WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WeddingChannel.com, Inc. v. Helois Lab
Case No. D2006-0021
1. The Parties
Complainant is WeddingChannel.com, Inc., Los Angeles, California, United States of America, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America.
Respondent is Helois Lab, Eldoret, Kenya.
2. The Domain Name and Registrar
The disputed domain name <macys-weddingchannel.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2006. On January 12, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On January 12, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on January 17, 2006. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on January 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 9, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 10, 2006.
The Center appointed Desmond J. Ryan as the sole Panelist in this matter on February 14, 2006. 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
Complainant is the owner of several United States registrations of trademarks consisting of or including the words “Wedding Channel” in respect of a wide range of services connected with matters relating to or incidental to the planning and arrangement of weddings, advertising, marketing, consulting, travel information and other services. Complainant is also the owner of trademark registrations of WEDDINGCHANNEL.COM registered in respect of a similar range of services. The claimed date of first use in commerce in respect of each mark is July 1997.
Complainant is also the owner of the domain name <weddingchannel.com> under which it operates a web site providing advice and information with respect to the matters for which its trademarks are registered and provides links to wedding registries established at a number of leading United States retail stores including JC Penney, Tiffany & Co., Bloomingdale’s and several others. Complainant is also, by agreement with the owner of the trademark MACY’S, the owner of the domain name <macysweddingchannel.com> under which it provides a direct link to Macy’s wedding registries.
Commerce generated through Complainant’s web sites is very substantial. It claims that its current registry database contains more than 1,300,000 registries, that since 1999, more than 500 million dollars worth of bridal registry gifts have been purchased through its web site and that in the year 2000 it generated revenue in excess of 25 million dollars. Complainant also claims to have invested many millions of dollars in advertising and marketing its “Weddingchannel” marks and web site and claims to have spent over 15 million dollars on such advertising and promotion in the years 2001 to 2003.
The domain name was registered by Respondent in February 2005. The administrative and technical contacts are Lab, Helois and have the same address and telephone number as Respondent. The domain name resolves to a web site having a headline banner entitled “Web Search” and listing links to a wide range of suppliers of wedding related goods and services, including hotels, shopping centres, limousine services, travel services, photography, flowers, wedding chapels, formal-wear hire services and a variety of other services. The web site also contains an invitation to “Buy This Domain – Find Out How Click Here”. As at August 12, 2005, following that link led to a web page headed “Kentech” which invited offers for purchase of the domain name.
In August 2004, Complainant filed a complaint with the National Arbitration Forum in respect of the same domain name then registered in the name of NOLDC, Inc. By his decision dated September 21, 2004, learned Panelist James A Carmody Esq, ordered the transfer of the domain name to Complainant, see WeddingChannel.com Inc. v. NOLDC, Inc, National Arbitration Forum Case No. FA310971.
5. Parties’ Contentions
Complainant contends that Respondent is related to, if not one and the same as, NOLDC, Inc, and that Respondent, under a variety of aliases, has a history of registering trademark-related domain names which have been the subject of at least eight adverse UDRP decisions. Complainant cites in particular the decision of learned Panelist Adam Taylor in Dr. Ing. h.c.F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890.
Complainant further contends that its trademarks WEDDING CHANNEL and WEDDINGCHANNEL.COM are well and widely known and that the domain name is confusingly similar thereto. It asserts that Respondent has no rights or legitimate interest in the domain name and that Respondent’s registration and use of the domain name is in bad faith. It contends that Respondent’s linking of the domain name to a site inviting offers to purchase the domain name evidences Respondent’s registration of the domain name with the primary intention of selling it for a profit, that its registration was in order to prevent Complainant from reflecting its mark in a corresponding domain name and that the many cases already decided against Respondent under its various aliases evidence a pattern of such behaviour. Respondent’s registration of the domain name knowing of Complainant’s rights and linking the domain name to direct competitors of Complainant and its partner, Macy’s, clearly evidences registration primarily for the purpose of disrupting the business of Complainant and of intentionally attempting to attract users to its web site for commercial gain by creating a likelihood of confusion with Complainant and its well-known marks.
Complainant contends that none of the defences set out in paragraph 4(c) of the Policy are available to Respondent. Its use of the domain name in the offering of directly competing services is not bona fide use, Respondent has not been commonly known by the domain name and its use is not legitimate, non-commercial or fair.
Respondent did not reply to Complainant’s contentions. It has not attempted to dispute any of the facts asserted by Complainant.
6. Discussion and Findings
To succeed in the Complaint, Complainant must establish each of the following grounds:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the domain name; and
(ii) the domain name has been registered and is being used in bad faith.
Complainant has cited, and the Panel has had the benefit of reading, the decision of the learned Panelist James A Carmody Esq, in WeddingChannel.com Inc. v. NOLDC, Inc, cited above. This case concerns the same domain name, substantially the same facts and, in Complainant’s submission, the same or a closely related Respondent. Respondent has had the opportunity to contest Complainant’s contentions but has failed to do so.
Absent any rebuttal from Respondent, the Panel is entitled to draw an inference that it is unable to do so – see paragraph 14 of the Rules, The Vanguard Group, Inc. v. Lorna Kang, (WIPO Case No. D2002-1064). The Panel therefore accepts Complainant’s submissions and respectfully adopts the findings and conclusions of learned Panelist Carmody.
A. Identical or Confusingly Similar
The domain name incorporates in its entirety Complainant’s demonstrably well-known trademarks WEDDING CHANNEL and WEDDINGCHANNEL.COM. It differs from these marks only in the addition of a hyphen and the word “Macys”. That does not, in the opinion of the Panel, negative a finding of confusing similarity having regard to the extensive promotion and deemed distinctiveness of Complainant’s registered mark.
The Panel is therefore satisfied that the domain name is confusingly similar to a trademark or service mark in which Complainant has rights. The requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The initial burden of showing Respondent’s absence of legitimate rights or interest lies with Complainant. The facts speak for themselves. The domain name is substantially identical to that of Complainant. None of the defences available to Respondent under paragraph 4(c) of the Policy can be made out. Respondent’s use of the domain name cannot be in relation to bona fide sale or offer for sale of goods or services. It was not commenced before notice of the dispute, since if Complainant’s contention with respect to the identity of Respondent is accepted, which it is, it commenced after, and in contempt of, Panelist Carmody’s decision.
The domain name bears no resemblance to any name by which Respondent appears to be known. Its use of the domain name is not legitimate or fair, but is clearly commercial and intended to misleadingly direct consumers to commercial web sites which directly compete with Complainant and its clients.
Respondent has no right or legitimate interest in the domain name. Paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The evidence clearly establishes that Respondent uses the domain name intentionally to attract consumers to its site for commercial gain. Consumers accessing Respondent’s site would clearly expect to arrive at Complainant’s well-known site or at least to a site with which Complainant is connected. The circumstance referred to in paragraph 4(b)(iv) of the Policy is established. It is therefore unnecessary to consider the other heads of paragraph 4(b). Paragraph 4(a)(iii) of the Policy is satisfied.
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 <macys-weddingchannel.com> be transferred to Complainant.
The Panel notes that the Complainant provided in its Complaint a letter from the owner of the MACY’S trademark authorizing the Complainant to initiate proceedings against the owner of the domain name <macys-weddingchannel.com>. Accordingly, it is taken not to object to this result.
Desmond J. Ryan
Dated: February 28, 2006