WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Federated Western Properties, Inc. v. Burdines CoffeeHaus
Case No. D2000-0684
1. The Parties
Complainant is Federated Western Properties, Inc., an Ohio (USA) corporation, 4441 South Polaris Avenue, Las Vegas, Nevada (USA), represented by Anthony F. LoCicero, Amster, Rothstein & Ebenstein, 90 Park Avenue, New York, New York (USA), hereinafter the "Complainant."
Respondent is Burdines CoffeeHaus, 7634 56th Avenue North, San Francisco, California 94111 (USA), hereinafter the "Respondent."
2. The Domain Name and Registrar
The domain name at issue is Burdines.com. It is referred to as the Domain Name. The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s complaint on June 26, 2000, (electronic version) and June 28, 2000, (hard copy). The Center verified that the complaint satisfies the formal requirement of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is September 18, 2000.
On September 15, 2000, the Center transmitted via email to Network Solutions, Inc., a request for registrar verification in connection with this case. On September 15, 2000, Network Solutions, Inc. transmitted via email to the Center, Network Solutions’ Verification Response, confirming that the Respondent is the registrant and that the contact for administrative, billing, and technical matters is Frank Johnson.
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on September 18, 2000, to the Respondent Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier, facsimile and e-mail. The postal addresses used for Respondent was as follows:
7634 56th Avenue North
San Francisco, California 94111 (USA)
No response was received. The Center notified Respondent of its default on October 10, 2000, (email and hard copy).
On October 17, 2000, in view of the Complainant's designation of a single panelist (but without prejudice to any election to be made by the Respondent) the Center invited Mr. Richard G. Lyon to serve as a panelist.
Having received Mr. Lyon’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date was October 30, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint the evidence presented by Complaint, the Policy, the Rules, and Supplemental Rules.
4. Factual Background
As Respondent has not replied to the Complaint, the following description of the factual background is taken almost entirely from the Complaint and the exhibits submitted with the Complaint.
Complainant is the owner of the United States Trademark Burdines, registered with the United States Patent and Trademark Office in October 1993, for retail department services in International Class 42. Complainant also owns another registered United States trademark, for Burdines the Florida store, in Class 42. These two trademarks are referred to as the "Marks". The Burdines name is used for a number of retail department stores operated by Complainant.
Respondent appears to be a fictitious entity. According to the Complaint, there is no business being conducted at Respondent's listed address, the State of California has no record of any company by the name of Burdines Coffee House, and Dun & Bradstreet similarly have no such listing. Respondent has no registered trademarks using the word Burdines. When one enters the address for Burdine.com on the World Wide Web, there is an immediate link to a cite called clickheretofind.com, which appears to be an index for various sellers’ products and services. There is no mention of the word Burdines on this website homepage. Respondent does not appear to be using the Burdines name in any way.
5. Parties’ Contentions
Complainant. Complainant contends that Respondent registered and is using the Domain Name in bad faith, since Respondent has no trademark registration and does not appear to conduct any business using the word Burdines. Complainant also alleges that at one point in time the Burdines.com webpage was linked to a webpage entitled "JoinOnce.com", "which featured information relating to competitors of [Complainant] and its licensee Burdines, Inc. "(Complaint, ¶ 3). Complainant alleges that these actions were "calculated to engender confusion among the purchasing public and the trade by falsely indicating that [Respondent] is associated with or authorized by
Federated . . ." ibid.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative 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."
Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name is registered by the Respondent is identical to the trademark in which the Complainant has a right;
(2) that the Respondent has no legitimate interests in respect to the Domain Name; and
(3) that the Domain Name has been registered and used in bad faith.
The Main Domain Name is identical with the principal distinctive word in Complainant's Marks and therefore is clearly likely to cause confusion with the Marks. Even without proof of an intention to mislead, Complainant has demonstrated a likelihood of confusion.
B. Legitimate Interest
Complainant has not licensed or otherwise permitted Respondent to use any of its Marks in any manner. In the absence of any showing of legitimate use by Respondent, the Panel finds that Respondent has no right or legitimate interest in the Domain Name.
C. Use In Bad Faith
Complainant's allegation of an immediate link to the website of its licensee’s competitor remains unanswered and is evidence of bad faith in both registration and use. The Panel finds that use of another's distinctive trademark by one operating a website is inherently likely to mislead the buying public into thinking that the domain name and the website for which it is used are somehow associated the trademark owner. While there are possible permitted uses or other justifications, Respondent has offered none. Complainant has therefore has proven bad faith as required by the Rules.
The Administrative Panel finds that the Domain Name registered by Respondent incorporates a registered trademark of Complainant; that the Respondent has no right or legitimate interest in respect to the Domain Name; and that the Respondent’s Domain Name has been registered and is being used in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, the Administrative Panel requires that the registration of the Domain Name be transferred to the Complainant.
Richard G. Lyon
Dated: October 31, 2000