WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sterling Jewelers, Inc. v. InterMos and Cosmos1
Case No: D2002-0899
1. The Parties
The Complainant is Sterling Jewelers, Inc., of Ohio, United States of America, represented by Renner Kenner et al. of the United States of America.
The Respondents are InterMos, of Moscow, Russian Federation and Cosmos1 of St. Petersburg, Russian Federation.
2. The Domain Names and Registrar
The disputed domain names are <jaredjewelers.com> and <kayjeweler.com>, both registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 27, 2002. On October 1, 2002, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the Domain Names at issue. On the same day, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response, confirming that Respondents are listed as registrants, providing the contact details of Respondents and confirming that the Uniform Domain Name Dispute Resolution Policy applies to the Domain Names. 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 Respondents of the Complaint, and the proceedings commenced on October 4, 2002. In accordance with the Rules, paragraph 5(a), the due date to respond was October 24, 2002. The Respondents did not submit any response. Accordingly, the Center notified the Respondentsí default on October 28, 2002.
The Center appointed Anne-Virginie Gaide as the sole panelist in this matter on November 21, 2002. 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
Complainant is the owner of the following U.S. trademark and service mark registrations:
• JARED THE GALLERIA OF JEWELRY, registered on January 10, 1995, in relation to the following services of class 42: "retail jewelry store services" (reg. no. 1,872,975);
• KAY, registered on April 16, 1963, in relation to the following services of class 42: "retail jewelry and appliance store services" (reg. no. 748,204);
• KAY, registered on March 28, 1989, in relation to the following goods of class 3: "liquid jewelry cleaner" (reg. no. 1,531,545);
• KAY, registered on March 25, 1997, in relation to the following goods of class 3: "liquid jewelry cleaner" (reg. no. 2,047,920).
The Domain Name <kayjeweler.com> was registered on January 4, 2001.
The Domain Name <jaredjewelers.com> was registered on November 10, 2001.
According to a WHOIS report of July 27, 2002, the registrant for the Domain Name <jaredjewelers.com> was InterMos. On July 29, 2002, Complainant sent a cease and desist letter to InterMos by airmail and e-mail (using the address firstname.lastname@example.org indicated in the WHOIS report), in which it invoked an infringement of its trademark JARED THE GALLERIA OF JEWELRY and requested the transfer of the Domain Name <jaredjewelers.com>. On August 9, 2002, Complainant received an e-mail from Grand<email@example.com> stating: "Our client agree [sic] to transfer this Domain in 2 days to You. He asks $1000. Thank you! Admin". On the same day, Complainant replied that it was willing to reimburse the registrant for its expenses in the amount of $100 US, and that the request for $1000 was evidence of bad faith.
On September 10, 2002, having learned the existence of the registration of the Domain Name <kayjeweler.com>, Complainant sent another cease and desist letter to InterMos, invoking an infringement of its mark KAY and requesting the transfer of the Domain Name. On the same day, Complainant received an e-mail from the address "OK"<firstname.lastname@example.org>, stating only:"$1000 for both". On September 11, 2002, Complainant offered to pay $250 for both Domain Names. A reply was sent on September 12, 2002, from the same address "OK"<email@example.com>, stating: "no trade here, last deal $1000 for both".
A WHOIS check performed on September 13, 2002, showed that registrant for the Domain Name <jaredjewelers.com> had changed to Cosmos1, with different contact details.
At the time of the filing of the Complaint, both Domain Names resolved to a web page with the title "Search for the Hottest Topics on the Web!", a printout of which was submitted with the Complaint. A list of topics appeared on this page, including "jewelry". As visible on another printout provided by Complainant, a list of links to jewelry related websites was available on the website under the title "jewelry", presumably as a result of a search on the topic "jewelry".
5. Partiesí Contentions
Complainant submits the following contentions:
InterMos and Cosmos1 are one and the same entity, as evidenced by the fact that the domain servers for both Domain Names remained identical even after the registrant for the domain name <jaredjewelers.com> changed from InterMos to Cosmos1. Complainant also points out that the e-mail address for this Domain Name (firstname.lastname@example.org) was the same as the one mentioned in the WHOIS report for the domain name <theyou.com> (apparently related to the matter as replies were sent to Complainant from the address "OK"<email@example.com>) and as the one mentioned in the WHOIS report for the domain name <ownbox.com> (also related as "www.ownbox.com" is the address of the page to which the Domain Names resolve).
Complainant has continuously used the marks JARED THE GALLERIA OF JEWELRY and KAY in connection with jewelry stores since 1993 and has expended considerable efforts in promoting the renown and reputation associated with the marks, which have become synonymous with high quality in regard to jewelry store services. Additionally, Complainant has used "Kay Jewelers" as a trade name for its jewelry stores since at least 1993. Complainant maintains a website at "www.kayjewelers.com".
The Domain Name <jaredjewelers.com> is confusingly similar to Complainantís service mark JARED THE GALLERIA OF JEWELRY because it incorporates a substantial portion of the mark and is essentially identical in meaning to the registered mark. The Domain Name <kayjeweler.com> is confusingly similar to Complainantís trademark KAY because it incorporates a substantial portion of the mark, changing the plural "jewelers" to the singular "jeweler".
Respondent has no rights or legitimate interests in the Domain Names. The sole use of the Domain Names has been to forward Internet traffic to the same search page, "www.ownbox.com". This search page is used as a means for providing "pop-up" advertisements to Internet users who arrive at this domain.
The Domain Names have been registered and used in bad faith for several reasons.
First, the fact that Respondent required $1000 in exchange of the transfer of the Domain Names is evidence that Respondent registered the Domain Names for the purpose of selling them to the Complainant for valuable consideration in excess of its documented out-of-pocket costs, within the meaning of paragraph 4(b)(i) of the Policy.
Second, Respondent attempted to attract Internet users to a website for commercial gain, within the meaning of paragraph 4(b)(iv) of the Policy. Indeed, when users of the domain name <jaredjewelry.com> [sic] selected a category such as jewelry, they received "pop-up" advertisements, presumably generating income for the Respondent or providing an opportunity to do so. Furthermore, a search conducted for "jewelry" referred to a number of websites which are competitors of Complainant. Even if the confusion created with Complainantís mark is only temporary (which is sometimes referred to as "initial interest confusion"), such confusion may make Internet users more likely to abandon their efforts to find Complainant. This is sufficient to find a likelihood of confusion.
Third, bad faith registration and use are demonstrated by Respondentís failure to provide correct contact information to the Registrar. The letters sent by airmail to both street addresses of Respondent were indeed returned as undeliverable.
The Respondent(s) did not reply to the Complainantís contentions.
6. Discussion and Findings
Preliminary Issue: Filing of a Single Complaint
The Complaint names two Respondents, InterMos and Cosmos1, in relation to two different Domain Names. In such circumstances, the filing of one single Complaint will be considered appropriate only if the Panel can be satisfied that the two Respondents are in fact the same entity (see Yahoo!, Inc. v. Somsak Sooksripanich and Others, WIPO Case No. D2000-1461 and America Online, Inc. v. Johuathan Investments, Inc. and AOLLNEWS.COM, WIPO Case No. D2001-0918).
According to the most recent WHOIS search results on the record, the registrants have different names and addresses, and different contact details. However, it can be observed that the domain servers listed in the WHOIS results for both Domain Names remained identical.
Also, the person behind the e-mail address "OK"<firstname.lastname@example.org> had obviously authority to dispose of the two Domain Names, as he/she required, on September 10 and September 12, 2002, US$ 1000 for the transfer of both Domain Names. At that time, the Domain Name <jaredjewelers.com> was already registered in the name of Cosmos1 (and not anymore in the name of InterMos). The WHOIS report of September 13, 2002, indicates indeed that the record for this Domain Name was last updated on July 29, 2002, (the date on which Complainant sent its first cease and desist letter to InterMos). Thus, even though the Domain Names were already registered in the name of different registrants, one single person or entity remained responsible for deciding the fate of both Domain Names.
Moreover, even though the e-mail address of the administrative contact for the Domain Name <jaredjewelers.com> was, after July 29, 2002, not email@example.com but firstname.lastname@example.org, the reply to Complainantís first cease and desist letter, sent on August 9, 2002, came from email@example.com.
Finally, as Complainant points out, the e-mail address of the administrative contact for <jaredjewelers.com> (firstname.lastname@example.org) is the same as the one indicated in the WHOIS report for two domain names in close relation with the Domain Name <kayjeweler.com>, i.e. <theyou.com> and <ownbox.com> (indeed, e-mails concerning both Domain Names were sent from the address email@example.com and both Domain Names resolved to the website www.ownbox.com).
In such circumstances, and absent a response from Respondents, there is sufficient evidence that both Respondents are in fact the same person or entity, or entities controlled by the same person or entity, so that the filing of one single Complaint is justified. Respondents will therefore be referred to hereafter in the singular.
A. Identical or Confusingly Similar
The Complainant owns the service mark JARED THE GALLERIA OF JEWELRY. The Panel finds that the Domain Name <jaredjewelers.com> is confusingly similar to Complainantís mark, because it incorporates the most distinctive element of such mark, i.e. JARED, and combines it with a descriptive term, i.e. JEWELERS, which is very similar in appearance and meaning to the last term of the trademark, JEWELRY. The absence from the Domain Name of the term GALLERIA is not decisive, because this term, which is easily understood as meaning "gallery", is not very distinctive compared to the term JARED, which has no particular meaning (except from being a first name). Moreover, as the middle term, the word GALLERIA is not apt to mark much consumersí memory.
The Complainant also owns three registrations for the mark KAY. The Panel finds that the Domain Name <kayjeweler.com> is confusingly similar to this mark, because it incorporates totally Complainantís mark, and combines it with a descriptive term, i.e. JEWELER. The addition of this term is not apt to influence much the impression produced by the Domain Name, which is dominated by the distinctive word KAY.
Accordingly, the Panel is satisfied that the Domain Names are confusingly similar to marks to which Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has not replied to the Complaint, and has not alleged any rights or legitimate interests in the Domain Names, even though the notification of the Complaint by e-mail appears to have been successful.
Moreover, nothing in the documents on record appears to warrant a finding of rights or legitimate interests on the part of Respondent. In the e-mails sent to Complainant, Respondent only offered to sell the Domain Names for a certain price, but did not give any explanation concerning the legitimacy of the registration and use of the Domain Names. The Domain Names do not resolve to a website on which jewelry related goods or services are offered, but to a search page including the item "jewelry" among others. The names "jaredjewelers" and "kayjeweler", or variations therefore, do not appear at all on the available excerpts of the website.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
• Knowledge of Complainantís Mark
For bad faith to be found, it must appear at least likely that Respondent knew of Complainantís marks when the Domain Names were registered.
The distinctive elements of Complainantís marks, JARED and KAY, do not have a particular meaning to the knowledge of the Panel, but may be encountered as first names in English-speaking countries. These terms are therefore not purely fantasy words, and may, in theory, possibly be chosen to be incorporated in a domain name by coincidence. This being said, it seems highly unlikely that the same registrant would, by coincidence and without knowledge of Complainantís marks, chose both of these not so common names and combine them with terms that correspond to the line of business of Complainant. Although Complainant has not alleged that it operates stores in Russia, it has a presence on the Internet with the website "www.kayjewelers.com", so that Respondentís actual knowledge of Complainantís business appears likely.
• Paragraph 4(b)(i) of the Policy
Complainant is of the opinion that Respondentís willingness to sell the Domain Names for the price of $1000 to Complainant is evidence that it registered the Domain Names primarily for the purpose of selling them to Complainant for an amount in excess of its out-of-pocket expenses, within the meaning of paragraph 4 (b)(i) of the Policy. The Panel is not convinced of this. Indeed, the Domain Names were registered on January 4, 2001, and November 10, 2001 respectively. Before Complainant sent a cease and desist letter to InterMos on July 29, 2002, Respondent had never made contact with Complainant. Respondent only replied to Complainantís request that the Domain Name <jaredjewelers.com>, and then the Domain Name <kayjeweler.com> be transferred to Complainant. This is not sufficient to demonstrate satisfactorily that registration of the Domain Names was made for the purpose of selling them to Complainant or to a competitor. Furthermore, nothing on the website to which the Domain Names resolve indicates that Respondent was engaged in the sale of domain names.
• Paragraph 4 (b)(iv) of the Policy
On the other hand, the Panel agrees with Complainant that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainantís marks as to source, sponsorship, affiliation or endorsement of its website, within the meaning of paragraph 4 (b)(iv) of the Policy.
As to the commercial nature of Respondentís site, it is likely even though no goods or services appeared to be directly offered on the website. According to Complainant, the page "www.ownbox.com" was used as a means for providing "pop-up" advertisements to Internet users arriving at this site. An indication that Respondent was deriving profit from advertisements (as alleged by Complainant) is given by one banner appearing at the bottom of one excerpt provided Complainant, stating: "Fast Cash Dollars! You are automatically pre-approved just click here. Your fast cash will be in your checking account in just 24 hours just by clicking [end not readable]." In any event, if the website was a non profit site, Respondent had the opportunity to say so in a response. The Panel infers from Respondentís default, as allowed by paragraph 14 (b) of the Rules, that Complainantís contentions are correct in this respect.
By using domain names confusingly similar to Complainantís marks, Respondent intentionally attempted to divert consumers looking for Complainantís on-line location to its search page, where one click on the item "jewelry" sufficed apparently to obtain a list of links to jewelry related websites or pages (as shown on the printout provided by Complainant). It is not necessary to decide here whether confusion shall be found even when the respondentís website has obviously no relation whatsoever with Complainantís business, so that Internet users must realize very quickly that it is not sponsored or endorsed by Complainant (on this issue of "initial interest confusion", see Autosales Incorporated v. Don Terril, WIPO case no. D2001-1341 and the cited decisions). Indeed, the presence of the item "jewelry" among the topics to search on Respondentís website was in the present case apt to confuse consumers as to the Complainantís endorsement of the website, even though the home page of the site made no reference to Complainantís marks or business. Consumers could be led to believe in this respect that Complainant was affiliated with the site in order to be listed in the search results for "jewelry".
The Panel holds therefore that the requirements of paragraph 4 (b)(iv) of the Policy are met here.
• Other circumstances
Finally, the fact that Respondent gave false contact details to the Registrar, except for the e-mail address firstname.lastname@example.org, is an additional indication of Respondentís bad faith, as it appears at an attempt to disguise its true identity and whereabouts.
Accordingly, the Panel finds that the Domain Names were registered and used in bad faith.
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 names <jaredjewelers.com> and <kayjeweler.com> be transferred to the Complainant.
Dated: December 5, 2002