), based on the statements

and documents submitted and in accordance with the UDRP Policy and Rules (Rule

15(a)).

6. Discussion and Findings

A. Applicable Policy Provisions

The UDRP Policy requires Complainant to prove each of the following three elements

in order to prevail in this proceeding:

1) the domain name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights; and

2) the 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.

Policy, Section 4(a)

It is not sufficient to prevail that a Complainant prove only registration

in bad faith; rather, the Complainant must prove both registration and use in

bad faith. See World Wrestling Federation Entertainment, Inc. v. Bossman,

WIPO Case No. D99-0001; Robert Ellenbogen v. Mike Pearson, WIPO

Case No. D2000-0001.

However, the UDRP Policy states that the following circumstances shall be evidence

of the registration and use of a domain name in bad faith:

i) Circumstances indicating that [the Registrant has] 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 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 [the Registrant has] engaged in a pattern of such

conduct; or

iii) [the Registrant has] 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 [its] website 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 [its] website

or location or of a product or service on [its] website or location.

Policy, Section 4(b). These circumstances are non-inclusive, and the panel

may consider other circumstances as constituting registration and use of a domain

name in bad faith. Id.

The Respondent may demonstrate rights or legitimate interests to the domain

name by any of the following, without limitation:

i) Before any notice to you of the dispute, your 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) You, as an individual, business, or other organization have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

iii) You are making a legitimate non-commercial or fair use of the domain name,

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

the trademark or service mark at issue.

Policy, Section 4(c).

B. Opinion of the Panel

1. Is the domain name identical or confusingly similar to a trademark in which

Complainant has rights?

Each of the domain names is confusingly similar to Complainant’s registered

trademark and domain name. Complainant points out correctly that addition of

the letters "www" to the beginning of a registered mark is clear evidence

of typosquatting, seeking to prey upon less careful typists who neglect to type

the dot after these characters. Deletion of the hyphen between the two words

of Complainant’s mark is of no trademark significance, See Arrow Fastener

Co. v. The Stanley Works, 35 USPQ2d 1449, 1455 (2d Cir. 1995); Ticketmaster

Corporation v. Cecil Spafford, WIPO Case

No. D2002-0944 (November 22, 2002) and decisions cited therein,

and deletion of one of the four s’s in the middle or at the end of Complainant’s

mark barely changes the appearance and makes no change whatsoever in the pronunciation

of the mark. Here again, it would be completely understandable for an Internet

user to mistype the Complainant’s mark by deleting one of the three s’s which

appear in seriatim when the two words of its mark are combined. See

The Sports Authority Michigan, Inc. v. Internet Hosting, NAF Case No. 124516

(<wwwsportsauthority.com> and <wwwthesportsauthority.com> found

confusingly similar to THE SPORTS AUTHORITY); Bayer Akiengesellschaft v.

Yongho Ko, WIPO Case No. D2001-0205

(April 6, 2001) (<wwwbayer.com> found confusingly similar to

BAYER); Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO

Case No. D2001-1199 (November 28, 2000) (<wwwpfizer.com>

found confusingly similar to PFIZER).

2. Does Respondent have no rights or legitimate interest in the domain name?

Coupled with proper inferences arising from Respondent’s default, Complainant’s

assertions provide adequate evidence that Respondent has no rights or legitimate

interest in the domain names <rossimon.net>, <wwwrosssimon.com>,

and <wwwrosssimons.com>. Respondent is not known by the domain names,

and offers its candles, candle holders and related items under the names BRIGHTCANDLES.COM

and CANDLE SHOWCASE. Respondent has not used the domain names in any legitimate

effort to render its own services.

In sum, Complainant has demonstrated that Respondent has no rights or legitimate

interests in the domain name.

3. Was the domain name registered and used in bad faith?

Complainant proved that Respondent registered and used the domain name in bad

faith three different ways. First, Respondent has used its domain names in an

effort to divert traffic from Complainant to Respondent. Policy, Paragraph 4(b)(iv).

See also NetWizards, Inc. v. Spectrum Enterprises, WIPO

Case No. D2000-1768 (April 4, 2001) (Registration and use of a

domain name to re-direct Internet users to websites of competing organizations

constituted bad faith registration and use); Tarjeta Naranja SA v. Mr. Dominio.com

and Alejandro San Jorge, WIPO Case No.

D2001-0295 (April 10, 2001) (to link Internet surfers looking

in their browsers for the well-known mark of Complainant to a competitor’s website

is a typical bad faith use under the Policy); AutoNation, Inc. v. Paul Schaefer,

WIPO Case No. D2001-0289 (April 24, 2001)

(bad faith use and registration found where Respondent used confusingly similar

domain name to sell competing products); Express Messenger Systems, Inc.

v. Golden State Overnight, WIPO Case No.

D2001-0063 (April 2, 2001) (use of confusingly similar domain name

by competitor of Complainant constituted bad faith registration and use). Second,

Respondent has engaged in typosquatting – in itself a recognized indicator of

bad faith. National Association of Professional Baseball Leagues v. Zuccarini,

WIPO Case No. D2002-1011 (January 21, 2003)

("Typosquatting is inherently parasitic and of itself evidence of bad faith.");

Medline, Inc. v. Domain Active Pty., Ltd., NAF Case No. 139718 (February 6, 2003).

Third, Respondent has also acted in bad faith by seeking to prevent Complainant

from reflecting its trademark in a corresponding domain name, evidenced by its

pattern of registering domain names confusingly similar to other well-known

marks for this purpose. Policy, Paragraph 4(b)(ii).

7. Decision

Complainant has proved amply each of the three elements set forth in Rule 4

of the Policy.

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel orders that the domain names <rossimon.net>,

<wwwrosssimon.com>, and <wwwrosssimons.com> be transferred to the

Complainant.

Jordan S. Weinstein

Sole Panelist

Date: January 29, 2004

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