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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

(1) Robert L. Goldman and (2) CELS Enterprises, Inc. v. Domain Administration Limited/ David Halstead

Case No. D2008-0239

 

1. The Parties

The Complainants are:

Robert L. Goldman an individual of the United States of America (referred to as “Mr Goldman” or the “Complainant”) and CELS Enterprises, Inc., Los Angeles, California, United States of America (referred to as “CELS” or the “Complainant”) (together referred to as the “Complainants”), jointly represented by Fulwider Patton LLP, United States of America.

The Respondent is Domain Administration Limited/ David Halstead, Auckland, New Zealand.

 

2. The Domain Name and Registrar

The disputed domain name <chineselaundryshoes.com> is registered with Fabulous.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2008. On February 18, 2008, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On February 19, 2008, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 26, 2008. 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 February 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2008.

The Center appointed Isabel Davies as the sole panelist in this matter on April 1, 2008. 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

Mr. Goldman is the registered owner of the word mark CHINESE LAUNDRY, No. 1,861,027 with the United States Patent and Service Mark Office for use in connection with shoes. The Complainant contends that since 1983, CELS has been the exclusive licensee of the CHINESE LAUNDRY mark, owned by Mr. Goldman. CELS is also the registered owner of the domain names <chineselaundry.com> and <chineselaundrybags.com>, registered in 1998 and 2003 respectively.

The Complaint used the word “Complainant” to refer to Mr. Goldman and CELS interchangeably. Given that both Mr. Goldman and CELS have sufficient rights in the mark CHINESE LAUNDRY, the Panel considers it appropriate to mirror the use of this terminology in this decision.

The Complainant states that CELS is a shoe designer and manufacturer. It was founded in 1971 by Mr. Goldman and Carol Goldman. The Complainant markets its shoes to consumers online and through stores. The Complainant’s flagship brand of footwear is the CHINESE LAUNDRY brand. It began using the mark in 1981, in connection with the sale of women’s footwear.

The Complainant states that Chinese Laundry shoes are sold in over 2,800 retail outlets in the United States of America, such as Nordstrom’s and Macy’s, as well as being sold on online sites such as “www.zappos.com” and “www.piperline.com”, among others. The Complainant contends that it has expanded its use of the CHINESE LAUNDRY mark to a full line of footwear. In the past two years alone, it is claimed by the Complainant that sales of the Complainant’s Chinese Laundry shoes have exceeded $50,000,000 and that they have been seen worn by celebrities, including Paris Hilton, Hilary Duff, Teri Hatcher, Courtney Cox, Kelly Clarkson and Jennifer Love Hewitt.

The Respondent is the registrant of the domain name <chineselaundryshoes.com>, which was registered with Fabulous.com on July 5, 2002. The domain name resolves to a website containing a search engine with sponsored links to third party sites offering inter alia, links to other footwear sites. The website prominently features the words “Chinese Laundry” and at the top of each web page, the site reads “Welcome to Chineselaundryshoes.com”. As stated above, no Response to the Complaint has been filed and no information has been made available by the Respondent to the Panel concerning the activities of the Respondent. The Complainant states, however, at paragraph 34 of the Complaint, that the Respondent has registered other “famous” names of other third parties, which have been the subject of previous WIPO UDRP decisions, including, <ezrentacar.com> and <icebergclothing.com>.

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant submits that the Respondent’s domain name is confusingly similar to its registered trade mark, the only difference being the addition of “shoes” to the trade mark, and, given the fact that the “shoes” is descriptive of the goods which the Complainant sells, that the addition does nothing to differentiate the Complainants’ mark from the Respondent’s domain name. The Complainant asserts that the use of the noun, which describes the goods in question, is likely to increase the likelihood of confusion; see Harrods Limited v Peter Pierre, WIPO Case No. D2001-0456.

Rights or Legitimate Interest in the Domain Name

The Complainant asserts that the Respondent has no relationship with the Complainant and has not been given permission or been authorised to use the domain name.

Further, the Complainant asserts that the domain name is not being used in connection with a bona fide offering of goods or services. The Respondent is not offering any goods on the website, save for providing links to the websites of competitors of the Complainant. The Complainant asserts that, to the best of its knowledge, the Respondent has not used or been commonly known by the mark portrayed in the contested domain name.

The Complainant contends that the Respondent is not making any legitimate use of the domain name. The Respondent has placed a portal website with links to the Complainant’s website and the Complainant’s competitors’ websites with the intent to misleadingly divert customers for commercial gain.

The Complainant also states that the Respondent did not respond to its request, made on November 29, 2007, to transfer the domain name to the Complainant.

The Complainant contends that it is clear the Respondent has no legitimate interest in the disputed domain name, but is misappropriating the Complainant’s name for his own commercial gain.

The Respondent has registered and used the Domain Name in bad faith

The Complainant asserts the following in relation to the Respondent having registered and used the domain name in bad faith:

(1) The Respondent has intentionally attempted to attract Internet users for commercial gain by creating a likelihood of customer confusion with the Complainant’s mark. The Complainant submits that including the Complainant’s trade mark in the domain name suggests an affiliation with the Complainant. The Complainant submits that there is evidence of a clear intention to mislead and divert consumers for commercial gain.

(2) The Respondent is a serial “cybersquatter” who has registered several domain names incorporating the slightly modified marks or company names of other entities. The Complainant relies upon other UDRP cases against the Respondent, which are exhibited at Exhibit 13 to the Complainant. It submits that the Respondent has engaged in a pattern of “cybersquatting” which strengthens the inference of bad faith.

(3) The Respondent had prior knowledge of the Complainant’s rights in the mark CHINESE LAUNDRY, which is clear from the fact that the site has identified the Complainant’s website and provides a link to the same and the fact that the Respondent includes links to the identical types of goods sold by the Complainant. Further, the Complainant asserts that, given the widespread use of its mark, it would be disingenuous for the Respondent to contend that it had never encountered the CHINESE LAUNDRY mark. See General Electric Company v Basalt Management, WIPO Case No. D2000-0095.

(4) The Respondent is using initial interest confusion to make commercial gains. Because the value of a domain name is often influenced by the number of times a site is visited, the Respondent is using the domain name to divert those customers seeking the Complainant’s website to increase traffic to the domain name and thereby increase its value. The Complainant asserts other information in the Complaint about the Respondent use of the domain name in a similar regard.

(5) There is a pattern of conduct by the Respondent whereby it has registered the domain names in order to prevent the trade marks or service marks owners from using the marks in a corresponding domain names. See Julia Fiona Roberts v Russel Boyd, WIPO Case No. D2000-0210. In this regard, the Complainant refers to other “famous” names of other third parties which have been the subject of previous WIPO UDRP decisions, including, <ezrentacar.com> and <icebergclothing.com>.

On the basis of the above, the Complainant contends that the domain name <chineselaundryshoes.com> should be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The Respondent failed to respond to the Complaint. Pursuant to Rule 14(b), the Panel is entitled to draw such inferences from such failure as it considers appropriate.

Because the Respondent has not submitted a Response, the Panel accepts the reasonable allegations set out in the Complaint as true. See Rita Rudner v. Internetco Corp., WIPO Case No. D2000-0581, Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415, and Rule 5(e): “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint”.

However, acceptance of the allegations set out in the Complaint as true does not automatically lead to the Complainant being granted the remedy sought. The Complainant must establish all three of the elements set out in Paragraph 4(a) of the Policy on the balance of probabilities before an order can be made to transfer the domain name.

A. Identical or Confusingly Similar

The domain names in dispute is <chineselaundryshoes.com>. Mr. Goldman has a United States trade mark registration for the words “Chinese Laundry”. CELS is the exclusive licensee of the CHINESE LAUNDRY mark, owned by Mr. Goldman. It is established that an exclusive licensee of a trade mark or a related company to the registered holder of the mark is considered to have rights in the trade mark. Accordingly, the Panel finds that the Complainant has trade mark rights in the words CHINESE LAUNDRY.

The domain name in dispute and the Complainant’s trade mark are not identical, and the issue is therefore whether the domain names and the mark are confusingly similar.

As far as a comparison between the disputed domain name and the Complainant’s trade mark CHINESE LAUNDRY is concerned, the addition of the word “Shoes” to the words “Chinese Laundry” in the disputed domain names has, in the Panel’s view, minimal impact on what the viewer focuses on, namely, the words “Chinese Laundry”. In the Panel’s opinion, the Respondent has deliberately added the word “Shoes” to the words “Chinese Laundry” in the disputed domain name because, as the Complaint asserts, the Complainant’s CHINESE LAUNDRY trade mark has been in widespread use in connection with the sale of shoes.

This Panel’s view, as is consistently expressed in prior decisions, is that common nouns are rarely distinguishing elements. Where, as here, the common noun selected coincides with and denotes precisely the goods in respect of which the other element of the domain name is registered as a trade mark, confusing similarity is inevitable.

In each of Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty Ltd, WIPO Case No. D2001-0110 in respect of the domain name <ansellcondoms.com>; Christie’s Inc. v. Tiffany’s Jewelry Auction Inc., WIPO Case No. D2001-0075 in respect of the domain name <christiesauction.com>; Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020 in respect of the domain name <guinessbeer.com>; and GA Modefine SA v Mark O’Flynn, WIPO Case No. D2000-1424, in respect of domain name <armaniboutique.com>, the second element of each domain name represented the goods or services in respect of which each Complainant’s trade mark had been registered, and those goods or services which the general public would associate with that trade mark. Rather than removing or reducing the risk of confusing similarity from the domain names when compared with the trade marks in question, in such situations confusing similarity was regarded as inevitable.

The gTLD suffix “com” forming part of the domain names in dispute has no relevant distinguishing function.

The Panel also infers that the domain name <chineselaundrysoes.com> was chosen by the Respondent to cause Internet users to believe that the Complainant endorses or is associated with any website to which the domain names might resolve. The Panel in any event finds that the disputed domain name is confusingly similar to the Complainant’s CHINESE LAUNDRY trade mark and that the Complainant has proven paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complaint asserts that the Respondent has no rights or legitimate interests in the disputed domain name and, as stated above, the Respondent has provided no information to the Panel asserting any rights or legitimate interests it has in the disputed domain name. It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business.

Paragraph 4(c) of the Policy lists a number of circumstances, which, if proven to exist by the Respondent, can be taken to demonstrate a Respondent’s rights or legitimate interests in the domain name. However, there is no evidence whatsoever before the Panel that any of the situations described in paragraph 4(c) of the Policy apply in the case of the Respondent. There is no evidence to show that the Respondent is commonly known by the domain name in dispute. There is no evidence to show that the Respondent has used or made any demonstrable preparations to use the domain name in connection with any bona fide offering of goods or services. Rather the evidence referred to above is to the contrary and the use that has been made is in a way that is confusingly similar and damaging to the interests of the Complainant. The Respondent has provided no information to counter the assertion that the Respondent is using the domain name to misleadingly divert consumers for commercial gain. Diverting customers looking for the Complainant’s services on the Internet to competing companies’ websites is not a legitimate or bona fide use.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In the Panel’s view the evidence adduced by the Complainant demonstrates that the Respondent has linked the disputed domain name to the Complainant’s competitors’ websites offering the same or similar goods. This is compelling evidence of bad faith. By way of example, page 1 of Annex 6, Attachment E, to the Complaint is headed “Welcome to chineselaundryshoes.com” and then makes reference to “Steve Madden Shoes” by way of link on the left hand side of the web page.

In these circumstances the Panel finds that there is a clear intention on the part of the Respondent to mislead and divert customers for commercial gain in a way which is damaging to the interests of the Complainant.

Although, this evidence is sufficient to enable the Panel to find for the Complainant in respect of this element, the Panel also takes into account to support its finding the evidence of a past history of bad faith registration of domain names by the Respondent as evidenced by the previous decisions referred to in the Complaint. Further, the fact that, on occasion, the Respondent has linked the disputed domain name to the Complainant’s website, shows that the Respondent had prior knowledge of the Complainant’s rights in the CHINESE LAUNDRY mark.

Accordingly, based on the totality of evidence, and in the absence of a Response from the Respondent, the Panel finds that the domain name has been registered and is being used in bad faith by the Respondent within the meaning of paragraph 4(a)(iii) of the Policy.

 

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 remedy requested by the Complainant be granted and accordingly the domain name, <chineselaundryshoes.com> be transferred to the Complainant.


Isabel Davies
Sole Panelist

Dated: April 15, 2008

 

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-0239.html

 

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