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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Federated Western Properties, Inc., v. Top Bell
Case No. D2002-0469
1. The Parties
The Complainant in this administrative proceeding is Federated Western Properties, Inc. (hereafter "Federated Western"). Federated Western is an Ohio corporation, with a principal place of business at 4441 South Polaris Avenue, Las Vegas, Nevada 89103, United States of America. Federated Western is the owner of the BLOOMIE’S trademarks which are at issue in this proceeding, as explained in further detail herein.
The Respondent is Top Bell, P.O. Box 66, New York, New York 10150, United States of America. The contact listed for the company is Stephen Rogers. The telephone number provided in the WHOIS database is 212-838-6666. The fax number provided is 212-750-7888. No other information is known to the Panel about the Respondent.
2. The Domain Name(s) and Registrar(s)
The domain name in dispute is <bloomies.org> (the Domain Name). The registrar with which the domain name is registered is BulkRegister, Inc. located at 10 East Baltimore Street, Suite 1500, Baltimore, Maryland 21202, United States of America (the Registrar).
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complainant’s Complaint in hardcopy on May 16, 2002. The Center received the Amended Complaint on May 23, 2002. On May 23, 2002, the Center sent the Complainant an Acknowledgement of Receipt.
On May 22, 2002, the Center sent to the Registrar a Request for Registrar Verification. That same day, the Registrar transmitted to the Center a Registrar Verification Response confirming that the Domain Name was indeed registered with the company, that the Respondent is the current registrant of the Domain Name, and that the status of the Domain Name is "locked." Registrar’s Response provided the following contact information for the Respondent:
P.O. Box 66
New York, NY 10150
United States of America
Administrative and Technical Contact:
P.O. Box 66
New York, NY 10150
United States of America
The Center completed a Formalities Compliance Review on May 31, 2002, and verified that the Complaint satisfied the formal requirements of the ICANN Uniform Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Dispute Resolution Policy (the Uniform Rules), and the Supplemental Rules for Uniform Domain Dispute Resolution Policy ("the WIPO Supplemental Rules"). Complainant made the required payment to the Center. Upon independent review, the Panel also finds that the Complaint satisfies the formal requirements of the Policy, the Uniform Rules and the Supplemental Rules.
On May 31, 2002, the Center transmitted to the parties, with copies to the Registrar and ICANN, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of June 20, 2002, by which Respondent could file a Response to the Complaint.
No response having been received, the Center sent a Notification of Respondent Default to Respondent on June 21, 2002.
In view of the Complainant’s designation of a single panelist (but without prejudice to any election to be made by the Respondent), the Center invited Andrew S. Mansfield to serve as the panelist. On July 12, 2002, after receiving Mr. Mansfield’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date (July 26, 2002). The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
Also on July 12, 2002, Respondent sent to the Center an unsolicited e-mail that is not in compliance with the WIPO Supplemental Rules. That e-mail was nevertheless forwarded to the panel and has been considered. It stated that TopBell does not contest the transfer of the Domain Name to Complainant.
The language of this proceeding is English.
4. Factual Background
Federated Western is the owner of the world famous BLOOMIE’S trademarks. Commencing in 1975 and continuing through the present, Federated Western, its licensees and its predecessors-in-interest have used the trademarks, service marks and trade name BLOOMIE’S in connection with, among other things, retail department store services and various articles of men's and women's apparel, accessories, and related goods. Specifically, BLOOMIE’S is used to denote Complainant’s department store Bloomingdale’s, which is commonly known as and referred to as "Bloomie’s."
Federated Western’s affiliate and licensee, Federated Department Stores including its Bloomingdale’s Division, manufactures and sells diverse products and renders diverse services in its Bloomingdale’s department stores and through its <bloomies.com> website. Federated Department Stores and its Bloomingdale’s Division have marketed products sold and services rendered under the BLOOMIE’S Marks throughout the United States.
At present, Federated Western’s federal registrations for BLOOMIE’S
(1) Registration No. 1,917,007 of September 5, 1995, for the trademark BLOOMIE’S in International Class 42 for retail department store services;
(2) Registration No. 1,918,553 of September 12, 1995, for the trademark BLOOMIE’S in International Class 42 for retail department store services;
(3) Registration No. 1,457,512 of September 15, 1987, for the trademark BLOOMIE’S in International Class 25 for clothing, namely underwear, sweatshirts, tops, nightshirts, lingerie, pajamas, beach cover-ups, playsuits, robes, skirts, infant playsuits and sleepers, textile bibs, slippers, and pants;
(4) Registration 1,458,415 of September 22, 1987 for the trademark BLOOMIE’S in International Class 25 for clothing, namely underwear, sweatshirts, tops, nightshirts, lingerie, pajamas, beach cover-ups, playsuits, robes, skirts, infant playsuits and sleepers, textile bibs, slippers, pants;
(5) Registration 1,444,260 of June 23, 1987, for the trademark BLOOMIE’S BEAR in International Class 28 for toys, namely stuffed animals.
Collectively, these are referred to herein as the BLOOMIE’S Marks.
Respondent registered the Domain Name with the Registrar on December 21, 2001.
5. Parties’ Contentions
Complainant alleges that the diverse products sold under the BLOOMIE’S Marks, and the services rendered under those trademarks, have been widely advertised to the purchasing public and to the trade throughout the United States and the world by all means and all types of advertising media, including newspapers, magazines, television, trade publications, and the like. Complainant alleges that the products and services sold under the BLOOMIE’S Marks, by reason of their style and design excellence and quality of workmanship, have come to be known to the purchasing public throughout the United States and the world as representing products and services of the highest quality, which are sold under the best merchandising and customer service conditions. As a result thereof, Complainant alleges that the BLOOMIE’S Marks and the goodwill associated therewith are of inestimable value to Federated Western.
Complainant also alleges that BLOOMIE’S has developed secondary meaning and is a famous mark, under United States law.
Complainant alleges that it advertises the trademark BLOOMIE’S in major newspapers, television and radio markets. According to Complainant, BLOOMIE’S is used interchangeably with the name of the store Bloomingdales. Complainant also operates its Bloomingdale’s e-commerce website at <bloomies.com> (as well as <bloomingdales.com>).
Complainant alleges that the Domain Name is identical to its BLOOMIE’S Marks. Complainant also alleges that Respondent has no rights in or to "bloomies." Finally, Complainant alleges that the registration was conducted in bad faith because Respondent demanded $10,000 in gift certificates in exchange for surrendering the Domain Name.
Respondent filed no Response.
6. Discussion and Findings
Complainant must prove three distinct elements in order to prevail on its claim for transfer of the Domain Name. These elements are set forth in Paragraph 4(a) of the Policy:
- The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Domain Name; and
- The Domain Name was registered and is being used in bad faith.
(A) Identity or Confusing Similarity of Domain Name and Trademark
The evidence shows that the Domain Name is identical to Complainant’s mark, differing only in the addition of the .org suffix. In addition, Complainant utilizes its mark to operate a website at the .com suffix. The deployment of the trademark as a domain name in the .org top-level domain may cause confusion as to sponsorship or affiliation.
(B) No Legitimate Interest in the Domain Name
By failing to submit a Response, Respondent provides no evidence that it has any rights whatsoever in the Domain Name. Respondent, in its late-filed e-mail, also states that it does not contest transfer, further indicating that it has no rights in the Domain Name. Pursuant to Rule 14(b), the Panel therefore draws the inference that Respondent has no rights or legitimate interests in the Domain Name.
(C) Bad Faith Registration and Use of the Domain Name
Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of registration and use of a domain name in bad faith." Those designated may be summarized as:
- Evidence that the purpose of registration is to sell, rent or transfer the domain name to the Complainant for an amount in excess of out-of-pocket expenses; or
- Evidence that the registration of the domain name was to prevent the owner of the trademark or the service mark from using the domain name, coupled with a pattern of such conduct; or
- Evidence that registration and/or use is primarily meant to disrupt the business of a competitor; or
- Intentional utilization, for commercial purposes, of the likelihood of confusion stemming from the domain name’s use or deployment.
In this case, Respondent offered to sell or transfer the domain name for consideration beyond the cost of registration and maintenance, therefore indicating bad faith. On April 10, 2002, Mr. Steve Rogers stated that he would surrender the Domain Name to Complainant for $10,000 worth of Bloomingdale’s gift certificates. Although he indicated he would distribute such certificates to charity, this does not ultimately change the nature of the demand, converting a "bad faith" extortion attempt into a good faith effort.
For all of the foregoing reasons, it is the decision of the Panel that the Complainant has proved the essential elements of a claim. The Complainant’s claim for transfer of Domain Name is therefore granted.
Andrew S. Mansfield
Dated: July 18, 2002