WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Closet World Inc. v. Artur Nikitin
Case No. D2008-0655
1. The Parties
The Complainant is Closet World Inc., Whittier, California, United States of America, represented by Sheppard, Mullin, Richter & Hampton, United States of America.
The Respondent is Artur Nikitin, Tallin, Estonia.
2. The Domain Name and Registrar
The disputed domain name <closet-world.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2008. On April 29, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On April 29, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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 May 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2008.
The Center appointed James A. Barker as the sole panelist in this matter on June 3, 2008. 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
The following facts are not contested.
The disputed domain name was created on October 10, 2005.
On April 23, 2008, (as evidenced in the Complaint) the disputed domain name reverted to a website advertising closets, under the heading ‘Closet World’.
The Complainant claims to be a well-known manufacturer, retailer and installer of custom closet and other home organization systems in the United States of America. Since 1996, the Complainant has maintained a website at “www.closetworld.com”.
The Complainant provides evidence that the Respondent has registered a number of domain names that are hyphenated equivalents of the domain names of third parties. For example, he is the registrant of the domain name <kitchen-remodeling-help.com>. The domain name <kitchenremodelinghelp.com> is registered to an individual who uses the website to promote a book he has written called ‘Kitchen Remodeling Help’.
The Complainant sent a ‘cease and desist’ letter to the Respondent dated May 24, 2007, and received no reply.
5. Parties’ Contentions
The following is summarized from the Complaint.
The Complainant makes the allegations against the Respondent required to trigger the application of the Policy. In particular, the Complainant alleges that the disputed domain name is confusingly similar to its registered trade mark. The Complainant provides evidence of its registered mark for CLOSET WORLD. That mark is registered on the principal register of the United States Patent and Trademark Office. It was first used in commerce in March 1989.
The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent is using the disputed domain name to appropriate the goodwill in the Complainant’s mark, and divert Internet users to advertisements for the Complainant’s competitors.
The Complainant alleges that the Respondent has, for similar reasons, registered and used the disputed domain name in bad faith. The Complainant believes that the Respondent would have had actual knowledge of its mark, given its extensive prior advertising and promotion. The Complainant also notes that the Respondent would have constructive notice of its mark under United States trademark law.
The Respondent did not reply to the Complainant’s contentions, nor make any other communication in connection with this case. The Center’s registered post records indicate that the Complaint, as notified by the Center, was received by the Respondent.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is 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 in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant provided evidence of its registered rights in the CLOSET WORLD mark. The disputed domain name is only trivially different. It merely inserts a hyphen between the words ‘closet’ and ‘world’. That difference does not avoid confusing similarity. A number of prior panel decisions have not found that the insertion of a hyphen has any value in avoiding confusing similarity with a mark. For example, see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Lockheed Martin Corporation v. Deborah Teramani, WIPO Case No. D2004-0836.
The Complainant has therefore established this first element.
B. Rights or Legitimate Interests
Having provided no reply, the Respondent has not provided any evidence to rebut the Complainant’s case against it.
The Complainant’s case is that the Respondent cannot have any rights or legitimate interests in the disputed domain name. The Complainant maintains this essentially on the basis that it is well-known, and the Respondent’s website was used to divert Internet users to the Complainant’s competitors, presumably to generate ‘click through’ fees or referral fees.
The Complainant has made a strong case against the Respondent. There is otherwise no evidence that might suggest the Respondent has a right or legitimate interest. The Complainant operates in a relatively narrow and defined field. The Respondent has set up a website using the same mark in the same field. This fact alone is suggestive that the Respondent knew of the Complainant’s mark and intended to trade on a confusingly similar domain name. Neither is there any explanation of why the Respondent, based in Estonia, would establish a website in English, the language of the Complainant’s jurisdiction.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant provides evidence of having registered marks for CLOSET WORLD, and of operating a website relating to its business since 1996 at a domain name substantially identical to that registered by the Respondent. As noted above, the Respondent’s website also relates to the offer of goods and services virtually identical to those offered by the Complainant. The Complainant also provides evidence of searches for “closet world” using both Google.com and Ask.com, which both return the Complainant’s website as the first result.
Having regard to this context, the Panel finds that the Respondent registered and used the disputed domain name with the intention of profiting from the creation of confusion with the Complainant’s mark. Such an opportunistic registration amounts to bad faith within the meaning of paragraph 4(b)(iv) 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 name <closet-world.com> be transferred to the Complainant.
James A. Barker
Dated: June 17, 2008