WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FD Management, Inc. v. Telecom Tech Corp.
Case No. D2008-0235
1. The Parties
The Complainant is FD Management, Inc., New York, New York, United States of America, represented by Bricker & Eckler LLP, United States of America.
The Respondent is Telecom Tech Corp., Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <shopelizabetharden.com> is registered with Spot Domain LLC dba Domainsite.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2008. On February 15, 2008, the Center transmitted by email to Spot Domain LLC dba Domainsite.com a request for registrar verification in connection with the domain name at issue. On February 19, 2008, Spot Domain LLC dba Domainsite.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details and confirming that the disputed domain name would remain under lock for the purposes of the UDRP proceedings. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 3, 2008. The Center verified that the Complaint together with the amendments thereto 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 March 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 9, 2008.
After formal commencement of the proceeding, in processing the case and reviewing the WhoIs data, the Center noticed that the disputed domain name <shopelizabetharden.com> had, in violation of paragraph 8 of the Policy, been transferred to a different registrar, Lead Networks Domains Pvt. Ltd., and that it was registered by a third party (under privacy services).
The Center referred the relevant registrars to paragraph 8 of the Policy prohibiting transfer of a domain name to a new holder and change of registrars during a pending administrative proceeding. Reference was further made to the registrars’ right to cancel any transfer of a domain name registration to another holder that has been made in violation of paragraph 8(a) of the Policy.
Subsequently, Lead Networks Domains Pvt. Ltd. informed the Center that it would lock the disputed domain name and implement the Panel’s decision.
The Center appointed J. Christopher Thomas, Q.C. as the sole panelist in this matter on April 21, 2008. 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. The Panel finds that it was properly constituted.
4. Factual Background
The Complainant (“FDM”) is the owner and licensor of certain Elizabeth Arden intellectual property, including the exclusive rights to the ELIZABETH ARDEN trademarks for toiletries, perfumes and cosmetics. FDM and its predecessors have continuously used the ELIZABETH ARDEN trademark since 1910. It attached to the Complaint evidence of active U.S. trademark registrations which contain or comprise the mark ELIZABETH ARDEN. The Complainant expends considerable sums annually in promoting the ELIZABETH ARDEN trademark, products, services and image worldwide. The Complainant also maintains a website, “shop.elizabetharden.com”, through which various products may be purchased.
5. Parties’ Contentions
In the Complainant’s view, the Respondent is using the disputed domain name as a “click-through” revenue generating site since it contains pages of links to cosmetic, skin care, and fragrance sites, including sites maintained by competitors of Elizabeth Arden.
The Respondent is not authorized to use the ELIZABETH ARDEN name. It is not a licensee of, or otherwise affiliated with, the Complainant, “Elizabeth Arden” is not a part of the Respondent’s name or business, and it has no connection with any Elizabeth Arden products.
The Complainant asserts further that the disputed domain name was registered to capitalize off of Internet users searching for Elizabeth Arden products and this is neither legitimate, nor good faith, use. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration. It has also precluded the Complainant from registering the same website for its business and it has been forced to register the “less-user-friendly domain name” that includes the same name but with a period inserted between “shop” and “elizabetharden.com.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested by a complainant under the Policy, it is necessary that the complainant prove, as required by paragraph 4(a) of the Policy, in respect of each of the contested domain name, that:
- the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
In the present case, the Panel is of the view that the record contains evidence of each of the three requisite elements.
A. Identical or Confusingly Similar
First, the Complainant claims and the Panel has verified to its satisfaction that the Complainant is the owner of the ELIZABETH ARDEN mark in the United States. The Panel also verified that the Complainant operates the “shop.elizabetharden.com” website which incorporates the ELIZABETH ARDEN mark.
The domain name in dispute, <shopelizabetharden.com> is plainly confusingly similar to the Complainant’s trademark. It employs the mark in its entirety, adding to it only the generic word “shop.” Given that the ELIZABETH ARDEN mark is notoriously connected to beauty products, the resulting combination of “shop” and “elizabetharden” makes the disputed domain name confusingly similar to the ELIZABETH ARDEN mark.
The disputed domain name is thus confusingly similar to a mark in which the Complainant has rights. The Complainant has plainly fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Second, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant has proven this. There is no evidence of the Respondent’s 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 (see discussion under below section).
The Respondent has no apparent connection with the Complainant, nor has it been licensed or authorized by it to use the disputed domain name. The disputed domain name is evidently not the Respondent’s name, nor is there any evidence that the Respondent is commonly known by that name. Nor is the Respondent making a legitimate non-commercial or fair use of the disputed domain name.
The Panel agrees with the Complainant therefore that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Third, it must be shown that the domain name at issue has been registered and is being used in bad faith. The Respondent’s domain name serves to divert users to a website which contains sponsored links. The Respondent has misled consumers by diverting Internet traffic away from the Complainant’s website in an attempt to generate business by luring potential customers to the Respondent’s website. It derives revenues from a “click-through” operation. Moreover, its registration of the disputed domain name has precluded the Complainant from making use of the name and has obliged it to use the “less-than-user friendly” domain name requiring the insertion of a period between “shop” and “elizabetharden”.
In the circumstances, the Panel has no doubt in concluding that the domain name was 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 name <shopelizabetharden.com> be transferred to the Complainant.
J. Christopher Thomas, Q.C.
Dated: May 5, 2008