WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HSN Improvements, LLC v. N/A, Viktor Pavlenko / PrivacyProtect.org
Case No. D2013-0143
1. The Parties
The Complainant is HSN Improvements, LLC of St. Petersburg, Florida, United States of America, represented by Akerman Senterfitt, United States of America.
The Respondent is N/A, Viktor Pavlenko of Kharkiv, Ukraine; PrivacyProtect.org of Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <improvementscatalogblog.com> is registered with PDR 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 January 22, 2013. On January 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on the same day providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On January 25, 2013, the Complainant requested a short extension to file an amendment to the Complaint. The Center granted such extension request on the same day. The Complainant filed an amended Complaint on January 30, 2013.
The Center verified that the Complaint together with the amended 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 January 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2013.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on February 25, 2013. 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, HSN Improvements, LLC (“HSN Improvements”), is a wholly owned subsidiary of Cornerstone Brands, Inc. ("Cornerstone Brands"), which operates and distributes the IMPROVEMENTS catalog and related mail order catalog and online catalog business.
The Complainant is the owner of the IMPROVEMENTS trademark, United States (“U.S.”) Trademark Registration No. 1,852,742 for "mail order services in the field of general merchandise featuring tools" in International Class 42 and of the domain name <improvementscatalog.com>
The IMPROVEMENTS mark has been registered as a U.S. trademark since 1994, by the Complainant and its predecessors in interest. Whereas, the Complainant’s domain name is an additional online store front for the products in it’s Improvements Catalog. Cornerstone Brands registered the <improvementscatalog.com> domain name in 1997.
The Complainant’s registrations for the IMPROVEMENTS trademark, as well as the domain name <improvementscatalog.com>, long predate the disputed domain name registration.
The disputed domain name <improvementscatalogblog.com>, which was registered on May 9, 2012, has been used to redirect users to the pornographic websites “www.getiton.com” or “www.sexfinder.com”.
5. Parties’ Contentions
The Complainant claims that:
The disputed domain name <improvementscatalogblog.com> is confusingly similar to the IMPROVEMENTS trademark because it fully incorporates the IMPROVEMENTS trademark. Also, the disputed domain name is confusingly similar to the IMPROVEMENTS trademark because it consists of the IMPROVEMENTS trademark, with only the inclusion of generic terms “catalog” and “blog”, and the generic top-level domain “.com”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
Before the dispute, the Respondent had not been using the disputed domain name in connection with a bona fide offering of goods and services.
At the time of the registration of the disputed domain name, the Respondent was not generally known by the name “Improvements” or by any confusingly similar name.
The Respondent does not own any rights in the name or mark IMPROVEMENTS. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for the registration of the disputed domain name.
The disputed domain name redirects users to pornographic websites at the domain names <getiton.com> and <sexfinder.com>. The linking of pornographic images to the disputed domain name, which uses Complainant's IMPROVEMENTS trademark in its name, through redirection to pornographic websites tarnishes the image of Complainant's mark and constitutes evidence of bad faith.
The disputed domain name <improvementscatalogblog.com> has been registered and is being used by the Respondent in bad faith.
The Respondent knew or should have known the Complainant’s trademarks at the time of the registration of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, the Policy paragraphs 4(a)(i)-(iii) require that the Complainant demonstrate to the Panel that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the IMPROVEMENTS trademark and has stated that the disputed domain name is confusingly similar to it.
In addition, the Complainant has argued that Cornerstone Brands and HSN Improvements employ the IMPROVEMENTS trademark prominently in connection with their well-known, and widely circulated, IMPROVEMENTS catalog, and that the IMPROVEMENTS catalog maintains a circulation of millions of copies per year in the United States and countries throughout the world.
The Complainant affirms that its IMPROVEMENTS trademark forms the first, dominant, most significant and distinctive element of the disputed domain name. The Complainant further submits that the additional words “catalog” and “blog” in the disputed domain name are not dominant, being merely generic and descriptive.
This Panel agrees with the Complainant’s contention that the IMPROVEMENTS trademark is the only distinctive part of the disputed domain name and that the addition of the generic terms does not avoid the confusing similarity between the disputed domain name and the Complainant’s trademark. Moreover, it is now well established by many previous UDRP decisions that the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy
B. Rights or Legitimate Interests
This Panel finds that here, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorised the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to be commonly known by the name “Improvements” or by a similar name, and has not alleged any facts to justify its having any rights or legitimate interests in the disputed domain name. The Respondent does not appear to make any legitimate use of the domain name for noncommercial or fair use activities.
In addition, this Panel agrees with the Complainant’s opinion that the disputed domain name <improvementscatalogblog.com> would, to the ordinary user, purport to contain a forum for comment about the IMPROVEMENTS Catalog. On the contrary, the disputed domain name was used merely to misdirect users to pornographic and sexually explicit websites. This use cannot be considered as noncommercial and/or good faith use, and even less can be considered as granting to the Respondent a legitimate interest in, or right to, the disputed domain name.
Finally, the Respondent has not alleged any facts to justify any rights or legitimate interests in the disputed domain name. Indeed, the Respondent has not replied to the Complaint, proving or at least alleging in any other way any rights or legitimate interests in the disputed domain name nor has the Respondent denied any of the Complainant’s claims.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s trademark IMPROVEMENTS has been registered and extensively used for decades. The Complainant’s trademark has also been used for years in combination with the word “catalog” as it clearly appears on the website, ‘’www.improvementscatalog.com’’, of the Complainant’s parent company. In addition, the Complainant owns or controls the following variants of domain names containing the IMPROVEMENTS trademark itself, or through its parent company: <improvementscatalog.mobi> and <improvementsblog.com>.
It is therefore the Panel’s opinion that, on the balance of probability, the Respondent registered the disputed domain name having in mind the Complainant, intentionally choosing a name that combined Complainant’s trademark IMPROVEMENTS with the words “catalog” and “blog”.
As indicated before the disputed domain name, which combines the generic words “catalog” and “blog” with the Complainant’s trademark IMPROVEMENTS, can easily mislead Internet users into believing that the disputed domain name <improvementscatalogblog.com> would refer to a forum (i.e. a “blog”) for comment about the IMPROVEMENTS Catalog. On the contrary, the disputed domain name has been used to merely misdirect users to pornographic and sexually explicit websites.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.11, “Intentional tarnishment of a complainant's trademark may in certain specific circumstances constitute evidence of registration and/or use of a domain name in bad faith…Tarnishment in this context normally refers to such conduct as linking pornographic images or wholly inappropriate information to an unrelated trademark.”
This Panel agrees with the above opinion and finds that the Respondent’s use of the disputed domain name to misdirect users to pornographic websites constitutes a clear example of bad faith registration and use and that, in the present case, this is by itself a sufficient element for a finding on this element.
Therefore, the Panel finds on the basis of the evidence presented, that the Respondent has registered and is using the disputed domain name in bad faith.
Consequently, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For 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 <improvementscatalogblog.com> be transferred to the Complainant.
Date: March 4, 2013