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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Forever 21 v. Matthias Moench

Case No. D2008-0258

 

1. The Parties

The Complainant is Forever 21, California, United States of America, represented by Stetina Brunda Garred & Brucker, United States of America.

The Respondent is Matthias Moench, Germany.

 

2. The Domain Name and Registrar

The disputed domain name <foever21.com> (herein the “domain name in dispute”) is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2008. On February 20, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On February 21, 2008, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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, by post, facsimile and the proceedings commenced on February 27, 2008. The Complainant filed a Supplemental Communication indicating that its messenger company, FedEx had been unable to deliver the Complaint to the Respondent at the address provided. 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 28, 2008.

The Center appointed J. Nelson Landry as the sole panelist in this matter on April 3, 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

The Complainant, Forever 21 Inc., is the owner of four trademark registrations in the United States of America for the trademark FOREVER 21 (herein the “Trademark” or the “Trademark Forever 21”). It has used the Trademark in association with retail store services for clothing, eyewear, cosmetics and jewelry since March 1, 1998 according to the date of first use and in commerce mentioned in a first trademark Registration No. 2,913,132 and then since March 1, 1989 for additional wares in the same classes (Registration 2,067,637). Then Registration No.2,583,457 indicates that the Trademark was used since January 4, 2001 with additional wares for men’s, women’s and children’s clothing and finally, the same Trademark was used in association for cosmetics since June 6, 2002, as shown in Registration No. 2,286,534.

The domain name <foever21.com> was registered by the Respondent on October 22, 2004 with registrar eNom, Inc. in Germany.

When an Internet user visits the website of the Respondent, it is directed to several websites of which nine resolve to competitors of the Complainant and one link does resolve to the website of the Complainant, namely “www.forever21.com”, according to Annex 4, dated December 11, 2004.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain name in dispute is confusingly similar to the Trademark in which it has rights since the domain name is the same as its Trademark wherein the letter “r” in “forever” has been deleted, thereby creating a misspelling of the Trademark when the domain name in dispute is pronounced with a “gangster slang pronunciation”. Furthermore, the Complainant contends that it is plausible that an Internet user could, by mistake, type “foever21” instead “forever21” and that, for these reasons, the domain name in dispute is confusingly similar with the Trademark of the Complainant.

The Complainant submits that there is no evidence of Respondent’s using the domain name in dispute with a bona fide offering of goods or services since the website of the Respondent has a link farm which directs visitors to at least nine competitors of the Complainant and relies on the decision of the panel in Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Services LLC, WIPO Case No. D2007-0524 which the Complainant contends held that a link farm website does not convey rights or legitimate interests in respect of a domain name.

Furthermore, according to the Complainant, Respondent is Matthias Moench with an email address at “tango@gaycastle.net” and therefore he is not commonly known by the domain name in dispute.

The Complainant further submits that the link farm website operation generates a small profit to the Respondent for each click made by an Internet user and this indicates the Respondent’s intent to profit by misleadingly diverting consumers away from the Complainant’s website. According to the Complainant, the Respondent does not make a legitimate non commercial or fair use of the domain name in dispute and therefore, has no rights or legitimate interests in the domain name in dispute.

The Respondent, according to the Complainant, registered the domain name in bad faith and is using it in bad faith.

The Complainant has put in evidence three panel decisions where, in each decision, the respondent is Matthias Moench which respondent, according to the Complainant, is the same person considering that Matthias Moench is a very unique name. The Respondent has therefore, as the Complainant represents, engaged in a pattern of preventing the owners of trademarks, from reflecting their trademarks in a corresponding domain name, since in the present case the domain name in dispute is nearly identical to the Trademark of the Complainant.

Considering the link farm in the website under the domain name in dispute, and the commercial gain for the Respondent, and the choice of a domain name substantially similar to the Trademark of the Complainant, which similarity would likely create confusion, according to the Complainant’s representation, it may be inferred that the Respondent has intentionally attempted to attract for commercial gain Internet users to the website of the Respondent by the creation of a likelihood of confusion and that the Respondent is intentionally attempting to divert Internet users away from Complainant’s website to the link farm of the Respondent and these activities constitute evidence of the use of the domain name in dispute in bad faith.

B. Respondent

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

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:

(i) 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

(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Prior to examining the requirements of Paragraph 4, the Panel wishes to observe and comment upon the difficulties of serving the Respondent with the Complaint. The Complaint was sent using three email addresses, “tango@gaycastle.net”, “postmaster@foever21.com” and “domain@gaycastle.com”. The email messages at “domain@gaycastle.com” and “postmaster@foever21.com” were returned undelivered with the indication of permanent fatal errors, however the email at the first address was not returned, therefore presumed served properly. A report by UPS Server, the messenger company used by the Center, indicates that the parcel was delivered and accepted at the Hamburg address, on February 28, 2008. On March 8, 2008, the Complainant filed a Supplemental Communication indicating that its messenger company, FedEx had been unable to deliver the Complaint to the Respondent at the address provided. It would appear from these facts that the Complaint was successfully communicated to the Respondent at least by one email message and once by special messenger delivery.

The Panel is satisfied that the Center took reasonable steps to serve the Complaint upon the Respondent, noting that the Complaint was successfully delivered upon the Respondent by special messenger and at the tango@gaycastle.net email address which is the given address for the Registrant, Administrative and Technical contacts of the Respondent in the WHOIS information results for the domain name in dispute, as it appears from Annex A to the Complaint.

A. Identical or Confusingly Similar

The Complainant has adduced evidence that it has commenced using the Trademark in association with retail store services for clothing, eyewear, cosmetics and jewelry in March 1988, expanded its wares first in March 1989 and then twice in 2001 and 2002 so that by such use and registration it had acquired rights in all the usages mentioned hereinabove which usage and rights had been acknowledged by the United States Patent and Trademark Office. The Panel finds that the Complainant has acquired rights in the Trademark.

Although the Complainant has not cited UDRP decisions to support this first contention, this Panel is well aware of several decisions wherein the panels have held that such minute difference, as eliminating a letter and adding a top level domain name suffix as “.com” does not deter an Internet visitor from being confused.

The Panel is of the same view as expressed before in UDRP decisions that the omission of a single letter from a trademark, here the letter “r” in the domain name in dispute does not on balance sufficiently distinguish it from the Trademark. Panels in earlier decisions which this Panel adopts, have qualified such practice as “typo-squatting” or “typo-piracy,” and this practice does not without move create a new or different trademark; see Hobson, Inc. v. Carrington, WIPO Case No. D2003-0317; Six Continents Hotels, Inc. v. John Zuccarini, WIPO Case No. D2003-0161; Dell Computer Corp. v. Clinical Evaluations, WIPO Case No. D2002-0423.

When, as here, a respondent is using a domain name to exploit a common typing mistake on the part of Internet users again as held in earlier UDRP precedents, such case of confusion satisfies a requirement of the Policy. See American Home Products Corporation v. Privateer Ltd., WIPO Case No. D2000-0455.

The Panel finds that the domain name in dispute is confusingly similar to the Trademark.

The first criterion has been met.

B. Rights or Legitimate Interests

The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interest in the domain name in dispute by stating that the Respondent, being Matthias Moench, has a rather unique name, has never been known by the name “Forever 21” or the domain name in dispute, and there is no legitimate non commercial or fair use of the domain name in dispute. The Respondent did not rebut this evidence.

There is evidence that the Respondent has used a link farm on its website under the domain name in dispute whereby it derives a profit and in a preponderance of instances (nine out of 10), it diverts the Internet visitor to the website of a competitor of the Complainant (Annex 4 Complaint). In the sole UDRP case on which the Complainant appropriately relies and which this Panel adopts, the panel held that under similar circumstances, a link farm website by itself does not convey rights or legitimate interests in respect of a domain name. See Costco,, supra.

Therefore the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.

The second criterion has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

The Complainant contends that the domain name in dispute was registered and used in bad faith.

The Complainant adduced evidence only as to its use and registration in the United States of America and none as to its use elsewhere nor to the extent of its sales and promotional costs, consequently this Panel cannot conclude that the Complainant enjoys any significant fame associated with the Trademark. This does not eliminate nor diminish the consequences of this small difference in the deletion of one letter and the addition of the top level domain name “.com”. It is clear to this Panel upon considering the single letter “r” difference in the domain name in dispute and the Trademark that the Respondent was in all likelihood aware of the existence of the Trademark of the Complainant at the time he registered the domain name in dispute. The alternative would in this Panel’s view be too much of a coincidence. As held by the panel in PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562, this alone may constitute registration in bad faith.

As the Complainant contends, the name Matthias Moench is rather unique, possibly more so to a North American person or party, but the Respondent had an opportunity to rebut this contention in filing a Response which he did not do. A review of the three decisions cited by the Complainant wherein the Respondent was also Matthias Moench, allegedly the same person as the Respondent in the present proceedings, supports such conclusion. It reveals firstly that the same name appears for the Respondent with only a change of address from Germany to Czech Republic. In a first UDRP decision rendered on August 16, 2006, in respect of the domain name <vor.eu> (.EU Case No. 01942) the respondent was Matthias Moench residing in Germany, in Frankfurt am Main, with an e-mail address at “domain@gaycastle.com”. Then, in 2007, there are two decisions which indicate that the Respondent Matthias Moench, in each case, is residing in the Czech Republic, one in respect of the domain name <fela.eu>, see FELA Elektronik GmbH v. Matthias Moench, 03266 (CAC April 7, 2007), in which proceedings the respondent did file a defense and another in the YouTube, LLC v. Matthias Moench, WIPO Case No. DCH2007-0010 in respect of seven domain names involving variations around “You Tube”. Secondly in both the “FELA” and “vor.eu” decisions the email address of the respondent Matthias Moench was in 2007 “domain @gaycastle.com” as in the present case.

When one considers that the present domain name in dispute was registered in March 2004 with an address in Germany prior to the registration of “vor.eu” in 2006 in Germany, this Panel finds that this evidence is consistent with and supports the contention of the Complainant that it is, in the absence of evidence to the contrary, the same respondent Matthias Moench in each of these four cases, which evidence reveals a pattern of behavior by the Respondent whereby he prevents the Complainant from reflecting the Trademark in a corresponding domain name.

As earlier panels found, such acts of type-squatting presents evidence of bad faith. See Dell Computer Corporation v. Clinical Evaluations, WIPO Case No. D2002-0423; Briefing.com Inc. v. Cost Net Domain Manager, WIPO Case No. D2001-0970. Furthermore the diversion of users to Respondent’s website to generate traffic and sales commissions for its own commercial benefit, amounts to a conduct uniformly recognized by an earlier panel decision to be in bad faith. See Net2phone v. Dynasty System Sdn Bhn, WIPO Case No. D2000-0679. This Panel does not consider that the presence of the website of the Complainant within the 10 addresses in the link farm diminishes in any way the use in bad faith of the domain name in dispute by the Respondent.

The Panel finds that the domain name in dispute has been registered in bad faith and also used in bad faith.

 

7. Decision

The Panel concludes that:

(a) the domain name <foever21.com> is confusingly similar to the Complainant’s Trademark; and

(b) the Respondent has no rights or legitimate interest in the domain name in dispute; and

(c) the domain name in dispute has been registered and is being used in bad faith.

For all the foregoing reasons and in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <foever21.com> be transferred to the Complainant.


J. Nelson Landry
Sole Panelist

Dated: April 16, 2008

 

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-0258.html

 

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