WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ross-Simons, Inc. v. Marketworks
Case No. D2004-0061
1. The Parties
The Complainant is Ross-Simons, Inc., Cranston, Rhode Island, United States of America. The Complainant is represented by Hinckley, Allen & Snyder, LLP, Boston, Massachusetts, United States of America.
The Respondent is Marketworks, New York, New York, United States of America.
2. The Domain Name and the Registrar
The domain name in dispute that is the subject of this Complaint is <wwwross-simons.com>. The Registrar of this domain name is Stargate.com, Naperville, Illinois, United States of America.
3. Procedural History
Issuance of Complaint
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy which was implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 (the "Policy") and under the Rules for Uniform Domain Name Dispute Resolution Policy that was implemented by ICANN on the same date (the "Rules"). It was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 23, 2004.
3.2 The Center verified that the Complaint (together with the amendments to the Complaint) satisfied the formal requirements of the Policy, the Rules and WIPO Supplement Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplement Rules").
3.3 On January 26, 2004, the Center transmitted by e-mail to Stargate.com a request for registrar verification in connection with the domain name in dispute. On February 12, 2004, the Center sent a second e-mail to Stargate.com reminding them of the Center's request. On February 13, 2004, Stargate.com transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the Registrant and provided the contact details for the administrative, billing and technical contact. It also confirmed that the domain name at issue <wwwross-simons.com> will remain locked during the pending administrative proceeding.
3.4 In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint on February 16, 2004, and, in accordance with the Rules, Paragraph 5(a), advised that the deadline due date for response was March 7, 2004. The Respondent did not submit any response. Accordingly, on March 31, 2004, the Center notified the Respondent of the default and its failure to comply with the deadline. The Respondent was also advised that the proceedings would proceed with a single-member administrative panel as requested by the Complainant and that the Center would continue to forward to both parties all case-related communication as stated by the contact details provided by Stargate.com.
3.5 On April 21, 2004, the Center appointed as the sole panelist, John E. Kidd (the "Administrative Panel") in this matter. The Center also issued to both parties a Notification of Appointment and the projected decision date of May 5, 2004. The Administrative Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to insure compliance with the Rules, Paragraph 7.
3.6 Having reviewed the communication records, the Administrative Panel 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." In the view of the Administrative Panel, the proper procedures have been followed, and the Administrative Panel was properly constituted. The Administrative Panel may issue its decision based upon the documents submitted and in accordance with the Policy, Rules and Supplement Rules without the benefit of any response from Respondent. In light of Respondent's failure to submit a response, the Administrative Panel, pursuant to the Rules, may draw such inferences, including adverse inferences, as it considers appropriate. See Charles Joardon Holdings AG v. AAIM, (WIPO Case No. D2000-0403, June 17, 2000).
4. Factual Background
4.1 The Complaint has asserted, has provided evidence in support of; and, the Administrative Panel finds, has established the following facts:
4.2 The Complainant is a U.S. corporation, duly organized and existing under the laws of the State of Rhode Island under the name, Ross-Simons, Inc., and for over the past fifty (50) years has sold fine jewelry, tableware, gifts, collectibles, home décor and related items under that name. The Complainant conducts its business through its retail and outlet stores called ROSS-SIMONS and its mail-order and on-line catalogs of the same name. Today Complainant mails more than sixty (60) million ROSS-SIMONS catalogs to consumers each year and its on-line catalog which is located at "www.ross-simons.com" operates twenty-four (24) hours a day and reaches millions of consumers.
Complainant's Trade Name and Trademark
4.3 The Complainant is the registered owner of the U.S. service mark, ROSS-SIMONS, receiving trademark mark registration no. 1,317,429 on January 29, 1985, for retail store and mail order services specializing in jewelry, china, silver and gift items. The application for the mark was filed on May 29, 1984, and published for opposition on November 20, 1984. Since 1952, Complainant has substantially, continuously and exclusively used the mark ROSS-SIMONS in connection with its business. As a result of its continuous and exclusive use of the mark, ROSS-SIMONS, Complainant, since at least as early as 1954, has built up substantial value and goodwill in its ROSS-SIMONS registered mark. Through its efforts the Complainant has established a strong customer base, and it is known throughout its trading area as a provider of quality jewelry, tableware, collectibles, home decor and related items, and services via its retail stores, mail-order and on-line catalog.
By virtue of the quality of its products and services and as a result of its expenditure of considerable sums of money on advertising and promotional activities, Complainant has built up valuable goodwill in its registered mark, ROSS-SIMONS.
Complainant's Use of Internet
4.4 The Complainant is also the registrant of the domain name, <ross-simons.com> as of May 16, 1996, and it has operated a website and on-line catalog at this Internet address since at least December 1996. Complainant's registered mark, ROSS-SIMONS, is prominently featured on its website and has been featured on the website since December 1996.
Complainant uses its ROSS-SIMONS website to advertise, promote and sell its product line. The website operates twenty-four (24) hours per day, and it permits customers to browse and order ROSS-SIMONS product lines from the on-line catalog, purchase gift certificates and track orders. The website also communicates special events and promotions to its customers, as well as providing customer service information.
Complainant's Affiliate Program
4.5 The internet has become an important communication and marketing tool and revenue source for Complainant. In order to increase its presence on the Internet and its on-line sales, Complainant has established and implemented an affiliate program that redirects inquiries from Internet users. The Complainant's program permits owners of e-commerce websites to provide a link to Complainant's on-line catalog in the form of a banner ad or text link. When a customer of the affiliate's e-commerce site clicks on the link to Complainant's website and then purchases a product from Complainant's on-line catalog, the affiliate earns a commission based upon the value of the sale of the merchandise.
Respondent's Identity and Activities
4.6 Respondent is the registrant of the Internet domain name <wwwross-simons.com>. Respondent registered the domain name in dispute on January 4, 2003. Sometime after Respondent registered the domain name in dispute, Respondent became an affiliate of Complainant. At that time, Respondent began using the domain name in dispute to obtain commissions from Complainant's affiliate program by redirecting consumers who mis-type Complainant's domain name by omitting the period after "www", through a series of websites, to the ROSS-SIMONS on-line catalog. This redirection is not transparent to consumers.
5. Parties Contentions
A. The Complaint
5.1 The Complainant states that Respondent registered the domain name in dispute on January 4, 2003, without the consent or authorization of Complainant. The Complaint contends that each of the three elements specified in Paragraph 4(a) of the Policy is applicable to this dispute. In relation to element (i), the Complaint contends that Respondent's <wwwross-simons.com> is legally identical to Complainant's registered <ross-simons.com> domain name. Complainant further contends that adding the letters "www" in front of Complainant's mark is "typo-squatting" for purposes of exploiting users typographical mistakes when seeking Complainant's site and that such action creates a domain name confusingly similar to Complainant's trademark.
5.2 In relation to element (ii) of Paragraph 4(a) of the Policy, the Complainant contends that Respondent has no rights or legitimate interest with Complainant's registered mark, ROSS-SIMONS, or the <ross-simons.com> domain name. Complainant cites the following factors to support this allegation namely: Respondent's domain name does not comprise its legal name; Respondent did not, prior to notice of this dispute, use the disputed domain in connection with any bona fide offering of goods or services; Respondent has not made a bona fide, non-commercial nor fair use of the domain in dispute; Respondent is using the domain name to divert Internet traffic to its website and such redirecting is not a bona fide offering of goods or services nor a legitimate non-commercial or fair use; Complainant never authorized, licensed or otherwise permitted Respondent to use its registered mark, ROSS-SIMONS, or any variation thereof; and Complainant never authorized, licensed or otherwise permitted Respondent to apply for or use any domain name comprising or incorporating Complainant's registered mark, ROSS-SIMONS, or any confusingly similar variation thereof.
5.3 In relation to element (iii), the Complainant contends that bad faith registration and use is established by the following circumstances: intentionally registering a misspelling of Complaint's registered mark for purposes of intentionally attracting internet users to Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website or of a product or service on Respondent's website; using a confusingly similar domain name to redirect unsuspecting internet users, who are attempting to reach Complainant's website, in order to gain a profit off of Complainant; as a member of Complainant's affiliate program it should be inferred that Respondent had actual knowledge of Complainant's rights in the registered mark, ROSS-SIMONS, when it registered its <wwwross-simons.com> domain name.
B. The Response
5.3 The Respondent did not file a Response to the Complaint.
6. Discussion and Findings
6.1 Identical or Confusingly Similar Domain Name
The Complainant has established that it has a distinctive mark and that it is a well known, strong mark of significant value to the Complainant. The domain name in dispute is <wwwross-simons.com>. For the purposes of this decision the relevant part of this domain name is <ross-simons>. The Administrative Panel finds that this part of the domain name in dispute is identical to the trademark registration, ROSS-SIMONS, which is owned and used by Complainant since 1952. The Administrative Panel finds that the registration of the domain name in dispute by Respondent was unauthorized, and was subsequent to Complainant's first use and registration of the ROSS-SIMONS mark.
The Administrative Panel also finds that the only difference between Complainant's domain name and Respondent's domain name in dispute is the addition of the prefix "www". This addition is not sufficient to avoid confusion. See InfoSpace.com, Inc. v. Registrar, Administrator Lew Blanck, (WIPO Case No. D2000-0069, April 3, 2000); Microsoft Corp. v. Stoneybrook, (WIPO Case No. D2000-1274, November 28, 2000); and The Sports Authority Michigan, Inc. v. Internet Hosting, (FA0209000124516, November 4, 2002).
The Administrative Panel finds that Respondent's domain name in dispute is confusingly similar to Complainant's trademark and domain name.
6.2 Respondent's Rights or Legitimate Interests in the Domain Name in Dispute.
The Respondent has not provided evidence of circumstance of the type specified in Paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name in dispute. The Administrative Panel is satisfied that the Complainant has made out a prima facie case that the domain name in dispute was registered and used by Respondent for the sole purpose of creating a likelihood of confusion with Complainant's mark and website address which, in the absence of any response from the Respondent, is sufficient to satisfy the second element of the test in Paragraph 4(a)(ii) of the Policy. See Bayer Aktiengesellschaft v. Yongho Ko, (WIPO Case No. D2001-0205, April 6, 2001). In view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its registered trademark or to apply for or use any domain name incorporating Complainant's mark, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name in dispute.
The Administrative Panel also views Respondent's failure to respond as further evidence that it has no rights or legitimate interests in the domain name in dispute. See Pavillion Agency, Inc. v. Greenhouse Agency, Ltd., (WIPO Case No. D2000-1221, December 4, 2000)
Domain Name Registered and Used in Bad Faith
6.3 The Administrative Panel has considered whether, in the circumstances of this particular Complaint, the acts of Respondent amounted to acting in bad faith. It concludes that it does. The circumstances of this case that lead to this conclusion are:
a. The Complainant's registered mark is a strong mark that is well known in the trade. This is evidenced by the substantial and continuous use of the registered mark, ROSS-SIMONS, for over fifty (50) years; the massive mailing of more than sixty million ROSS-SIMONS catalogs to consumers each year; and the twenty-four (24) hour on-line website <ross-simons.com> that reaches millions of consumers.
b. The Complainant has made a prima facie case from which it can be inferred that Respondent had actual knowledge of, or should have been aware of, Complainant's rights in the mark and domain name site use of ROSS-SIMONS. Registration of a domain name that creates confusion, with actual knowledge of Complainant's rights, as the uncontested facts shown here, is evidence of bad faith.
c. The Administrative Panel also finds that the Respondent is, in fact, using the disputed domain name misleadingly in order to attract "for commercial gain, Internet users to Respondent's website . . . by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website." In the opinion of the Administrative Panel, this is an example of bad faith use and registration under the Policy.
d. The Administrative Panel finds that the Respondent is also using a confusingly similar domain name for its own financial gain by causing confusion among Internet users. This type of behavior is evidence of bad faith registration and use. See The Sports Authority Michigan, Inc. v. Lajas Szabo, (NAF Claim No. 139694, February 4, 2000).
e. The Administrative Panel also finds, as another example of bad faith, the registering of a domain name which merely adds the prefix "www" while knowing that the domain name, without prefix, is owned and used by another and without proper permission or license to use the domain name. The Complainant has made a prima facie case that merely adding "www" to Complainant's domain name is a deliberate attempt by Respondent to exploit the typographical mistakes of Internet users when seeking Complainant's website. This qualifies as a form of "typo-squatting" which has been recognized as a bad faith use of a domain name under the Policy. See Bank of American Corp. v. Inter Mos, (NAF Claim No. FA95092, August 1, 2000) Complainant has shown clear and uncontested evidence that Respondent, via "typo-squatting" and use of its website, endeavored to gain commissions from Complainant by acquiring and using the domain name in dispute in bad faith.
f. The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name in dispute.
g. In light of these circumstances, the Administrative Panel concludes that the Respondent has both registered and used the domain name in dispute in bad faith.
The Administrative Panel decides that the Complainant has proven each of the three elements in Paragraph 4 of the Policy. Accordingly, the Administrative Panel for all of the foregoing reasons and in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules orders that the domain name <wwwross-simons.com> is to be transferred to the Complainant.
John E. Kidd
Dated: April 30, 2004