WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pier 1 Imports, Inc. and Pier 1 Licensing, Inc., v. Raymond E. Farr, Jr.

Case No. D2001-0357

 

1. The Parties

The Complainants in this proceeding are Pier 1 Imports, Inc., and Pier 1 Licensing, Inc., both Delaware corporations and both having a principal place of business at 301 Commerce Street, Suite 600, Fort Worth, Texas 76102, USA (hereinafter individually and collectively referred to as "Complainants").

The Respondent in this proceeding is Raymond E. Farr, Jr. ("Respondent"), the registrant of the domain name in issue with a listed mailing address of 19383 La Guardia St., Rowland Hts., California 91748, USA.

 

2. The Domain Name and Registrar

The domain name in issue is <pier2imports.com>.

The registrar of the domain name in issue is DomainBank, Inc. ("Registrar") located at 23 West 4th Street, Bethlehem, Pennsylvania 18015-1603, USA.

 

3. Procedural History

On March 12, 2001, the Complainants filed a Complaint with the WIPO Arbitration and Mediation Center ("Center") concerning the domain name <pier2imports.com> and paid the required filing fee for appointing a single member Panel.

On March 16, 2001, in response to a "Request for Verification" it received from the Center, the Registrar provided a Verification Response which stated, in pertinent part, that: (i) it is the registrar of the domain name <pier2imports.com>; (ii) "Raymond E Farr JR :-)" is the registrant of the domain name in issue with a listed mailing address of 19383 La Guardia St., Rowland Hts., California 91748, USA; (iii) the Registrar did not receive a copy of the Complaint; and (iv) the domain name is currently in "active" status.

Although the Registrar indicated in its Verification that it had not received the Complaint from the Complainants, the Complainants certified in the Complaint that a copy of the Complaint was sent to the Registrar by e-mail. Based upon this statement, the Center found the Complaint to be in compliance with the formal requirements of ICANNís Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANNís Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and WIPOís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").

On March 19, 2001, the Center sent a "Notification of Complaint and Commencement of Administrative Proceeding" ("Notification") and the Complaint to the Respondent at the e-mail addresses, postmaster@pier2imports.com and rayefarr@aol.com, and to the postal address and facsimile number listed in the domain name registration. Copies of the Notification and Complaint were also sent to the Registrar, ICANN and the Complainants. The Center did not receive error messages when the Notification and Complaint were sent to the above-mentioned e-mail addresses and facsimile number listed in the domain name registration. The Center did receive a notice from the courier service for non-delivery of the Notification and Complaint to the postal address listed in the domain name registration.

On April 11, 2001, after the twenty-day period had expired as required by paragraph 5(a) of the Rules and no response from the Respondent was received, the Center sent a "Notification of Respondent Default" to the Respondent by e-mail with a copy to the Complainants.

On April 20, 2001, the Center invited the undersigned Panelist to serve as a single member panel in this proceeding. On April 23, 2001, the Panelist submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" with the Center. On April 26, 2001, the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties notifying them that an Administrative Panel consisting of a single Panelist had been appointed in the proceeding.

Based upon a request from the Panelist, the Center sent Administrative Panel Procedural Order No. 1 on May 8, 2001, to the parties requesting further information concerning the Respondent's Website and Complainants' notice to the Respondent of their rights in the domain name in issue. On May 11, 2001, the Complainants submitted Complainants' Response to Administrative Panel Procedural Order No. 1 ("Complainants' Response") to the Center. No response was received from the Respondent in response to the Panelistís request.

Having reviewed the entire record submitted for this proceeding, the Panelist concurs with the Center's finding that the Complaint is in compliance with the Policy, Rules and Supplemental Rules and finds that the panel was properly constituted and appointed. The Panelist also finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" of this proceeding and that the Respondent is in default for failing to file a response to the Complaint or to the Administrative Panel Procedural Order No. 1. The Panelist shall therefore draw inferences from the Respondent's defaults as the Panelist considers appropriate based upon paragraph 14(b) of the Rules and shall issue a decision based on the Complaint, the Complainants' Response, the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

The Complaint is based on the mark PIER 1 IMPORTS registered with the U.S. Patent and Trademark Office. In support of the Complaint, the Complainants rely on the following U.S. registrations:

PIER 1 IMPORTS, Reg. No. 948,076 (first use and first use in commerce 8/65; issued 11/28/72) for retail gift store services;

PIER 1 IMPORTS, Reg. No. 1,620,518 (first use and first use in commerce 11/24/66; issued 10/30/90) for retail store services in the field of home furnishings, house-hold utensils and decorative items, toys and clothing;

PIER 1 IMPORTS FOR A CHANGE, Reg. No. 1,907,947 (first use and first use in commerce 8/1/93; issued 7/25/95) for retail store services in the fields of furniture, decorative home furnishings, dining and kitchen goods, textiles, clothing, jewelry and fashion accessories;

PIER 1 IMPORTS (stylized), Reg. No. 2,228,300 (first use and first use in commerce 1/85; issued 3/2/99) for retail store services in the fields of furniture, decorative home furnishings, dining and kitchen goods, textiles, toys and gifts;

PIER 1 IMPORTS (stylized), Reg. No. 2,225,971 (first use and first use in commerce 1980; issued 2/23/99) for retail store services in the fields of furniture, decorative home furnishings, dining and kitchen goods, textiles, toys and gifts; and

PIER 1 IMPORTS (stylized), Reg. No. 2,225,972 (first use and first use in commerce 1980; issued 2/23/99) for retail store services in the fields of furniture, decorative home furnishings, dining and kitchen goods, textiles, toys and gifts.

The Complainants provided copies of certified copies for three of the above registrations and provided registration information for the other three registrations in Annex 3 to the Complaint to show the Complainants' ownership of these registrations.

A search result from a query of the Registrar's Whois database shows that the domain name <pier2imports.com> was registered on August 2, 2000 to the Respondent and there is currently a corresponding Website accessible at this domain name.

A search result from a query of Network Solutions, Inc.'s Whois database shows that the domain name <pier1imports.com> was registered on August 8, 1997 to Pier 1 Licensing, Inc., and that there is a corresponding Website located at this domain name.

 

5. Partiesí Contentions

Complainants

The Complainants assert that Pier 1 Imports, Inc., is one of North Americaís largest specialty retailers of imported decorative home furnishings, gifts and related items with over 800 stores in 48 states as well as Canada, Puerto Rico, the United Kingdom, Mexico and Japan as of fiscal 2000 year-end. The Complainants assert that Pier 1 Imports, Inc., directly imports merchandise from over 60 countries around the world and designs proprietary assortments that become exclusive Pier 1 Imports offerings and that it reported record sales of $1,231.1 million for fiscal 2000. The Complainants assert that the stock of Pier 1 Imports, Inc., is publicly traded on NASDAQ under the symbol PIR and that Pier 1 Licensing, Inc., an indirect subsidiary of Pier 1 Imports, Inc., owns all of the company's marks.

The Complainants assert that they and their predecessors-in-interest have continuously used the trade name and mark PIER 1 IMPORTS in interstate commerce throughout the United States since August 1965 and own the six U.S. registered marks mentioned above.

The Complainants assert that the domain name <pier2imports.com> is virtually identical to the Complainantsí mark PIER 1 IMPORTS, but for the substitution of the number "2" for the number "1." The Complainants assert that the use of the PIER 1 IMPORTS mark long predates any use or registration of the domain name in issue by the Respondent of the <pier2imports.com> domain name.

The Complainants assert that the Respondent has no legitimate interest in the <pier2imports.com> domain name. The Complainants assert that the Respondent is not making a legitimate noncommercial or fair use of the <pier2imports.com> domain name nor has the Respondent been a licensee of the Complainants or received any permission or consent to register the domain name in issue. The Complainants also state that they did not make any prior attempts to contact the Respondent prior to the commencement of this proceeding.

The Complainants assert that the <pier2imports.com> domain name was registered by the Respondent primarily for the purpose of disrupting the business of a competitor (the Policy, ∂4(b)(iii)) because the domain name resolves to a Website that claims that Pier 2 Imports is a national distributor of unique and affordable gifts ranging from home furnishings, toys and gifts to fashionable jewelry. The Complainants allege that, assuming the information contained in the Respondentís Website is true and is not a pretext, the Respondent is a competitor of the Complainants and that the Respondent registered and is using the <pier2imports.com> domain name primarily to disrupt the Complainantsí business.

In the alternative, the Complainants allege that by using the <pier2imports.com> domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Website or other online location, by creating a likelihood of confusion with the Complainantsí mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís Website or location or of a product or service on the Respondentís Website or location (the Policy, ∂4(b)(iv)). As previously stated, the Complainants allege that the <pier2imports.com> domain name resolves to a Website that claims that Pier 2 Imports is a national distributor of unique and affordable gifts ranging from home furnishings, toys and gifts, to fashionable jewelry. The Complainants allege that, assuming that the information contained in the Respondentís Website is true and is not a pretext, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Website or other online location, by creating a likelihood of confusion with the Complainantsí PIER 1 IMPORTS mark. The Complainants submitted copies of pages of the Respondent's Website as evidence of the Respondent conducting business as a national distributor of unique affordable gifts ranging from home furnishings, toys and gifts to fashionable jewelry. The Complainants assert that this evidence reflects that the Respondent is intentionally attempting to attract for commercial gain Internet users to its Website and specifically cites for support a Web page from the Respondent's Website that shows home furnishing products being offered for sale.

Respondent

No responses were received from the Respondent with respect to this proceeding.

 

6. Discussion and Findings

The Proceeding - Three Elements

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN approved dispute resolution service provider that:

(i) the domain name holderís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and

(ii) the domain name holder has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and

(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").

The Panelist can only rule in a complainantís favor after the complainant has proven that the above-listed elements are present.

Element (i) - Domain Name Identical or Confusingly Similar to the Mark

A complainant in a proceeding brought under the Policy must have rights in the relevant trademark or service mark cited in that proceeding. In the present proceeding, the service mark documentation provided by the Complainants only shows Pier 1 Licensing, Inc., as being the listed owner of four of the six cited U.S. registrations. The Complainants did not provide an explanation in the Complaint as to the relationship between the Complainants and Pier 1 Imports Holdings, Inc., the listed owner in the documentation for U.S. Registration Nos. 948,076 and 1,620,518. Online searching concerning these registrations, however, verified that the Complainant, Pier 1 Licensing, Inc., is the last listed owner of these registrations with the U.S. Patent and Trademark Office. The Panelist therefore finds this sufficient to conclude that the Complainants have rights in the cited marks, particularly, the mark PIER 1 IMPORTS.

A comparison of the second-level domain "pier2imports" of the domain name in issue with the Complainantsí mark PIER 1 IMPORTS shows that the only difference between the second-level domain and the mark is the substitution of the number "2" for the number "1". Such a substitution does not prevent the domain name in issue from being considered confusingly similar to the Complainantsí mark PIER 1 IMPORTS. Based upon the evidence submitted and the uncontested assertions made by the Complainants, the Panelist therefore finds that Element (i) has been satisfied based upon the domain name being confusingly similar to the Complainantsí mark.

Element (ii) - Rights or Legitimate Interests in the Domain Name

Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panelist to be proven based on the evaluation of all of the evidence presented, can demonstrate the domain name holderís rights to or legitimate interests in the domain name. These circumstances include:

(i) before any notice to the holder of the dispute, the holderís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the domain name holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or

(iii) the domain name holder is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

No evidence has been presented that at any time have the Complainants ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the mark PIER 1 IMPORTS in any manner. Further, no evidence has been presented that the Respondent is commonly known by the domain name in issue, as a business, organization or otherwise, or could be considered as making any type of legitimate noncommercial or fair use of the domain name.

In addition, no evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the domain name in connection with any type of bona fide offering of goods or services. Rather the evidence provided by the Complainants shows that the Respondent is diverting Internet users, who misspell or make a typographical error when entering the Complainantsí domain name <pier1imports.com>, to a Website entitled "Pier2imports is a national distributor so why by [sic] retail" that offers for sale "unique affordable gifts ranging from home furnishings, toys and gifts to fashionable jewelry." The Respondentís offering of such goods and services for sale under a domain name that is confusingly similar to the Complainantsí mark coupled with that domain name directing Internet users to a site that furthers confusion suggests to those users that they are purchasing goods and services from the Complainants. Reviewing the evidence submitted and the findings in their entirety, the Panelist cannot find that such constitutes a bona fide offering of goods or services for sale by the Respondent. Accordingly, the Panelist concludes that the Respondent has failed to establish rights or legitimate interests in the domain name and that Element (ii) has been satisfied.

Element (iii) - Domain Name Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the domain name holder includes, but is not limited to:

(i) circumstances indicating that the holder has registered or has 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 that complainant, for valuable consideration in excess of the holderís documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderís website or other online 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 the holderís website or location.

Though the Complainants assert that the domain name was registered by the Respondent "íprimarily for the purpose of disrupting the business of a competitorí (the Policy, ∂4(b)(iii))," the Complainants have not provided any explanation concerning the Respondent's business or evidence to support such an assertion. Therefore, the Complainants may not rely on Paragraph 4(b)(iii) of the Policy in their attempt to prove bad faith.

The Complainants also assert that the Respondent by using the domain name in issue has intentionally attempted to attract, for commercial gain, Internet users to his Website or other online location, by creating a likelihood of confusion with the Complainantsí mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís site or location or of a product or service on the Respondentís site or location. Based upon the findings and evidence submitted, the Panelist concludes that the Respondent registered the domain name in issue primarily for the purpose of intercepting Internet users who, when attempting to access the Complainants' Website, mistakenly or inadvertently misspell or make a typographical error when entering the Complainants' domain name <pier1imports.com>. The evidence further supports a finding that the Respondent registered and is using the domain name in issue to create initial interest confusion among Internet users who visit the Respondent's site as to the source, sponsorship, affiliation or endorsement of the site and the products and services offered thereon for his apparent commercial gain. Accordingly, when considering this evidence and findings in their entirety, the Panelist concludes that the Respondent registered and is using the domain name in issue in bad faith and that Element (iii) has been satisfied.

 

7. Decision

The Panelist concludes that: (i) the domain name <pier2imports.com> is confusingly similar to the Complainantsí mark PIER 1 IMPORTS; (ii) the Respondent has no rights or legitimate interests in the domain name; and (iii) the Respondent has registered and is using the domain name in bad faith. The Panelist therefore requires that the registration of the domain name <pier2imports.com> be transferred to the Complainant, Pier 1 Licensing, Inc.

 


 

Marylee Jenkins
Sole Panelist

Dated: June 22, 2001