Complainant is Ballard Designs, Inc., Atlanta, Georgia, United States of America, represented by Akerman Senterfitt, United States of America.
Respondent is Standard Bearer Enterprises Ltd., St. Johns, Antigua and Barbuda.
The Disputed Domain Name <ballardsdesign.com> is registered with Moniker Online Services, LLC (“Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2009. On October 7, 2009, the Center transmitted by email to the Registrar a request for verification in connection with the Disputed Domain Name. On October 11, 2009, the Registrar 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on October 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 10, 2009.
The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on November 20, 2009. 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.
Complainant has trademark registrations for the mark BALLARD DESIGNS (collectively herein, the “BALLARD DESIGNS Trademark”), namely:
a) United States federal trademark registration bearing No. 2192388 for the services of “retail stores, mail order services and mail order catalog services featuring home and garden furnishing and accessories”, based on use in United States commerce since 1983, and registered on September 28, 1998.
b) Europe Community registration bearing No. 000728436 for the services of “dissemination of advertising materials in the form of catalogues or by electronic means in the field of home and garden furnishings and accessories”, and “wrapping, packing and delivery of goods in the field of home and garden furnishings and accessories”, and registered on June 7, 2000.
Complainant registered the domain name <ballarddesigns.com> on April 30, 1998 and operates a website using that domain name.
The Disputed Domain Name was registered on December 7, 2000.
Complainant contends (in accordance with paragraph 4(a) of the Policy) that the Disputed Domain Name is confusingly similar with the BALLARD DESIGNS Trademark in which it has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and uses the Disputed Domain Name in bad faith.
Respondent did not reply to Complainant's contentions and is in default.
One fundamental requirement of due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules, and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings and that the failure of Respondent to furnish a Response to the Complaint is not due to any omission by the Center. There is sufficient evidence in the case file for the Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a) (see Section 3, Procedural History, supra).
In case of default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint”, and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate”. Furthermore, paragraph 15(a) of the Rules provides that “a Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Since Respondent has not submitted any evidence, the Panel will render its decision on the basis of the uncontroverted evidence supplied by Complainant.
Complainant contends that it has rights in the BALLARD DESIGNS Trademark and that the Disputed Domain Name is confusingly similar thereto.
In particular, Complainant contends (and the Panel accepts as uncontroverted, convincing and supported by the evidence) that its BALLARD DESIGNS Trademark, “…[b]y virtue of extensive advertising and almost three decades of continuous use….has a reputation for excellence and is immediately recognizable amongst the trade and consumers of “retail stores, mail order services and mail order catalog services featuring home and garden furnishing and accessories.”“ In addition to such common law rights, Complainant refers to the statutory rights flowing from its registrations listed in Section 4, Factual Background, supra. The Panel concludes that Complainant has rights in its BALLARD DESIGNS Trademark.
In particular, Complainant contends (and the Panel accepts as uncontroverted, convincing and supported by the evidence) that the only difference between its BALLARD DESIGNS Trademark and the Disputed Domain Name, is a purposeful misspelling (the “s” of the second component of the former has been moved to terminate the first component of the latter); and that such difference has no legal significance to avoid a finding of confusing similarity but has legal significance as being “typosquatting”, a conduct found in many decisions rendered under the Policy and Rules to be indicators of confusing similarity.
The Panel concludes that Complainant has met the first requirement of the Policy.
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name.
In particular, Complainant contends (and the Panel accepts as uncontroverted, convincing and supported by the evidence) that: (1) Complainant has never been associated with Respondent; and (2) Respondent has not demonstrated any of the criteria set out in paragraph 4(c) of the Policy.
Respondent has provided no arguments or evidence of rights or legitimate interests to counter Complainant's contentions on this issue. By virtue of the aforedescribed legal rights (statutory and common law) in its BALLARD DESIGNS Trademark, Complainant convincingly argues that Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel, especially in the absence of any Response from Respondent, considers that the circumstances described in paragraph 4(c) of the Policy, regarding the circumstances in which Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name, likely do not exist.
The Panel concludes that Complainant has met the second requirement of the Policy.
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith.
In particular, Complainant contends (and the Panel accepts as uncontroverted, convincing and supported by the evidence) that: (1) Respondent registered the Disputed Domain Name after Complainant obtained its domain name registration and United States federal and European Community trademark registrations (listed in Section 4, Factual Background, supra); and (2) Respondent registered and used the Disputed Domain Name (as the Internet location of its website) as an intentional attempt to attract Internet users to third-party websites, for commercial gain, by creating a likelihood of confusion with Complainant's BALLARD DESIGNS Trademark. Complainant's second contention is more particularized as follows: Respondent's website (using the confusingly similar Disputed Domain Name) diverts customers, by click-through links, to third-party websites (e.g. “www.havertys.com”) that compete with Complainant and its website (based on its domain name set out in Section 4, Factual Background, supra); and Respondent receives “commercial gain” through click-through fees for diverting Internet users to such third-party websites.
The Panel concludes that Complainant has met the third requirement 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 Disputed Domain Name <ballardsdesign.com> be transferred to Complainant.
Mark Ming-Jen Yang
Dated: December 2, 2009