WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gaetano, Inc. d/b/a Lisa Curran Swim v. Texas International Property Associates
Case No. D2007-1428
1. The Parties
Complainant is Gaetano, Inc. d/b/a Lisa Curran Swim, Hoboken, New Jersey, United States of America, represented by Vanessa Ignacio, Lowenstein Sandler PC, United States of America.
Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by The Law Firm of Gary Wayne Tucker, United States of America.
2. The Domain Names and Registrars
The disputed domain names <lisacurren.com> and <lisacurrenswim.com> are registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2007. On September 28, 2007, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain names at issue. On October 9, 2007, Compana LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on October 10, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2007. The Response was filed with the Center on October 30, 2007.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on November 9, 2007. 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.
On November 6, 2007, Complainant submitted an unsolicited Additional Submission in response to arguments made by Respondent claiming that Complainant had failed to show rights to any mark which existed at the time Respondent registered the disputed domain names. The Panel has not found it necessary to rely on this additional submission in making the below findings, and it is therefore unnecessary to invite any further reply from Respondent regarding same.
4. Factual Background
Complainant is the owner of the trademarks LISA CURRAN and LISA CURRAN SWIM (hereinafter the “Marks”). Complainant also owns the domain names <lisacurran.com> (registered January 14, 2000) and <lisacurranswim.com> (registered December 31, 1998), which both pre-date the registrations of the disputed domain names in June 2006.
Complainant owns two pending United States Trademark applications for federal registration of the marks LISA CURRAN (Serial No. 77/252,207) and LISA CURRAN SWIM (Serial No. 77/252,232) both claiming a date of first use in commerce of January 1, 1997.
Complainant contends that it has used the Marks continuously in commerce over the last ten years in connection with its swimwear products and that Complainant’s products have been used by a long list of celebrities.
Long after Complainant’s adoption and use of the Marks in commerce, Respondent began using Complainant’s Marks in connection with the disputed domain names. The disputed domain names differ from Complainant’s marks by only one letter and resort to a website which displays the marks of Complainant’s competitors.
Complainant sent letters to Respondent dated July 9, 2007 and August 9, 2007 notifying Respondent of Complainant’s trademark rights and demanding transfer of the domain names. Respondent did not reply to Complainant’s letters.
5. Parties’ Contentions
Complainant contends that the domain names are confusingly similar to Complainant’s Marks, that Respondent lacks any legitimate right or interest in the domain names, and that Respondent has registered and used the domain names in bad faith.
Respondent contends that Complainant has not established trademark rights in the trade name and personal name “Lisa Curran” and that the domain names are not identical to or confusingly similar to any mark held by Complainant. Respondent claims that it has rights and legitimate interests in domain names comprised of generic and/or descriptive terms not associated with Complainant’s business, and that Respondent used the disputed domain names in connection with a bona fide offering of services prior to notice of this dispute. Respondent further claims that its registration and use of the subject domain names in connection with Internet searching, locator, and/or targeted advertising services, does not comprise “bad faith” under the Policy.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain names in dispute are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the domain names; and
(iii) the domain names have been registered and are being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to 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”.
A. Identical or Confusingly Similar
Complainant has satisfied the Panel that it has developed trademark rights in the marks LISA CURRAN and LISA CURRAN SWIM through continuous use in commerce over the last several years. The Panel notes that while Complainant in the Complaint provides only limited evidence of secondary meaning, the Panel has noted the evidently widespread online use and numerous references in catalogues and media articles to the marks. While it would have behooved Complainant to provide such clear evidence itself in the Complaint at first instance, on balance, the Panel finds that Complainant has nevertheless succeeded in establishing rights in the marks. It is not therefore necessary for the Panel to consider Complainant’s unsolicited supplemental filing. The fact that Complainant has not yet acquired federal trademark registrations for its mark does not preclude relief under the Policy. Contrary to Respondent’s contentions, Complainant’s Marks are not generic terms, and Respondent’s claim that the name “Lisa Curren” in the domain names constitutes a generic term is entirely meritless. The disputed domain names <lisacurren.com> and <lisacurrenswim.com> differ from Complainant’s Marks by only one letter. The disputed domain names are virtually identical and confusingly similar to Complainant’s Marks. But for the typographical error of one letter in each of the domain names, the domain names are identical to Complainant’s Marks.
Thus, the Panel finds that the domain names are confusingly similar to a trademark or service mark in which Complainant has rights.
B. Rights or Legitimate Interests
Respondent is not affiliated or related to Complainant in any way, nor is Respondent licensed by Complainant or otherwise authorized to use Complainant’s Marks in the disputed domain names.
Respondent is not generally known by the domain names and has not acquired any trademark or service mark rights in the name or marks reflected in the domain names.
Respondent uses the domain names in connection with websites which advertise products that compete with Complainant’s products. Respondent’s use of the domain names to divert visitors seeking Complainant’s products is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain names. Respondent has not put forward any evidence that would rebut Complainant’s case or support a finding that it has rights or legitimate interests in the domain name.
In light of the foregoing, the Panel finds that Respondent has no rights or legitimate interests with regard to the domain name at issue.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that Respondent has registered or 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 the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location of a product or service on Respondent’s website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
Here, it is apparent that Respondent’s domain names are being used for commercial gain to attract Internet users to Respondent’s websites based on a likelihood of confusion with Complainant’s Marks.
Respondent profits from use of the domain name by receiving referral fees for redirecting Internet users from its sites to other websites. Because Internet users will mistakenly go to Respondent’s sites at the domain names when seeking Complainant’s site or goods and services sold under Complainant’s Marks, and because Respondent will then profit from the referrals of these users, Respondent’s use of the domain name is in bad faith.
Respondent acquired and began unauthorized use of the domain names long after Complainant’s adoption and use of Complainant’s Marks. In addition, at the time the domain names were registered, the Panel is satisfied that Complainant had made substantial use of its Marks and its domain names <lisacurran.com> and <lisacurranswim.com> for many years. The evidently widespread use of Complainant’s mark both in an online context and in national media, and Complainant’s prior domain name registrations lead to the conclusion that Respondent registered and used the domain names with actual knowledge of Complainant’s trademark rights.
Accordingly, the Panel finds the disputed domain names to be 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 <lisacurren.com> and <lisacurrenswim.com> be transferred to the Complainant.
Lynda J. Zadra-Symes
Dated: November 23, 2007