Complainant is WeddingChannel.com, Inc., of Los Angeles, California, United States of America, represented by Akin, Gump, Strauss, Hauer & Feld, United States of America.
Respondent is Kenneth J. Lucci of Clearwater, Florida, United States of America.
The disputed domain names <limousineweddingchannel.com>, <weddingchannellimo.com>, <weddingchannellimos.com>, <weddingchannellimousine.com>, and <weddingchannelrides.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2010. On May 3, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On May 4, 2010, GoDaddy.com, Inc. 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” 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 May 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 28, 2010.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on June 1, 2010. 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 WeddingChannel.com, Inc. operates a wedding-planning and wedding gift-registry website resolving from the domain name <weddingchannel.com>. The website provides on-line wedding planning, gift registry and communication resources for couples and their families who are planning weddings, honeymoons, and other wedding-related activities. It also features advertisements, information, and reviews about wedding vendors, including limousine transportation services, for wedding parties.
Complainant has used the mark WEDDINGCHANNEL.COM, alone and with other components, in connection with its services since at least as early as 1997, and is commonly referred to as the “Wedding Channel” by the public.
Complainant has invested large sums of money in promoting its WEDDINGCHANNEL.COM mark in the United States of America and around the world. Over 1.5 million unique users use WeddingChannel.com's website and the site receives about 40 million page views per month.
Complainant owns a number of trademark registrations containing or comprising WEDDINGCHANNEL.COM for wedding-related products and services in the U.S., Australia, and the European Union. See Complaint, Annex E. It also owns numerous weddingchannel.com-formative domain names, including <weddingchannel.com> and <weddingchannelstore.com>. See Complaint, Annex F.
The disputed domain names were registered on February 6, 2010. The disputed domain names resolve to websites offering miscellaneous links to limousine and wedding transportation services. See Complaint, Annex G, consisting of printouts obtained April 30, 2010 from websites resolving from the disputed domain names.
In an effort to resolve the dispute, Complainant's counsel sent a cease and desist letter to Respondent on March 24, 2010. In response, Respondent indicated a willingness to sell each of the disputed domain names to Complainant for USD 500. Complainant then offered to cover Respondent's actual out-of-pocket expenses incurred in registering the disputed domain names. Respondent, in his its email of March 25, 2010, indicated that USD 500 was his actual cost. See Complaint, Annex H.
Complainant contends that the disputed domain names are essentially identical to its WEDDINGCHANNEL.COM mark and are confusingly similar thereto. According to Complainant, the mere addition of the generic words “limousine,” “limo,” “limos,” and “rides” to the mark does not obviate any likelihood of confusion.
Complainant further maintains that Respondent has no legitimate interest in the disputed domain names. Complainant asserts that Respondent has no relationship with WeddingChannel.com, Inc. or the marks comprising the disputed domain names. Complainant maintains that Respondent's only use of the disputed domain names is to intentionally mislead viewers and attract confused Internet users to websites totally unrelated to Complainant's site and cites a WIPO UDRP panel decision1 to the effect that a use which intentionally trades on the fame of another cannot constitute a “bona fide” offering of goods or services under the Policy.
Complainant argues that each of the disputed domain names was registered and is being used in bad faith. According to Complainant, “[d]espite having absolutely no rights in ‘WEDDING CHANNEL.COM,' Respondent has opportunistically registered the Infringing Domain Names, which incorporate WeddingChannel.com's registered mark in its entirety, presumably in order to take advantage of misdirected Internet traffic and/or mislead users. In fact, given the facts of this case as noted above, it is clear that Respondent's objective was to confuse the public and create traffic to his web sites.”
As further evidence of the requisite “bad faith” registration and use, Complainant alleges that Respondent's activities have harmed and continue to harm WeddingChannel.com, Inc. by depriving Complainant of obvious domain names to use in association with its company and that Respondent attempted to sell the disputed domain names for a total fee of USD 2,500.
Respondent did not reply to Complainant's contentions.
The Panel finds that each of the disputed domain names is confusingly similar to the WEDDINGCHANNEL.COM mark. As noted by Complainant, the disputed domain names merely add the generic words “limousine,” “limo,” “limos,” and “rides” to the mark. The addition of such words, along with the top-level domain “.com”, does not avoid a finding of confusing similarity.
The Panel further rules that Complainant has rights in the WEDDINGCHANNEL.COM mark. The evidence indicates that Complainant owns numerous registrations for such mark and has used such mark since at least as early as 1997.
The Panel holds that Complainant has sustained its burden of proving that Respondent has no rights or legitimate interests in any of the disputed domain names. There is no evidence that Respondent is commonly known by any of the disputed domain names or that Respondent is making a noncommercial or fair use of any the names. Given the Panel's finding that each of the disputed domain names is confusingly similar to Complainant's mark, it cannot be held that Respondent is making a bona fide offering of goods or services under any of the disputed domain names. Furthermore, by not providing a Response, Respondent has not rebutted any of Complainant's allegations.
The Panel concludes that each of the disputed domain names was registered and is being used in bad faith. The evidence indicates that Respondent is using the disputed domain names in connection with websites offering miscellaneous links to wedding-related products and services, including limousine transportation services, and that Complainant uses its WEDDINGCHANNEL.COM mark in connection with on-line wedding planning, including information about limousine transportation. Under such circumstances, and given the confusing similarity between Complainant's mark and each of the disputed domain names, the Panel finds that Respondent, through his use of each of the names, intentionally attempted to attract, for commercial gain, Internet users to his sites by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of such sites and of the goods and/or services offered at such sites, 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 disputed domain names <weddingchannellimo.com>, <weddingchannellimos.com>, <weddingchannellimousine.com>, <weddingchannelrides.com>, and <limousineweddingchannel.com> be transferred to Complainant.
Jeffrey M. Samuels
Dated: June 9, 2010
1 See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.