WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ross-Simons of Warwick, Inc. v. Admin Billing
Case No. D2004-0696
1. The Parties
The Complainant is Ross-Simons of Warwick, Inc., Cranston, Rhode Island, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.
The Respondent is Admin Billing, Tokyo, Japan.
2. The Domain Names and Registrar
The disputed domain names:
<wwwross-simonsdiamonds.com>, are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2004. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 13, 2004. On September 1, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On September 14, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint together with the amendment to 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, and the proceedings commenced on September 17, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was October 7, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2004.
The Center appointed Edward C. Chiasson Q.C. as the sole panelist in this matter on October 15, 2004. The Administrative Panel finds that it was properly constituted. The panelist submitted a 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 following information derives from the Complaint.
For over fifty years the Complainant has sold fine jewelry, tableware, gifts, collectables, home décor and related items.
The Complainant sells its jewelry, tableware, gifts, collectables, home décor and related items through its well-known retail and outlet stores ROSS-SIMONS and through its mail order and on-line catalogs of the same name.
The Complainant mails more than 60 million ROSS-SIMONS catalogs to consumers each year. In addition, the Complainant’s ROSS-SIMONS on-line catalog, which is located at <ross-simons.com>, operates 24 hours a day and reaches millions of consumers.
Since 1952, the Complainant has substantially, continuously and exclusively used the mark ROSS-SIMONS in connection with its business.
The Complainant is the owner of the following registered United States service mark:
Retail store and mail order services specializing in jewelry, china, silver and gift items.
As a result of its continuous and exclusive use of the mark ROSS-SIMONS since at least as early as 1954, the Complainant has built substantial value and goodwill in its ROSS-SIMONS registered mark.
Through its efforts, the Complainant has established a strong customer base and is known throughout its trading area as a provider of quality jewelry, tableware, collectibles, home décor and related items and retail store, mail order and on-line catalog services. 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 activity, the Complainant has built valuable goodwill in its registered mark ROSS-SIMONS. The mark is of immeasurable value to the Complainant.
The Complainant has an active presence on the Internet. It registered its <ross-simons.com> domain name on May 16, 1996 and has operated a website and on-line catalog at the Internet site to which the domain name resolves since at least December 1996. The Complainant’s registered mark ROSS-SIMONS is prominently featured on its website and has been featured on this website since the website went live in December 1996.
The Complainant also owns the domain name <ross-simonsdiamonds.com>. This domain name resolves to an active website which features Ross-Simons’ diamond jewelry.
The Complainant uses its ROSS-SIMONS website to advertise, promote and sell its jewelry, tableware, collectables, home décor and related items. The ROSS-SIMONS website operates 24 hours a day and permits consumers to browse and order the Complainant’s jewelry, tableware, collectibles, home décor and related products from the ROSS-SIMONS’ on-line catalog, purchase gift certificates and track orders.
The Complainant’s website communicates special events and promotions to its customers and provides customer service information. The Complainant’s customers also can create and edit wedding and other special occasion registries and search for the registries of others on the ROSS-SIMONS website.
In order to increase its presence on the Internet and its on-line sales, the Complainant has established and implemented an affiliate program.
In general, an affiliate program is an agreement between two e-commerce websites whereby the owner of one e-commerce site (the “affiliate”) advertises and provides a link to another e-commerce website. The affiliate is paid a commission for every sale that is made by someone the affiliate refers to the other e-commerce website.
The Complainant’s affiliate program permits owners of e-commerce websites to provide a link to the ROSS-SIMONS on-line catalog in the form of a banner advertisement or text link. If a customer of the e-commerce site were to click on the link to the ROSS-SIMONS website and then purchases a product from the ROSS-SIMONS on-line catalog, the affiliate can earn up to 7% of the merchandise value of the sale.
The Internet has become an extremely important communication and marketing tool and revenue source for Complainant.
Respondent registered the following Internet domain names with
GoDaddy Software on November 21, 2003:
Sometime after the Respondent registered the above-noted domain names that are the subject of this proceeding, the Respondent became an affiliate of the Complainant. At that time, the Respondent began using the thirteen subject domain names fraudulently to obtain commissions from the Complainant’s affiliate program by instantaneously redirecting consumers who mis-spell or mis-type the Complainant’s name and domain name through a series of websites, to the ROSS-SIMONS on-line catalog. This re-direction is transparent to the consumer. In other words, to consumers, it appears that they typed the correct domain name to reach the ROSS-SIMONS website. To the manager of the ROSS-SIMONS affiliate program it appears that the consumer was referred to the Complainant’s site by the Respondent from a link on the Respondent’s legitimate website.
The subject domain names do not comprise the legal name of the Respondent or a name that is otherwise commonly used to identify the Respondent. There is nothing in the Respondent’s Whois information that indicates that the Respondent is commonly known by the subject domain names.
The Respondent is using the subject domain names to divert Internet traffic to its website that instantaneously re-directs unknowing and unsuspecting consumers to the Complainant’s website. As an affiliate of the Complainant, the Respondent does not maintain a website that contains a link to or advertisement for the Complainant’s ROSS-SIMONS on-line catalog, but collects commissions each time a consumer mis-spells or mistypes the Complainant’s domain name.
Except as in the affiliate contract, the Complainant never authorized, licensed or otherwise permitted the Respondent to use the Complainant’s registered mark ROSS-SIMONS or any confusingly similar variation thereof.
The Complainant has not authorized, licensed or otherwise permitted the Respondent to apply for or use any domain name comprising or incorporating the Complainant’s registered mark ROSS-SIMONS or any confusingly similar variation thereof.
The Respondent did not participate in the proceeding.
5. Parties’ Contentions
The Complainant relies on its registration and use of the words “ROSS-SIMONS” and says that the subject domain names are confusingly similar to them.
Noting that the Respondent is not known by the words “Ross-Simons” and is not acting bona fide in its capacity as an affiliate of the Complainant, the Complainant contends that the Respondent does not have a legitimate interest in the subject domain names.
Bad faith is said to be shown by the activities of the Respondent and the fact that as an affiliate of the Complainant it clearly knew of the Complainant’s rights and interests.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, in an administrative proceeding the Complainant must prove that each of the following three elements are present: one, the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; two, the Respondent has no rights or legitimate interests in respect of the domain name; three, the domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is clear that the Complainant has rights to the words “Ross-Simons”, both as a registered mark and through use. The subject domain names are very similar to the Complainant’s mark and differ only by subtle misspellings.
The Administrative Panel is satisfied that the Complainant has met the requirements of Paragraph 4(a)(i) of the Policy.
The Respondent has no connection to the Complainant’s mark other than as an affiliate, but it appears to be abusing that relationship. This fact, coupled with the creation of domain names that appear to be designed purposely to mislead, raises a strong inference that the Respondent does not have a legitimate interest in the subject domain names. The Respondent has done nothing to displace this inference.
The Administrative Panel is satisfied that the Complainant has met the requirements of Paragraph 4(a)(ii) of the Policy.
Through its association with the Complainant as an affiliate, the Respondent clearly was aware of the Complainant’s mark and business. It created domain names that use the Complainant’s mark and differ from it only through purposeful misspellings. The Respondent abused the affiliate relationship.
Although a respondent is not obliged to participate in a domain name dispute, if it were not to do so, it would be subject to the usual inferences that flow from the reasonable assertions of a complainant.
In this case, the course of conduct of the Respondent leads to a prima facie case of bad faith. The Respondent has done nothing to supplant this.
The Administrative Panel is satisfied that the Complainant has met the requirements of Paragraph 4(a)(iii) of the Policy.
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:<ros-simonsdiamonds.com>
Edward C. Chiasson Q.C.
Date: October 21, 2004