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and Mediation Center
Claire’s Stores, Inc., Claire’s Boutiques, Inc.,
CBI Distributing Corp. v. LaPorte Holdings
Case No. D2005-0589
1. The Parties
The Complainants are Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. (hereinafter “Complainant” or “Claire’s”), Hoffman Estates, Illinois, United States of America, represented by Wolf, Greenfield & Sacks, P.C., United States of America.
The Respondent is Admin/LaPorte Holdings, Los Angeles, California, United States
2. The Domain Names and Registrar
The disputed domain names are <clairesclub.com> and <icingbyclaires.com>,
which are registered with NameKing.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2005. On June 9, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain names at issue. On June 10, 2005, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On June 14, 2005, 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 June 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2005.
The Center appointed Sandra A. Sellers as the sole
panelist in this matter on July 21, 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
Complaninant is a retailer of, among other things, jewelry, accessories, and fashion items, to girls and women in North America, Europe, and Japan. Complainant has operated retail stores continuously under the name “Claire’s” for over twenty years. Complainant owns the following US Registrations for trademarks consisting of the word CLAIRE’S: Reg. Nos. 1,890,335; 1,891,172; 1,925,359; 1,929,317; 2,623,039; 2,908,857; 2,908,858; 2,908,859; 2,908,860; 2,908,861; 2,919,171; 2,951,866. Complainant also has pending several US federal applications.
Complainant does a portion of its business under the mark CLAIRE’S CLUB, in conjunction with marketing toward younger customers. Complainant began using the mark CLAIRE’S CLUB in January 2002. Complainant owns the following US Registrations for trademarks consisting of the mark CLAIRE’S CLUB: Reg. Nos. 2,908,191; 2,908,862, 2,908,863; 2,908,864; 2,908,865; 2,908,866; 2,908,867; 2,908,868. Complainant also has pending several US federal applications.
Complainant also does a portion of its business under the mark ICING BY CLAIRE’S, in conjunction with marketing toward older customers. Claire’s began using the mark ICING BY CLAIRE’S on October 5, 2001. Complainant has applied for US federal registration for the mark ICING BY CLAIRE’S.
In each of the past two years, Complainant has enjoyed over a billion US dollars in annual sales under and in conjunction with its family of CLAIRE’S trademarks. Complainant has invested millions of dollars in advertising and promotion of these marks and the associated goods.
Complainant registered the domain name <claires.com> on July 5, 1995, and has used this domain name to display its merchandising since at least as early as 1998. Additionally, Complainant has registered other domain names incorporating the mark CLAIRES.
Respondent registered <clairesclub.com> on December 20, 2004, and <icingbyclaires.com> on December 31, 2002, many years after Complainant registered and began using its CLAIRE’S marks and corresponding domain name <claires.com.>
Visitors to the domain names <clairesclub.com>
and <icingbyclaires.com> are directed to a search engine and portal operated
by “www.domainsponsor.com” that links to sponsored websites, many
of which concern items or topics normally associated with Complainant, such
as “jewelry”, “wallets”, “charm bracelets”,
“body jewelry”, “tiaras”, “rings” and “purses”.
These sponsored websites linked to from the disputed domain names are not connected
with the Complainant, though in the same categories as the Complainant’s
5. Parties’ Contentions
Complainant owns all rights in the US federally registered marks CLAIRE’S and CLAIRE’S CLUB, in the common law mark ICING BY CLAIRE’S, in all related pending federal applications, and in the domain name <claires.com>. Complainant’s use of these marks and related domain names precedes Respondent’s registration of the disputed domain names. Respondent has no right to or legitimate interest in use any of Complainant’s marks or domain names containing those marks.
The disputed domain names are virtually identical or confusingly similar to the Complainant’s registered marks, due to Respondent’s incorporation of Complainant’s registered and common law marks into the disputed domain names.
Complainant alleges that the domain names were registered in bad faith. Respondent had at least constructive, if not actual, notice of Complainant’s registered marks prior to registering the disputed domain names. Furthermore, Complainant alleges that Respondent has engaged in a pattern of registering domain names incorporating variations on famous and well-known marks, even utilizing aliases, and has been found to have violated the UDRP repeatedly.
Complainant further alleges that the domain names are being used in bad faith, due to its arrangement with domainsponsor.com, whereby Respondent receives 50% of the revenue from paid searches and popup advertisements placed on the “www.domainsponsor.com” website, thus free-riding on Complainant’s goodwill.
Accordingly, Complainant requests that the disputes domain names should be transferred to Complainant.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Pursuant to Policy paragraphs 4(a)(i-iii), for the Complainant to prevail and have the disputed domain name transferred to it, the Complainant must show that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant owns all rights in the US federally registered marks CLAIRE’S and CLAIRE’S CLUB, in the common law mark ICING BY CLAIRE’S, in all related pending federal applications, and in the domain name <claires.com> and other domain names registered by Complainant. Complainant’s use of these marks and related domain names precedes Respondent’s registration of the disputed domain names.
This Panel also finds that the disputed domain names are identical or confusingly similar to Complainant’s marks and domain names.
Accordingly, this Panel finds that the disputed domain names are confusingly similar to the Complainant’s marks, and that the Complaint meets the first criterion of Policy paragraph 4(a).
B. Rights or Legitimate Interests
Respondent has not been granted any rights by Complainant to use any of Complainant’s marks. Furthermore, Respondent does not make any legitimate non-commercial or fair use of the domain names.
Based on the case file, Respondent does not have any rights or legitimate interests in using Complainant’s service mark as part of his domain name, under Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
This Panel finds that Respondent registered the disputed domain names in bad faith.
It is probable that Respondent had actual notice of Complainant’s mark
prior to registering the disputed domain names. According to Complainant’s
evidence, there are 25 Claire’s stores within 15 miles of Respondent’s
zip code. See Jupiters Limited v. Aaron Hall, WIPO
Case No. D2000-0574 (August 3, 2000), which found it “inevitable that
Respondent registered the domain names in full knowledge of Complainant’s
rights and interests.”
Additionally, this Respondent, as LaPorte Holdings and several alter egos,
previously and repeatedly has been found to have violated the UDRP, by engaging
in a pattern of registering domain names incorporating variations on famous
and well-known marks. Indeed, this Panelist’s search only for cases in
which LaPorte was a named Respondent yielded 31 WIPO decisions and 45 National
Arbitration Forum (NAF) decisions just in 2004 and 2005. Clearly, such a pattern
of conduct establishes bad faith. See WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Question
3.3, citing Telstra Corporation Limited v. Ozurls, WIPO
Case No. D2001-0046, among others.
This Panel also finds that Respondent has used the disputed domain names in bad faith.
Paragraph 4(b)(iv) states that there is bad faith if the Respondent has attempted
“to attract, for commercial gain, internet users to [his/her] 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 [his/her]
website or of a product or service on [his/her] website or location.”
As the undisputed record shows, the Respondent is using the disputed domain
names to direct visitors to “www.domainsponsor.com” a search engine
that provides sponsored links for businesses in the same field as that of the
Complainant. It is clear that the Respondent aims to hook customers who will
be lured into visiting the sponsored links, for which Respondent will receive
monetary commission. This Panel also notes that the operations and commercial
benefits offered by “www.domainsponsor.com” or other similar
search engines have been the subject of many prior UDRP proceedings, including
Deloitte Touche Tohmatsu v. Henry Chan, WIPO
Case No. D2003-0584; Bridgestone Corporation v. Horoshiy, Inc., WIPO
Case No. D2004-0795; Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi,
WIPO Case No. D2004-0984; Mizuno Kabushiki
Kaisha Corporation and Mizuno USA, Inc. v. Henry Chan, WIPO
Case No. D2004-0255; BWT Brands, Inc. v. Domains By Proxy, Inc.,
WIPO Case No. D2005-0105; Southern Communications
Services, Inc. d/b/a Southern LINC v. Henry Chan WIPO
Case No. D2004-0214; Costco Wholesale Membership Inc., Costco Wholesale
Corporation v. Henry Chan, WIPO Case No.
D2004-0218; Wal-Mart Stores, Inc. v. Modern Limited - Cayman Web Development,
Domain Administrator, WIPO Case No. D2005-0322;
Caisse Nationale des Caisses d`Epargne et de Prevoyance v. LaPorte Holdings,
WIPO Case No. D2005-0430; Chanel, Inc. v. LaPorte
Holdings, WIPO Case No. D2005-0487 and Ameriquest
Mortgage Company v. Ling Shun Shing, WIPO
Case No. D2003-0294. Under the circumstances described above, the Panel
finds that the Respondent sought or realized commercial gain.
For the reasons given above,
the Panel finds that the Complainant has established that Respondent has registered
and used the domain names in bad faith under paragraph 4(a) 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, <clairesclub.com> and <icingbyclaires.com> be transferred to the Complainant.
Sandra A. Sellers
Dated: July 29, 2005