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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Knife Company, Inc. d/b/a A.G. Russell Knives, Inc. v. LaPorte Holdings, LLC

Case No. D2005-0323

 

1. The Parties

The Complainant is The Knife Company, Inc. d/b/a A.G. Russell Knives, Inc., Lowell, Arkansas, United States of America, represented by Boyd D. Cox, United States of America.

The Respondent is LaPorte Holdings, LLC, Los Angeles, California, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <russelformen.com>, <russellformen.com> and <russelsformen.com> are registered with NameKing.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2005. On March 30, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain names at issue. On April 20, 2005, NameKing.com transmitted by email to the Center its verification response confirming that the domain names were registered with it. On April 21, 2005, and May 19, 2005, NameKing.com transmitted by email to the Center verification of the current registration information. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 4 and May 19, 2005. The Center verified that the Complaint, together with the amendment to 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 May 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2005.

The Center appointed John R. Keys, Jr. as the sole panelist in this matter on June 30, 2005. The Panel finds that 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

Complainant, The Knife Company, Inc. d/b/a A.G. Russell Knives, Inc., has used the service mark RUSSELL’S FOR MEN in connection with Complainant’s catalog mail order, telephone order and fax order services, and computerized on-line shopping and ordering services, featuring knives and other specialty items for men. Complainant has used the RUSSELL’S FOR MEN mark for more than seven years, since 1998, and the service mark is associated in the market with Complainant.

Complainant registered the domain name <russellsformen.com> in 1998, and the website under this name has been operational since then. The catalog refers customers to the website.

Respondent registered the domain name <russellformen.com> on November 18, 2003, the name <russelsformen.com> on November 24, 2003; and the name <russelformen.com> on September 30, 2004. Each of these domain names takes the Internet user to a website featuring links to numerous other websites not related to the Russell’s For Men catalog or shopping services. The websites in some instances link to sites that might be considered competitors of the Russell’s For Men catalog. Respondent’s websites also generate numerous pop-up ads unrelated to Complainant’s business.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that its service mark RUSSELL’S FOR MEN is a well-known mark that has been in use by Complainant since 1998 in connection with its catalog mail order, telephone order and fax order services, and its computerized on-line shopping and ordering services, featuring specialty items for men. Complainant has been running a viable business under the service mark RUSSELL’S FOR MEN for more than seven years and the service mark is associated in the market with Complainant. Complainant has used the mark and name RUSSELL’S FOR MEN in connection with its services worldwide.

The Complainant is also the Registrant of the <russellsformen.com> domain name which was registered in 1998, and the website under this name has been operational since then.

The disputed domain names <russellformen.com>, <russelformen.com> and <russelsformen.com> registered by Respondent are identical and confusingly similar to the RUSSELL’S FOR MEN service mark held by Complainant. Respondent has taken Complainant’s RUSSELL’S FOR MEN mark and <russellsformen.com> domain name and merely deleted the common plural signifier “S” in one, deleted the “LS” in the other and deleted an “L” in another.

Complainant further contends that Respondent has no rights or legitimate interests in respect of the domain names. Complainant notes that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain names or a name corresponding to them in connection with a bona fide offering of goods or services. Respondent is using the names for commercial gain to divert traffic away from the Complainant and redirect it to Respondent’s websites, where Respondent advertises websites of the Complainant’s competitors. During this process, windows containing third-party advertisements pop up on screen. The Complainant believes that Respondent earns revenue or other commercial gain for each diversion of Internet users to Complainant’s competitors and from the pop-up advertising windows.

Lastly, Complainant contends that Respondent registered the domain names and is using them in bad faith. On November 18, 2003, Respondent registered the confusingly similar domain name <russellformen.com>, on November 24, 2003, the Respondent registered the confusingly similar domain name <russelsformen.com> and on September 30, 2004, the Respondent registered the confusingly similar domain name <russelformen.com> to disrupt Complainant’s business and to attempt to attract, for commercial gain, Internet users to Respondent’s websites or other on-line locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or locations or of a product or service on the websites or locations.

On March 23, 2005, when Complainant was about to lodge its Complaint, it appeared that the disputed domain names, which had been registered to Horoshiy, Inc., had recently been registered in the name of LaPorte Holdings, LLC. Complainant contends that the current owner of the disputed domain names is indeed Horoshiy, Inc. In addition, Nameking has always been the Registrar for the disputed domain names, and the websites attached to the disputed domain names are still the same as when the domain names were owned by Horoshiy, Inc.

Moreover, the changes on the database concerning the identity of the registrant of the disputed domain names have been made in order to hide the correct contact details of Respondent.

Complainant also draws attention to the fact that Respondent has been involved in numerous UDRP administrative proceedings, citing to a number of specific cases.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

Inasmuch as Respondent has not answered the Complaint, the Panel first addresses the question of whether Respondent has been given adequate notice of the proceeding. The evidence in the record supports that the Center notified Respondent of the Complaint by courier delivery and e-mail. The Panel thus concludes that the Center discharged its responsibility to notify Respondent.

Where the respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint. Rules paragraph 5(e), paragraph 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under paragraph 14(b) of the Rules, respondent’s failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate.”

Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:

(i) Respondent’s domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) Respondent’s domain names have been registered and are being used in bad faith.

The Panel considers each element in order.

A. Identical or Confusingly Similar

Complainant has used the service mark RUSSELL’S FOR MEN, designated as a trademark, continuously since 1998 in conjunction with a catalog and on-line shopping service oriented to the men’s market. The catalog features knives, including A.G. Russell knives, and other specialty items for men. Such use is sufficient to establish common law rights in the mark, which satisfies the requirements of the Policy. Lillian Vernon Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0611.

The three domain names at issue are not identical to Complainant’s mark but are certainly confusingly similar to it. See Sporty’s Farm, L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 497-98 (2d Cir. 2000). One mark is the same but for the deletion of the “’S” following “Russell”. One mark is the same but for the deletion of one “L” from “Russell.” And one mark is the same but for the deletion of the “L’S” from the end of the name “Russell’s.” The letters “russelformen” are common to each of the challenged domain names and Complainant’s mark. The challenged domain names are so close in visual impression and sound to Complainant’s mark that the Internet user would be likely to have difficulty distinguishing them, and there is a strong likelihood of confusion between and among them. Lillian Vernon Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0611 (and cases cited therein); AT&T Corp. v. John Zuccarini d/b/a Music Wave and Rave Club Berlin, WIPO Case No. D2002-0440; AT&T Corp. v. John Zuccarini d/b/a Rave Club Berlin, WIPO Case No. D2001-1503; AT&T Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-1447.

There can be little doubt that the potential for confusion is created intentionally by Respondent. Respondent’s domain names attempt to capture a user’s typical or most likely typographical or spelling errors in attempting to access Complainant’s website and thereby to divert the user to a different and unrelated website controlled by Respondent. Such obvious “typo squatting” is evidence of the confusing similarity between the domain names and Complainant’s mark.

Each of Respondent’s three disputed domain names is confusingly similar to Complainant’s service mark, and Complainant thus establishes the first element of its case.

B. Rights or Legitimate Interests

There is nothing in the existing record to suggest that Respondent in fact possesses any rights or legitimate interests in the domain names. The record, moreover, does contain positive evidence to the contrary in that Respondent is using the domain names to divert Internet users from Complainant’s website to its own websites, which have no relationship to Complainant’s catalog or shopping services and which in some instances even link the user to Complainant’s competitors. The links to other commercial sites, to sponsored sites, and the flurry of pop-up ads appearing at Respondent’s sites permit the inference that Respondent realizes commercial gain from its websites. Such intentional diversion of traffic from Complainant’s website does not constitute a bona fide offering of goods or service by Respondent that would establish a legitimate interest in the domain names. Lowen Corporation d/b/a/ Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056; AT&T Corp. v. John Zuccarini d/b/a Music Wave and Rave Club Berlin, WIPO Case No. D2002-0440; AltaVista Company v. Andrew Krotov, WIPO Case No. D2000-1091.

Respondent has not come forward to respond to the Complaint and thus offers nothing to establish that it possesses any legitimate rights or interests in any of the three domain names at issue. Considering that Complainant has made out a prima facie case, Respondent’s failure to answer permits the Panel to draw the inference that Respondent in fact has no legitimate rights or interests in its domain names. Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056.

Complainant has established the second element of its case, that Respondent has no rights or legitimate interests in the domain names at issue.

C. Registered and Used in Bad Faith

Each of the domain names at issue was registered at least five years after Complainant began using its service mark and registered its own domain name. See Sporty’s Farm, 202 F.3d at 498. The only reasonable inference to be drawn from the facts is that Respondent registered its three domain names with full knowledge of Complainant’s mark and with the intent to create its own confusingly similar domain names based on likely typographical errors or misspellings of Complainant’s mark or domain name to divert traffic to Respondent’s own unrelated websites for commercial gain. Sporty’s Farm, 202 F.3d at 498; Lillian Vernon Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0611; Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056; AT&T Corp. v. John Zuccarini d/b/a Music Wave and Rave Club Berlin, WIPO Case No. D2002-0440. The Panel thus concludes that Respondent registered the three domain names in bad faith.

Under paragraph 4(b)(iv) of the Policy, there is evidence of bad faith use of a domain name where the respondent is using the domain name to “attract for commercial gain, Internet users to [its] website . . . 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 . . ..” This is what Respondent is doing. Respondent’s use of domain names confusingly similar to the service mark of another to capture users and divert them to unrelated websites and to the websites of competitors of the mark owner by exploiting user confusion and mistakes represents use of the domain name in bad faith. Lowen Corporation d/b/a/ Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; AT&T Corp. v. John Zuccarini d/b/a Music Wave and Rave Club Berlin, WIPO Case No. D2002-0440; AT&T Corp. v. John Zuccarini d/b/a Rave Club Berlin, WIPO Case No. D2001-1503; AltaVista Company v. Andrew Krotov, WIPO Case No. D2000-1091. That Respondent is doing what it is doing for its own commercial gain is a reasonable inference from the evidence of record, which inference Respondent has not come forward to rebut.

This Panel further notes, as others have, that there is a growing number of WIPO UDRP decisions finding bad faith registrations on the part of one Henry Chan. See e.g. Lowen Corporation d/b/a/ Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430, and cases cited therein; Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056. There are other cases in which a respondent called Horoshiy, Inc. has been linked directly to Henry Chan. Pearson Education, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0942; Medco Health Solutions, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0625. Henry Chan has also been linked to a respondent called LaPorte Holdings, Inc.; Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0707; Medco Health Solutions, Inc. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0800, Nokia Corporation v. Horoshiy, Inc., LaPorte Holdings, WIPO Case No. D2004-0851.

In the present case, the prior registrant of the domain names was Horoshiy, Inc. and the present registrant is LaPorte Holdings LLC. There is a reasonable inference, based on the record and the fact that Respondent has not come forward to attempt to refute the allegations, that LaPorte Holdings LLC is directly related to Henry Chan and that this case thus represents another data point in the pattern of Henry Chan bad faith domain name registrations.

Finally, the pattern of changing the name of the registrant would appear also to be an attempt to conceal the true ownership of the domain names which itself constitutes evidence of bad faith. Marian Keyes v. Old Barn Studios Ltd., WIPO Case No. D2002-0687.

Complainant has established that each of the challenged domain names was registered and is being used in bad faith.

 

7. Decision

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 <russellformen.com>, <russelformen.com>, and <russelsformen.com> be transferred to Complainant.


John R. Keys, Jr.
Sole Panelist

Date: July 15, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0323.html

 

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