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and Mediation Center
ADMINISTRATIVE PANEL DECISION
California Closet Company, Inc. v. TMPCapital LLC / Whois Privacy Protection Service, Inc.
Case No. D2006-1359
1. The Parties
The Complainant is California Closet Company, Inc., San Rafael, California, United States of America, represented by Wiley, Rein & Fielding, United States of America.
The Respondents are TMPCapital LLC, West Orange, New Jersey, United States of America
/ Whois Privacy Protection Service, Inc., Bellevue, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <calcloset.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2006. On October 24, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On October 24, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent TMPCapital LLC is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 2, 2006. 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 November 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2006.
The Center appointed Sandra A. Sellers 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.
On December 22, 2006, the Panel requested that the
Center advise the Panel on a previous case, California Closet Company, Inc.
v. Administration Local, WIPO Case No. D2003-0607, which involved the same
domain name. The Panel also indicated that more time would be needed to file
its decision, originally due on January 2, 2007. On January 3, 2007, the Center
confirmed that California Closet Company, Inc. v. Administration Local,
WIPO Case No. D2003-0607 had been terminated. On January 4, 2007, the Panel
fixed the new decision due date on January 18, 2007 and issued Administrative
Panel Procedural Order No. 1, to which the Complainant responded on January 11, 2007.
4. Factual Background
General Facts Concerning the Complainant
The Complainant has registered the following trademark and service marks in the United States:
CALIFORNIA CLOSET COMPANY, Reg. No. 1,412, 380, October 7, 1986; CALIFORNIA CLOSETS, Reg. No. 1,613,365, September 11, 1990; and
CALIFORNIA CLOSETS (plus design), Reg. No. 2,138,333, February 24, 1998.
In addition, Complainant also owns the following domain names:
<californiaclosets.com>, registered June 30, 2000; and
<calclosets.com>, registered January 15, 1997.
From the period 1994 through 2005, Complainant submits it spent approximately USD63.4 million on protection and promotion of its marks.
General Facts Concerning Respondents
A search conducted by the Complainant on October 11, 2006, of the Whois database of Network Solutions, Inc. listed the disputed domain name as registered to Whois Privacy Protection Service, Inc. However, when the Center contacted the Registrar, eNom, Inc., to verify, eNom responded that the domain name was registered to TMPCapital LLC. Both Whois Privacy Protection Service, Inc. and TMPCapital LLC are named as Respondents. According to eNom’s verification, the registration was created October 4, 2005.
Facts Concerning Registration of the Disputed Domain Name
The disputed domain name, <calcloset.com>, has been registered by several entities over the years, as follows:
05/15/02: registered to Administration Local
08/12/03: Complainant filed a Complaint against Administration Local (D2003-0607). The domain name was transferred to Complainant and the case was terminated.
08/14/03: transferred to Complainant
05/15/04: Complainant’s registration expired
10/04/05: registered to Respondents
In its Response to Administrative Panel Procedural
Order No. 1, Complainant indicated that Complainant inadvertently allowed the
registration to expire during a time of Complainant’s internal reorganization,
and took action to address this lapse as soon as Respondents’ registration
and use of the domain name was discovered.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s registered service marks and Complainant’s common law rights to the California Closets marks. Complainant further contends that Respondents have no rights or legitimate interest in the disputed domain name, and that Respondents have never been known as “California Closets” or by a similar name.
Complainant also alleges that the disputed domain name was registered and is being used in bad faith. Respondents allegedly have registered the domain name to prevent Complainant from reflecting the value of its registered marks and to disrupt Complainant’s business. Complainant states that Respondents have sought to capitalize on Complainant’s goodwill by directing Internet users to its website or through direct links to the website contained at the disputed domain name redirecting to other websites that are direct competitors of Complainant. Complainant alleges that Respondents’ use of the domain name is for commercial gain and with the intent to misleadingly divert consumers or to tarnish Complainant’s registered or common law marks. Complainant also alleges that Respondents’ use of a variation of Complainant’s marks also constitutes bad faith. Finally, Complainant argues that Respondents’ direct link to or advertising of other websites pandering to adult entertainment unlawfully misappropriates, infringes and dilutes Complainant’s registered marks.
In its Response to Administrative Panel Procedural Order No. 1, Complainant reaffirmed its arguments that Respondents have registered and operated the domain name in bad faith, as set forth in its Complaint.
The Respondents did not reply to the Complainant’s
6. Discussion and Findings
Pursuant to paragraphs 4(a)(i)-(iii) of the Policy, for Complainant to prevail and have the disputed domain name transferred to it, Complainant must show that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in the disputed domain name; and
(iii) the Respondents have registered and are using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the registered marks containing CALIFORNIA CLOSETS. Even though more relevant under the second and third element, the Panel notes that Complainant’s use of these marks and its related domain names precedes Respondents’ registration of the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s marks, and that Complainant meets the first criterion of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Respondents have not been granted any rights by Complainant to use any of Complainant’s marks. On the evidence before the Panel, Respondents do not appear to make any legitimate non-commercial or fair use of the domain name. The Panel is satisfied that Complainant has made a prima facie showing of Respondents’ lack of rights or legitimate interests in the disputed domain name. Respondents have not rebutted this.
Based on the foregoing and considering Respondents’ use of the domain name explained further below under 6.C., the Panel finds that Respondents do not have any rights or legitimate interests in respect of the domain name and that Complainant meets the second criterion of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Respondents are located in the United States of America, where Complainant has registered its marks. Accordingly, this Panel finds that the Respondents had constructive notice of Complainant’s marks.
Further, in all likelihood, Respondents had also actual notice of Complainant’s
marks prior to registering the disputed domain name. The Respondents are located
in the United States of America, where the Complainant’s marks are registered
and where Complainant sells it goods and services. Complainant has spent over
USD60 million on promoting its goods and services. Accordingly, this Panel infers
that Respondents were aware of Complainant’s marks when Respondents registered
the disputed domain name. See, e.g., Jupiters Limited v. Aaron Hall,
WIPO Case No. D2000-0574, in which the
panel found it “inevitable that Respondent registered the domain names
in full knowledge of Complainant’s rights and interests.”
The Panel has also considered whether the Complainant’s failure to renew and the resulting expiration of Complainant’s registration should have any bearing on the issue of whether Respondents registered the domain name in bad faith. However, Respondents have failed to file Responses to the Complaint and have thus not rebutted Complainant’s allegations. Complainant has explained its inadvertent expiration of the registration, and by filing this Complaint has demonstrated its lack of intent to abandon the domain name, to the satisfaction of the Panel.
Paragraph 4(b)(iv) of the Policy states that there is bad faith if Respondents have attempted to attract, for commercial gain, Internet users to their 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 their website or of a product or service on their website or location.
Respondents have used a domain name virtually identical to Complainant’s marks, to direct visitors to other vendors, who are Complainant’s competitors. According to the Complaint’s Annex F, visitors to Respondents’ website are presented with a webpage for Online Home Improvement, with multiple topics and links to Complainant’s competitors. This Panel finds that Respondents have used the disputed domain name for commercial gain and with the intent to misleadingly divert consumers to Complainant’s competitors’ websites.
For the reasons given above, the Panel finds that
Complainant has established that Respondents have registered and used the domain
name in bad faith under paragraph 4(b) 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 name <calcloset.com> be transferred to the Complainant.
Sandra A. Sellers
Dated: January 17, 2007