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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prudent Publishing Company v. TRFCN, Inc.
Case No. D2006-1325
1. The Parties
The Complainant is Prudent Publishing Company, Ridgefield Park, New Jersey, United States of America, represented by McCarter & English, LLP, United States of America.
The Respondent is TRFCN, Inc., Ann Arbor, Michigan, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <gallerycollections.com> is registered with
Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2006. On October 16, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On October 17, 2006, Moniker Online Services, LLC 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. 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 Respondent of the Complaint, and the proceedings commenced on November 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2006. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2006.
The Center appointed M. Scott Donahey as the Sole
Panelist in this matter on December 19, 2006. 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 is the registrant of the mark GALLERY COLLECTION with the United States Patent & Trademark Office (USPTO) in connection with greeting cards. The registration issued on May 5, 1981, and shows a first use in commerce in 1972. Complaint, Annex 3. Complainant has used the mark at issue in connection with the sale of a full line of premium quality personalized greeting cards worldwide.
Complainant is the registrant of numerous domain names incorporating Complainant’s marks, including <gallerycollection.com>, <gallerycollection.info>, <gallerycollection.biz>, <gallerycollection.us>, <gallerycollection.ch>, <thegallerycollection.com>, <thegallerycollection.info>, <thegallerycollection.biz>, <thegallerycollection.us>, and <thegallerycollection.co.uk>. The website for which the domain name <gallerycollection.com> is the primary URL for Complainant’s online sale of its greeting cards and related products. Complaint, Annex 4.
Respondent registered the domain name at issue on October 24, 2004. Respondent has used the domain name at issue to resolve to a website that contains links to general categories of greeting cards, which links resolve to the websites of direct competitors of Complainant in the sale of greeting cards. Complaint, Annexes 7, 8, and 9.
By certified mail dated August 21, 2006, Complainant sent Respondent a cease and desist letter demanding that the domain name at issue be transferred to the Complainant. Complaint, Annex 5. Respondent did not reply. Complainant’s counsel sent Respondent an email dated September 22, 2006, offering to purchase the domain name at issue for USD 1,000. Complaint, Annex 6. Respondent did not reply.
Complainant notes that Respondent has registered domain
names incorporating famous marks of others. Complaint, Annex 12.
5. Parties’ Contentions
Complainant contends that the domain name at issue is confusingly similar to Complainant’s mark, that Respondent has no rights or legitimate interest in respect of the domain name, and that the domain name was issued was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Panels have long held that the addition of the gTLD
suffix is irrelevant in an examination of identity or confusing similarity.
Credit Management Solutions, Inc. v. Collex Resource Management, WIPO
Case No. D2000-0029. The addition of the plural suffix does not affect this
analysis. Halcyon Yarn, Inc. v. Henry Chan, WIPO
Case No. D2004-0336. Accordingly, the Panel finds that the domain name at
issue is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The term “gallery collections” can be a generally descriptive term. For example, if Respondent had used the domain at issue to resolve to a website at which the offerings of various art galleries were available for purchase and there was no reference to greeting cards, Respondent would have had a right and legitimate interest in respect of such use, at least as against the present Complainant. But this is not the case. Respondent has used the domain name primarily to link to greeting card sites of direct competitors of Complainant. Respondent was not licensed by nor otherwise authorized by Complainant to use its mark.
Moreover, Respondent failed to respond to the complaint. The consensus view of WIPO UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
Overview of WIPO Panel Views on Selected UDRP Questions, Section
In the present case the Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that based on the case file Respondent has no rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
Complainant registered its mark in connection with greeting cards with the USPTO in May 1981 and has been using it to promote the sales of its greeting cards since 1972. Respondent registered the domain name at issue in October 2004. Respondent lists its address and that of its contacts in Ann Arbor, Michigan, United States of America. As an American resident, Respondent should be charged with constructive notice of Complainant’s registered trademark. 15 U.S.C. § 1072.
It is apparent that by using the domain name at issue primarily to resolve
to websites at which greeting cards are offered for sale by direct competitors
of Complainant, Respondent was aware of and was attempting to capitalize on
the good will associated with Complainant’s mark. Online shopping sites
have mistakenly confused Complainant’s trademarked greeting cards with
the website to which the domain name at issue resolves. Complaint, Annex 10.
It is axiomatic, that the website operated by Respondent is intended to and
does profit from the confusion with Complainant’s trademarked greeting
cards. Research In Motion Ltd. v. Dustin Picov, WIPO
Case No. D2001-0492. Accordingly, the Panel finds that the domain name at
issue was registered and is being used in bad faith. Paragraph 4(b)(iv) of the
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 name, <gallerycollections.com>, be transferred to the Complainant.
M. Scott Donahey
Dated: January 2, 2007