WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Euromarket Designs, Inc. d/b/a Crate & Barrel v. Alex Janiashvili
Case No. D2011-0482
1. The Parties
The Complainant is Euromarket Designs, Inc. d/b/a Crate & Barrel of Illinois, United States of America represented by Neal, Gerber & Eisenberg LLP, United States of America.
The Respondent is Alex Janiashvili of Tbilisi, Georgia.
2. The Domain Name and Registrar
The disputed domain name <crateandbarreloutlet.org> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (“The Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2011. On March 16, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact.
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 the Respondent of the Complaint, and the proceedings commenced on March 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2011.
The Center appointed Fleur Hinton as the sole panelist in this matter on May 4, 2011. 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 Complainant has used its trademark CRATE AND BARREL since 1962 and the trademark has received extensive publicity though the Complainant’s 160 retail stores and its catalogues. It has 11 outlets in the United States and it has the trademark registered in the United States. In 1998 it registered the domain name <crateandbarrell.com>. The Complainant sells household goods, furniture and other products including food and kitchen goods.
The Respondent registered the disputed domain name on or about November 13, 2010. The Complainant became aware of this in January, 2011 and on or about January 21, 2011 the Complainant wrote to the Respondent requiring that it cease use of the disputed domain name and transfer any and all rights in it to the Complainant. The Respondent did not comply with these demands and on January 28, 2011 the Complainant wrote to the legal department of the Internet service provider advising it of the Complainant’s position. The Complainant has received no response to this correspondence and the Complainant states that the domain name had not been disabled by the Internet service provider.
At the time of the writing of this decision entry of the disputed domain name into a browser does not lead to any website.
5. Parties’ Contentions
The Complainant alleges that the use by the Respondent of the disputed domain name is identical to its trademark CRATE AND BARREL OUTLET and confusingly similar to its trademark CRATE AND BARREL.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name as it has no identifiable history of use of the disputed domain name. Further, the Respondent has no United States, European or international trademark registration of the trademark encompassed by the domain name and the Complainant has not authorized the Respondent to use the disputed domain name. In addition, the Complainant alleges that the Respondent is not making a fair and noncommercial use of the disputed domain name. Neither is it making a bona fide offering of goods. It is using the Complainant’s well-known trademark to divert Internet users from the Complainant’s website.
The Complainant further alleges that the Respondent registered and is using the disputed domain name in bad faith. This, it says, is because panels have consistently found that the registration of a domain name which is a well-known trademark is evidence of bad faith without the necessity of considering additional elements. In support of this the Complainant refers to The Gap Inc v. Deng Youqian, WIPO Case No. D2009-0113 and Ty Inc v. Joseph Parvin d/b/a Domains For Sale, WIPO Case No. D2000-0688. The Respondent says, further, that although the Respondent had included a disclaimer on the website, “This Site is not Affiliated With or Sponsored By Crate and Barrel” (sic), the Complainant argues that this is evidence that the Respondent had knowledge of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy requires that the Panel make its finding on the basis of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is now accepted that a domain name which incorporates entirely the trademark of another will result in a finding that the disputed domain name is identical or confusingly similar to the trademark with which it is being compared. It has been well established that the mere addition of descriptive term such as “outlet” will not suffice to distinguish between the Complainant’s trademark and the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the trademark. Therefore the Complainant has satisfied requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent has not replied to the Complainant’s cease and desist letter and has not lodged a response to this complaint. The Respondent has not, therefore provided any information as to any rights or legitimate interests in the disputed domain name. Therefore, the Complainant need only establish a prima facie case that the Respondent has neither rights nor legitimate interests in the disputed domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”) paragraph 2.1).
The Respondent has not been licensed or otherwise authorized by the Complainant to use the disputed domain name. The Respondent indeed admits on the homepage of the website that, “This Site is not Affiliated With or Sponsored By Crate and Barrel” (sic). Despite that, however, the homepage describes the business and history of the Complainant and no one else.
The Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests as required by paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The homepage of the website to which the disputed domain name leads has the same “look and feel” of the legitimate website of the Complainant and shows a picture of a dining room setting together with text describing the CRATE AND BARREL way of doing business and even giving a short history of its origins in the honeymoon trip of the founders, Gordon and Carole Segal, to Europe in 1962.
The Panel notes that at the right down bottom of the homepage a disclaimer states that: “This Site is not Affiliated With or Sponsored By Crate and Barrel” (sic). However, although there are cases in which provision of a disclaimer may enable a trader to use a domain name incorporating another’s trademark without a finding of bad faith, in this case, the existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. (see AARC Inc. v. Jayashankar Balaraman, WIPO Case No. D2007-0578 and Broan-Nutone, LLC v. Ready Set Sales, WIPO Case No. D2010-0920). In this case a visitor to the website, if it noticed it at all, would probably wonder what it was there for since the rest of the homepage describes the background and operation of the Complainant’s business.
In this case the Respondent has registered the disputed domain name and attached a website to it which appropriates the Complainant’s goodwill and causes confusion to consumers. The Panel finds that the disclaimer at the bottom of the homepage, coupled with the history of the Complainant’s business is further proof that the Respondent registered the domain name and is using it in bad faith.
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the Complainant has established the criterion set out in paragraph 4 (a)(iii) 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 <crateandbarreloutlet.org> be transferred to the Complainant.
Dated: May 19, 2011