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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Factory Card Outlet of America, Ltd. v. Kevin Grandon

Case No. D2006-0423

 

1. The Parties

The Complainant is Factory Card Outlet of America, Ltd., Napperville, Illinois, United States of America, represented by Sonnenschein Nath & Rosenthal, United States of America.

The Respondent is Kevin Grandon, Lorton, Virginia, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <partymaniaonline.com> (“Domain Name”) is registered with eNom, Inc. (the “Registrar”), which has a business address in Bellevue, Washington, United States of America.

 

3. Procedural History

As set forth below, this case has a rather long procedural history, due to an amendment to change the name of the Complainant and Respondent’s belated appearance and request for an extension.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2006. The Complainant was Factory Card and Party Outlet, Inc.

On April 5, 2006, the Center transmitted by e-mail to eNom a request for registrar verification in connection with the Domain Name. On the same date, eNom confirmed by e-mail to the Center that the Respondent is the registrant of the Domain Name, and provided the current contact information for the Respondent.

On April 11, 2006, after confirming compliance with the applicable rules, the Center formally notified the Respondent of the Complaint, in accordance with paragraphs 2(a) and 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). The Center’s formal notification was sent by mail to Respondent’s street address, and by e-mail to Respondent’s e-mail addresses. The Center’s notification included a copy of the Complaint and stated, inter alia, that:

(a) An administrative proceeding had been commenced against Respondent pursuant to the Uniform Domain Name Dispute Resolution Policy, approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 (the “Policy”);

(b) The Center had confirmed that the Complaint met the formal requirements of the Policy, the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”);

(c) The formal date of commencement of the administrative proceeding was April 11, 2006;

(d) Respondent was required to submit a Response to the Complaint within 20 calendar days, or by May 1, 2006; and

(e) If no Response was submitted, Respondent would be considered in default, and an Administrative Panel would be appointed to decide the case.

Respondent did not submit a Response to the Complaint by the deadline of May 1, 2006, as required by the Rules, paragraph 5(a). Accordingly, on May 2, 2006, the Center notified the Respondent that Respondent had defaulted in responding to the Complaint and that a single-member Administrative Panel would be constituted, as requested by Complainant.

The Center invited the undersigned, Grant L. Kim, to serve as sole Panelist in this matter on May 11, 2006. On May 12, 2006, the undersigned submitted to the Center the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On May 17, 2006, the Center notified the parties that Grant L. Kim had been appointed to serve as sole Panelist. The Center also confirmed that the case file had been transmitted to the Panel.

On June 1, 2006, the Panel issued Procedural Order No. 1, which noted that the trademark PARTY MANIA is registered in the name of Factory Card Outlet of America, Ltd., rather than in the name of the Complainant, Factory Card and Party Outlet, Inc., and requested the Complainant to provide evidence of either its rights in the PARTY MANIA mark or the relationship between the Complainant and Factory Card Outlet of America, Ltd.

Later on June 1, 2006, Complainant’s counsel replied that the Complaint had inadvertently been filed on behalf of Factory Card and Party Outlet, Inc., instead of on behalf of Factory Card Outlet of America, Ltd., and requested leave to file an Amended Complaint to correct this inadvertent mistake.

On June 5, 2006, Complainant submitted an Amended Complaint to the Center. The Amended Complaint is almost identical to the original Complaint, except that the Complainant is Factory Card Outlet of America, Ltd., instead of Factory Card and Party Outlet, Inc. The Amended Complaint states that Factory Card and Party Outlet is “another operating name” of the Complainant.

On June 7, 2006, the Panel issued Procedural Order No. 2, which granted Complainant’s request to file an Amended Complaint changing the name of Complainant from Factory Card and Party Outlet, Inc. to Factory Card Outlet of America, Ltd. The Panel also requested the Complainant to provide further information regarding the corporate relationship between the new Complainant and the old Complainant, and granted Respondent the opportunity to submit a Response to the Amended Complaint to the Center by June 20, 2006.

On June 12, 2006, Complainant submitted an affidavit stating that Factory Card Outlet of America, Ltd. is an Illinois corporation and a wholly-owned subsidiary of Factory Card and Party Outlet, Corp., a Delaware corporation. The affidavit further stated that the original Complaint was inadvertently filed under the incorrect name of Factory Card and Party Outlet, Inc., which is not a registered name of Complainant or any companies related to Complainant. The Center acknowledged this affidavit by an e-mail sent to the parties, including to Respondent Kevin Grandon.

On June 14, 2006, the Center received an e-mail from Respondent Kevin Grandon, stating that he was “simply hired to design and create” the “www.partymaniaonline.com” website, and requesting that communications be sent to “the company” at a different e-mail address, “partiesandmore@[e-mail address]”. The Center sent an e-mail to the parties (including to the new e-mail address) on the following date, noting that all prior communications had been sent to the contact address in the Registrar’s Whois for <partymaniaonline.com>.

On June 16, 2006, the Center received an e-mail from Lisa Chen from the new address (partiesandmore@[e-mail address]), requesting an extension of time to respond to the Amended Complaint. Ms. Chen stated that she had only been notified of the Complaint the preceding day, and needed more time to consult with her counsel and to prepare an adequate response.

On June 21, 2006, the Panel issued Procedural Order No. 3, which noted that Kevin Grandon had been notified of the Complaint more than two months earlier, and should have promptly notified his client of the Complaint and informed the Center that communications should be sent to a different address. The Panel stated that it was reluctant to grant an extension, but granted Respondent until July 6, 2006, to file a response, based on Lisa Chen’s representation that she did not learn of this dispute until June 15, 2006. The Panel emphasized that no further extension of time would be granted, and that the Panel would proceed to issue its decision, if no response was submitted by July 6, 2006.

No response has been received by the Center, despite Respondent’s belated request for an extension. Accordingly, the Center informed the parties by e-mail of July 10, 2006, that the Center was notifying the Panel of Respondent’s default and that the deadline for decision was July 13, 2006.

 

4. Factual Background

Complainant Factory Card Outlet of America, Ltd. is the registered owner of a United States trademark for PARTY MANIA. The trademark application was filed on March 6, 1992, and granted registration on May 3, 1994. (Amended Complaint, para. 12 and Annex 3.)

The PARTY MANIA mark is registered in International Class 016, which includes “gift wrapping paper, paper ribbons and bows for gift wrapping, stationery, notecards, greeting cards, envelopes, writing paper, place cards, paper name badges, paper party decorations; namely, garlands, streamers, confetti, paper party hats and paper banners”; and is also registered in International Class 028, which includes “party favors in the nature of toys, balloons and toy noisemakers.” (Id.)

On March 4, 1996, an entity called “Factory Card and Party Outlet” registered the domain name <partymania.com>. (Amended Complaint, Annex 4.) The Amended Complaint states that “Factory Card and Party Outlet” is “another operating name of Complainant.” (Id. at 4 fn. 1.) However, the affidavit of Sean Wheatley, the Marketing Director of Factory Card Outlet of America, Ltd., states that Factory Card Outlet of America, Ltd is a wholly-owned subsidiary of Factory Card and Party Outlet, Corp. Thus, it appears that the domain name <partymania.com> was registered by Complainant’s corporate parent, Factory Card and Party Outlet, Corp., rather than by Complainant.

Upon typing in <partymania.com>, the user is redirected to <factorycard.com>, which is a website that appears to be operated by both Complainant Factory Card Outlet of America, Ltd, and its corporate parent, Factory Card and Party Outlet, Corp.

Respondent registered the Domain Name <partymaniaonline.com> with the Registrar, eNom, on November 13, 2004. Registrar eNom confirmed the date of registration and identity of the registrant in an e-mail to the Center on April 5, 2006. As part of Respondent’s registration agreement with eNom, Respondent agreed to submit any disputes to a proceeding under the Policy. (Amended Complaint, Annex 2.)

At the time of the filing of the original Complaint, Respondent was using the Domain Name to operate a website that sold party supplies that appeared to be similar or, in some cases, identical to those sold on the website of Complainant and its parent corporation. Complainant submitted printouts of Respondent’s website as Annex 6 to its Amended Complaint, and the Panel viewed Respondent’s website online in May 2006.

However, when the Panel recently attempted to view Respondent’s website, access to the site was denied. Thus, it appears that Respondent disabled the website some time after receiving notice of this dispute.

 

5. The Parties’ Contentions

A. Complainant’s Contentions

Complainant states that it is a national party supply store with nearly 200 stores across the United States, and that it has been selling party supplies under the PARTY MANIA brand since 1992. (Amended Complaint, para. 11.) Complainant alleges that the PARTY MANIA mark has become a nationally famous mark that is well-known among the party supplies industry. (Amended Complaint, para. 13.)

Complainant states that it discovered in November 2005, that Respondent was operating a website using the Domain Name <partymaniaonline.com>, and that Respondent was also operating a store in Vienna, Virginia, with an address close to that of the registrant of the Domain Name. Upon making this discovery, Complainant sent Registrant a letter demanding that Respondent cease any use of the Domain Name and assign all rights in the Domain Name to Complainant. (Amended Complaint, para. 24, Annex 7.) However, Respondent did not respond to Complainant’s letter or cease use of the Domain Name. (Amended Complaint, para. 25.)

Complainant requests a decision requiring the Registrar to transfer the Domain Name <partymaniaonline.com> to Complainant pursuant to Paragraph 4(i) of the Policy. (Amended Complaint, para. 43.)

Complainant asserts that Respondent’s use of the <partymaniaonline.com> Domain Name satisfies the standard established in Paragraph 4(a) of the Policy because (1) the Domain Name is confusingly similar to Complainant’s PARTY MANIA trademark; (2) Respondent has no rights or legitimate interests in the Domain Name; and (3) the Domain Name has been registered and is being used in bad faith.

Complainant contends that its rights in the PARTY MANIA mark are demonstrated by Complainant’s ownership of a United States federal trademark registration for PARTY MANIA. Complainant asserts that it has actively used the mark to promote its party supply products since 1992. As a result of Complainant’s promotion of the PARTY MANIA mark in print advertisements, the name has achieved national recognition and significant consumer good will. (Amended Complaint, paras. 15-19.)

Complainant asserts that Respondent’s Domain Name <partymaniaonline.com> is confusingly similar to Complainant’s PARTY MANIA trademark. (Amended Complaint, paras. 27-30.)

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name. Complainant notes that Respondent is not a licensee of Complainant, and that Respondent is not making any legitimate, noncommercial or fair use of the Domain Name. (Amended Complaint, paras. 31-35.)

Relying on Paragraph 4(b)(iv) of the Policy, Complainant contends that Respondent has registered and used the Domain Name in bad faith. Complainant argues that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Complainant’s website by creating a likelihood of confusion with Complainant’s PARTY MANIA mark. Complainant asserts that the likelihood of consumer confusion is increased by Respondent’s sale of products which are highly similar to Complainant’s products, and by Respondent’s prominent use of the name PARTY MANIA on Respondent’s web pages. (Amended Complaint, paras. 36-42.)

B. Respondent’s Contentions

The Respondent did not reply to the Complainant’s contentions, despite being duly notified of both the original Complaint and the Amended Complaint, and despite having requested and received an extension until July 6, 2006, to respond to the Amended Complaint.

 

6. Discussion and Findings

The Panel finds that it was properly constituted pursuant to the Rules and that it has jurisdiction to decide this dispute. The Panel notes that the record shows that Respondent agreed to the Policy as part of its Domain Name registration, and was notified of both the original Complaint and the Amended Complaint at the addresses included in Respondent’s registration. The Panel further notes that notwithstanding Respondent’s failure to respond to the Complaint, the Panel has reviewed the record to determine whether or not the Complainant is entitled to the relief requested under the Policy, the Rules, and the Supplemental Rules.

Pursuant to the requirements of Paragraph 4(a) of the Policy, transfer of the Domain Name to the Complainant may be granted only if Complainant demonstrates that each of the following three elements have been satisfied:

(i) The 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 respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith

A. Identical or Confusingly Similar

In order to satisfy the first element, Complainant must initially demonstrate its own rights in the mark. Complainant has adequately demonstrated its rights by submitting records of its United States federal trademark registration for PARTY MANIA. A domestic trademark registration is sufficient to show rights in a name. Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503 (finding a registered U.S. trademark adequate to demonstrate Complainant’s rights); Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358, para. 6.3 (“[t]he propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country.”).

After establishing its rights in the mark, Complainant must demonstrate that the disputed domain name is identical or confusingly similar to Complainant’s mark. The Panel finds that Complainant has met this requirement. Respondent Grandon’s Domain Name consists of words identical to Complainant’s PARTY MANIA mark, plus the addition of the word “online.” The addition of the word “online” in Respondent’s Domain Name is not sufficient to notify customers that <partymaniaonline.com> is unrelated to the Complainant. On the contrary, there is a substantial risk that consumers may incorrectly conclude that Respondent’s website is sponsored by Complainant. The Domain Name <partymaniaonline.com> is confusingly similar to both Complainant’s PARTY MANIA mark, and to Complainant’s registered domain name, <partymania.com>.

The Panel’s finding accords with prior WIPO UDRP decisions, which have consistently held that a domain name which would otherwise cause confusion does not become adequately distinctive by the addition of “online.” Barclays Bank PLC v. Mr. Mohammed Hassan, WIPO Case No. D2001-0253, para. 6(A) (“[t]he addition of the non distinctive word ‘on line’ does nothing to prevent the confusing similarity of the domain names with the Complainant’s trademarks”); Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Steven Heiberger and Legacy Development USA Corp., WIPO Case No. D2002-0336 (finding <calvinkleinonline.com> confusingly similar to the trademark CALVIN KLEIN); Government Employees Insurance Company v. Netsolutions Proxy Services, WIPO Case No. D2004-0919 (finding <geicoonline.com> confusingly similar to the trademark GEICO); TPI Holdings, Inc., v. AFX Communications a/k/a AFX, WIPO Case No. D2000-1472 (finding <autotraderonline.com> confusingly similar to the trademark AUTO TRADER).

The likelihood of confusion is illustrated by the fact that a search for “party mania” on various well-known search engines (e.g., Google, Yahoo, Alta Vista, and Excite), conducted in May 2006, returned Respondent’s website as one of the top results. Thus, consumers seeking to buy Complainant’s “Party Mania” products from Complainant’s website could be confused if they tried to find the site by using a search engine.¹

B. Rights or Legitimate Interests

With regard to the second element, Complainant need only establish a prima facie showing that Respondent has no rights or legitimate interests in respect of the Domain Name. Once Complainant has made a prima facie case, the burden shifts to Respondent to present evidence that it has legitimate rights or interests. Gerd Petrik v. Johnny Carpela, WIPO Case No. D2004-1043, para. 6.9 (“Complainant has made the necessary assertions regarding any rights or legitimate interests of the Respondent. While not shifting the ultimate burden of proof, these assertions make it incumbent on Respondent to come forward with evidence refuting Complainant’s assertions and establishing Respondent’s rights or interests in the dispute domain name”); Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, para. 6(B) (noting that “the element of possible rights or legitimate interests of the Respondent in the domain name involves … matters, which are peculiarly within the knowledge of the Respondent”, and that requiring the Complainant to make more than a prima facie showing would impose “the impossible task of proving the negative”).

Complainant has stated that “Respondent is not now and never has been a licensee of Complainant Factory Card, and Respondent is not otherwise authorized by Complainant to use its PARTY MANIA® trademark, including as a domain name.” Complainant also points out that Respondent is using the Domain Name for its own commercial benefit, rather than for a legitimate, noncommercial or fair use.

The Panel finds that Complainant has presented a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. The Panel also finds that Respondent has failed to rebut this prima facie case. Indeed, Respondent has not submitted any rebuttal, despite receiving due notice of the Complaint and despite having requested and obtained an extension of time to respond to the Amended Complaint.

The Panel further finds that the record does not include any evidence that Respondent has rights or legitimate interests in the Domain Name, as described by Paragraph 4(c) of the Policy. In particular, there is no evidence that Respondent’s use of the Domain Name is authorized by Complainant. On the contrary, Complainant notes that Respondent is not currently, and has never been, a licensee of Complainant. Accordingly, Respondent is not using the name in connection with a bona fide offering of goods or services, as described in paragraph 4(c)(i) of the Policy.

In addition, there is no evidence that Respondent has been commonly known by the Domain Name (Policy, paragraph 4(c)(ii)), or that Respondent is using the Domain Name for a legitimate, noncommercial or fair use (Policy, paragraph 4(c)(iii)). On the contrary, it is clear from Respondent’s website that Respondent has been using the Domain Name to promote and sell party supplies similar to the Complainant’s and Complainant’s competitors products for Respondent’s commercial benefit (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires a showing that Respondent has registered and used the Domain Name in bad faith. Paragraph 4(b) of the Policy offers examples of what may constitute evidence of bad faith.

The Panel finds that Respondent’s conduct demonstrates bad faith as described in Paragraph 4(b)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website … by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website … or of a product or service on your website.”

Complainant has presented evidence that it has actively promoted its Party Mania products, developing a brand reputation and consumer goodwill toward its PARTY MANIA trademark and line of products. This evidence includes Complainant’s registered trademark in PARTY MANIA; the registration of the domain name, <partymania.com> by Complainant’s corporate parent, which resolves to a website of Complainant and its corporate parent; and the publication of advertisements promoting the PARTYMANIA brand of Complainant and its corporate parent. (Amended Complaint, Annex 3, 4, and 5.)²

As discussed above, Respondent has selected a domain name that is confusingly similar to Complainant’s mark. Respondent has used the <partymaniaonline.com> Domain Name to operate a website that sold party supplies that were similar or even identical to Complainant’s products. These facts suggest Respondent’s bad faith intent to confuse consumers and divert business to Respondent’s website for commercial gain. This conclusion is reinforced by the fact that Respondent’s website prominently featured the caption, “Party Mania.” Thus, consumers diverted to Respondent’s website were likely to believe that they were buying products from Complainant, rather than Respondent. This conclusion is not changed by the recent disabling of Respondent’s website. On the contrary, the disabling of the website occurred only after Respondent received notice of this dispute, and hence reinforces the conclusion that Respondent lacked a valid basis for using the Domain Name. See Kabushiki Kaisha Isetan v. Ahn, In-Hyo, WIPO Case No. D2004-0283, para. 6(c) (“The circumstance surrounding the change of status of the website to being ‘under construction’ after the filing of the Complaint further adds to an overall sense of suspicion concerning the Respondent’s lack of bona fide registration and use of the domain name”).

Prior WIPO UDRP panels have relied on similar facts to find bad faith under Paragraph 4(b)(iv) of the Policy.

For example, in Schneider Electric SA v. Ningbo Wecans Network Technology Co., Ltd., Ningbo Eurosin International Trade Co., Ltd., WIPO Case No. D2004-0554, the Respondent registered and used the domain name <electric-schneider.com> to sell electrical products such as circuit breakers and switches. Many of the items sold on Respondent’s website appeared to be manufactured by Complainant, a leading supplier of electrical products. Because Respondent’s intentional choice of domain name and product offerings created a high likelihood of consumer confusion leading to Respondent’s commercial gain, the Panel found Respondent to be acting in bad faith.

Similarly, in Yahoo! Inc., v. Jorge O. Kirovsky, WIPO Case No. D2000-0428. Yahoo! Inc, the respondent registered and used several domain names that included the word Yahoo. The panel determined that respondent knew or should have known of the complainant’s trademark rights in the term Yahoo. The panel found that the respondent’s intentional use of the Yahoo domain names led to consumer confusion and respondent’s commercial gain, as consumers repeatedly found respondent’s website when intending to visit complainant’s website. Accordingly, the panel held that respondent acted in bad faith as described by Paragraph 4(b)(iv) of the Policy.

Like the respondents in Schneider Electric and Yahoo! Inc., Respondent Grandon selected a domain name that may be easily confused with the Complainant’s trademark.

Consumers intending to purchase products related to the PARTY MANIA mark may not be adequately alerted to the true source of the products by the mere addition of the word “online” in the <partymaniaonline.com> Domain Name. As in the Schneider Electric case, Respondent Grandon has used the Domain Name to sell precisely the same types of products that Complainant sells under its trademark. Respondent’s sale of highly similar and competing party supplies to Complainant’s party supplies increases the likelihood of consumer confusion. Therefore, pursuant to Paragraph 4(b)(iv) of the Policy, the Panel finds that the evidence demonstrates that Respondent acted with a bad faith intent to obtain a commercial benefit as a result of consumer confusion.

 

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name, <partymaniaonline.com>, be transferred to the Complainant.

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Grant L. Kim
Sole Panelist

Dated: July 12, 2006

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¹ The likelihood of confusion is not changed by the fact that Respondent’s website was recently disabled. As long as Respondent is the registrant of <partymaniaonline.com>, there is a risk that Respondent may reactivate its site.

² Complainant does not appear to use “Party Mania” on its website, “www.factorycard.com”, but this fact does not appear to be relevant to this analysis since Complainant and its corporate parent are using and promoting its PARTYMANIA brand in other forms of advertising. Further, Complainant and its corporate parent are using the domain name, <partymania.com>, which resolves to their website, “www.factorycard.com”.