WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Euromarket Designs, Inc. d/b/a Crate & Barrel v. Namesnet
Case No. D2000-1196
1. The Parties
Complainant is Euromarket Designs, Inc. d/b/a Crate & Barrel, a corporation organized under the laws of the State of Illinois, U.S.A. ("Complainant"). Complainant is represented by Counsel, Seyfarth Shaw.
Respondent is Namesnet, legal status and place of business entity formation or registration not known.
2. The Domain Name and Registrar
The domain name which is the subject of this proceeding is <crateandbarrel.net> owned by Namesnet. The domain name is registered with Network Solutions, Inc., Herndon, Virginia, USA.
3. Procedural History
3.1 Complaint (e-mail version/hard copy) received on September 9, 2000 and September 13, 2000 respectively.
3.2 Receipt of Complaint was acknowledged on September 14, 2000.
3.3 Request for Registrar Verification was sent on September 15, 2000 and a reply was received on September 18, 2000.
3.4 Request for Amendment of mutual jurisdiction was submitted on September 19, 2000.
3.5 Amendment to Complaint was received by e-mail on September 29, 2000 and in hardcopy on October 3, 2000.
3.6 Formal Requirements Compliance checklist was completed on September 29, 2000.
3.7 Notification of Complaint and Commencement of Administrative Proceeding was submitted on October 4, 2000.
3.8 Notification of Respondent Default was submitted on October 25, 2000.
3.9 Notification of Appointment of Administrative Panel was submitted on December 21, 2000.
4. Factual Background
4.1 Complainant is a retailer of housewares and furniture. Complainant has used the name and mark CRATE & BARREL exclusively for more than 35 years in connection with its business. Complainant is the owner of U.S. federal trademark and service mark registrations for CRATE & BARREL and CRATE AND BARREL including U.S. Registration Nos. 1,469,514, 1,469,515, 1,512,732, 2,205,822 and 2,205,823. These marks are used in connection with retail store and mail order services supplying houseware goods such as glassware, tableware, plates saucers, and tablecloths in International Class 42; retail store and mail order services supplying furniture in International Class 35; furniture in International Class 20; and housewares such as plates, vases, bowls, bakeware, cookware, and food storage containers in International Class 21. Complainant is also the owner of a large number of foreign registrations for the CRATE & BARREL and CRATE AND BARREL marks, including registrations in Ireland, the United Kingdom, and the European Union.
4.2 The goods of Complainant sold under the CRATE & BARREL trademark are advertised extensively throughout the United States and in major publications having a world-wide circulation. Products of Complainant appear regularly in magazines, newspapers, brochures, catalogs, and other promotional pieces. Such extensive advertising, promotion and the like have resulted in the CRATE & BARREL name and mark becoming one of the most famous, celebrated, and well-regarded names and marks in the United States. Complainant has customers world-wide and regularly ships goods to customers around the world. The CRATE & BARREL name and mark are readily recognized by the public as the name and mark of Complainant and represents the quality products and services offered by Complainant.
4.3 As part of its marketing and commercial activities, Complainant has developed and extensively uses a Web site on the Internet. Information about CRATE & BARREL products and other business information regarding Complainant are provided and are accessible on Complainantís Internet Web site. Users of the Internet, in the United States and around the world, can purchase products from Complainant via its Internet Web site.
4.4 Complainant is the registrant of the domain name <crateandbarrel.com.> The Complainant has also registered or is in the process of registering the word compilation "crateandbarrel" in over 30 country-specific top-level domains.
4.5 Using its domain name <crateandbarrel.com>, Complainant has advertised its Web site extensively, including in its stores, in its catalogs, in bridal packages, and in gift portfolios. Further, Complainant has entered into a contract with America Online to link to the Crate & Barrel web site under the domain name "crateandbarrel.com."
4.6 Complainant has taken action to protect its trademark rights associated with the "crateandbarrel" word compilation and CRATE & BARREL marks. For example, Complainant sought to enjoin an Irish company from using without license or permission, and in infringement of Complainantís trademark rights, the <crateandbarrel-ie.com> and <crateandbarrel.ie> domain names and to have the domain names transferred to the Complainant. The United States District Court for the Northern District of Illinois (Eastern Division), granted injunctive orders in favor of the Complainant, finding that the Irish company wrongfully registered <crateandbarrel-ie.com> and <crateandbarrel.ie> in an effort to capitalize on the goodwill of Complainantís trademarks, and ordered that the Irish company be permanently enjoined from using the domain names at issue and the registrations for the domain names be transferred over to Complainant.
4.7 Respondent registered the domain name <crateandbarrel.net> on May 6, 1999.
5. Partiesí Contentions
5.1 The Domain Name, other than the generic top-level domain, is identical, except for the generic .net top-level domain, in sight, sound, and appearance to Complainantís CRATE AND BARREL and CRATE & BARREL marks and to the Complainantís own Web site domain name "crateandbarrel.com."
5.2 By registering the <crateandbarrel.net> domain name, Respondent misappropriated and misused Complainantís name, trademarks, and service marks. This misappropriation and misuse will cause confusion, mistake, and deception as to the source and origin of the domain name and Web site. Further, the use of the domain dilutes the famous CRATE & BARREL and CRATE AND BARREL marks, all to the irreparable and significant harm of Complainant.
5.3 Respondentís registration of the Domain Name constitutes infringement of Complainantís registered trademarks.
5.4 Respondent registered the Domain Name without permission, license or consent of Complainant. Respondent has never attempted to gain such permission, license, or consent from Complainant.
5.5 There is no relation between Complainant and Respondent.
5.6 Taken in totality, the circumstances surrounding Respondentís registration of the Domain Name dictate that Respondent has registered and is using the <crateandbarrel.net> domain in bad faith, primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor for valuable consideration in excess of its costs.
5.7 Paragraph 4(b) of the Policy sets out circumstances, whose occurrence is evidence of bad faith. However, paragraph 4(b) specifically states that the listed circumstances are "in particular but without limitation" evidence of the registration and use of a domain name in bad faith (see Policy, para. 4(b)). Therefore, circumstances other than those listed in paragraph 4(b) of the Policy can also be evidence of bad faith registration and use. Passive holding of a domain name can constitute bad faith, taking into account the overall context of the Respondentís behavior, even where there is no affirmative use of the domain name. This view has been upheld in at least two WIPO Domain Name Dispute Administrative Panel Decisions, namely Telstra Corp. Limited v. Nuclear Marshmallows WIPO D2000-0003 and McNeil Consumer Brands, Inc. v. Mirweb Solutions WIPO D2000-0612. In Telstra, a Panel found that because the respondent did not conduct any business activity in the country of registration and the respondent had taken "deliberate steps to ensure that his true identity [could not] be determined and communication with him [could not] be made," and given the complainantís numerous trade mark registrations for "Telstra" it was not possible to conceive plausible circumstances in which the respondent could legitimately use the domain name. The Panel therefore found that the domain name had been registered in bad faith within the meaning of paragraph 4(b) of the Policy. In McNeil, the Panel followed the reasoning in Telstra and found that the respondent had registered the domain name at issue in bad faith because the respondent held the domain name passively without putting it to any legitimate commercial or fair use thereby preventing the Complainant from reflecting its trade mark in a corresponding domain name, and because the respondent had provided incomplete contact information in the domain name registration and had taken steps to conceal its true identity. The Panel also found based on the respondentís bad faith registration that the respondent was using the domain name in bad faith, concluding that "in circumstances when a [r]espondent has been found to register a domain name in bad faith and that no subsequent active use takes place that the passive use of the mark must also be in bad faith." In both these cases, the Panels found that the respondents had registered the domain names in question in bad faith within even though there was no direct showing that the respondents had either (i) registered the domain names primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainants or their competitors for valuable consideration in excess of costs; (ii) registered the domain names in order to prevent the complainants from reflecting the mark in corresponding domain names or that the respondents had engaged in a pattern of such conduct; (iii) registered the domain names primarily for the purpose of disrupting the business of competitors; or (iv) been using the domain names to intentionally attempt to attract Internet users to or to endorse, for commercial gain, the respondentsí Web sites by creating a likelihood of confusion with the complainantsí marks.
5.8 In this case, the Respondent has no interest in the Complainantís marks. The Domain Name does not resolve to any Web site or other on-line presence of Respondent. Furthermore, there is no evidence of Respondentís demonstrable preparations to make legitimate commercial or fair use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
5.9 The Respondent provided incomplete or inaccurate contact information in its registration or has failed to revise its registration to make it complete and accurate. Upon discovering the registration of the Domain Name, Complainant sent a letter to Respondent at the address listed in the Whois database for the registrant of the Domain Name, notifying Respondent that its registration of the Domain Name was in violation of Complainantís rights and U.S. law, demanding that Respondent cease and desist from using the Domain Name, and requesting that Respondent transfer the Domain Name registration to the Complainant. However, the letter was returned unopened to Complainant with a stamp from the U.S. Postal Service indicating that the post office box listed in the Respondentís registrant information was closed, with no forwarding address available. The Registrar requires that domain name registrants update their registration records to provide current registrant information. The Respondentís Whois record indicates that Respondent has provided the Registrar no new or updated registration information since the original registration of the Domain Name over one year ago despite the fact that the address provided by the Respondent in the registration record is not correct.
5.10 Furthermore, the Registrar Whois database indicates that Respondent has registered at least nine (9) other domain names in the .net top-level domain which domain names incorporate the trademarks or names of well-known companies such as AIG, Kimberly-Clark, and MGM Grand. A copy of the Whois report showing the domain names registered by Respondent is attached in Annex 9. None of the domain names resolve to any Web site or other on-line presence by Respondent. However, if the top-level domains of any of these domain names are changed from the .net to the .com top-level domain, they all resolve to functioning Web sites maintained by entities other than the Respondent. These registrations and the registration of the Domain Name show a pattern of conduct on the part of the Respondent of registering domain names in order to prevent the owner of trademark or service mark from reflecting the mark in a corresponding domain name, which pattern of conduct is evidence of registration and use of a domain name in bad faith (see Policy, para. 4(b)(ii)).
5.11 The Respondentís registration of the Domain Name in spite of its infringement of Complainantís registered trademarks, the Respondentís failure to make legitimate commercial or fair use of the Domain Name and to provided correct contact information to the Domain Name registrar, and Respondentís registration of other domain names of which it also fails to make legitimate commercial or fair use are evidence that Respondent has registered the Domain Name in bad faith.
5.12 Since Respondent has registered the Domain Name in bad faith and no subsequent active commercial or fair use of Domain Name has taken place, the passive use of the Complainantís marks in the Domain Name also renders the use of the domain name to be in bad faith.
5.13 Respondent is in default and has not filed a Response.
6. Discussion and Findings
6.1 Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.
6.2 The Panel has reviewed the evidence submitted by the Complainant concerning ownership of the trademarks CRATE & BARREL and CRATE AND BARREL and is satisfied that the Complainant has proven trademark rights in such terms. Furthermore, the Panel finds that the domain name "crateandbarrel.net" is confusingly similar to the trademarks in which the Complainant has rights.
6.3 The record does not show any legitimate non-commercial use or fair use by Respondent. The Panel hereby finds that Respondent has not shown any legitimate rights in the domain name.
6.4 Finally, the Panel needs to examine the issue of bad faith. The false contact information is evidence of use and registration in bad faith. Moreover, the record indicates that Respondent violated Policy 4(b)(ii) since it has engaged in a pattern of conduct to prevent trademark owners from reflecting their trademarks in domain names. Accordingly, the Panel finds that Complainant has met its burden of proof as to Policy 4(a)(iii) in that the domain name was registered and is being used in bad faith.
7.1 The Panel decides that the domain name <crateandbarrel.net> is identical or confusingly similar to the trademarks of Complainant, that Respondent has no rights or legitimate interests in such domain name, and that the domain name in issue has been registered and is being used in bad faith.
7.2 The Panel hereby orders that the registration of the domain name <crateandbarrel.net> be transferred to Complainant.
Clark W. Lackert
January 10, 2001