national arbitration forum

 

DECISION

 

Hunter Fan Company v. Ceiling Fans, Inc.

Claim Number:  FA0503000438211

 

PARTIES

 

Complainant is Hunter Fan Company (“Complainant”), represented by Danny Awdeh, of Caldwell and Berkowitz P.C., 165 Madison Avenue, Suite 2000, Memphis, TN 38103. Respondent is Ceiling Fans Inc. (“Respondent”), Post Office Box 440, Ambridge, PA 15003.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <casablancafans.com>, registered with Go Daddy Software, Inc.

 

PANEL

 

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Paul M. DeCicco, Houston Putnam Lowry, Chartered Arbitrator, and Jacques A. Léger, Q.C., as Panelists.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 9, 2005; the National Arbitration Forum received a hard copy of the Complaint on March 14, 2005.

 

On March 10, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <casablancafans.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On March 17, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 6, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@casablancafans.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 15, 2005, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Paul M. DeCicco, Houston Putnam Lowry, Chartered Arbitrator, and Jacques A. Léger, Q.C., as Panelists.

 

On April 29, 2005, the National Arbitration Forum issued an Order extending the time period within which the Panel was required to render its Decision until May 6, 2005.

 

On May 6, 2005, the National Arbitration Forum issued another Order extending the time period within which the Panel was required to render its Decision until May 11, 2005.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <casablancafans.com> domain name is confusingly similar to Complainant’s CASABLANCA mark.

 

2.      Respondent does not have any rights or legitimate interests in the <casablancafans.com> domain name.

 

3.      Respondent registered and used the <casablancafans.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

 

DISCUSSION AND FINDINGS

 

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)    the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)    Respondent has no rights or legitimate interests in respect of the domain name; and

(3)    the domain name has been registered and is being used in bad faith.

 

 

(1) Identical and/or Confusingly Similar

 

 

Complainant has produced evidence that it holds several trademark registrations on the Principal Register of the United States Patent and Trademark Office (“USPTO”) for the CASABLANCA mark, including Reg. No. 1,073,112 (issued September 13, 1977) for ceiling fans. This registration with the USPTO, as well as Complainant’s continuous use of the mark in commerce since at least 1977, demonstrate Complainant’s rights in the CASABLANCA mark for purposes of Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive, and that a respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”).

 

The Panel finds that Respondent’s <casablancafans.com> domain name is confusingly similar to Complainant’s CASABLANCA mark because the domain name simply adds the generic term “fans,” which is descriptive of Complainant’s products, and the “.com” generic top-level domain (“gTLD”) to the mark. Naturally, the addition of a generic term and a gTLD fail to distinguish the domain name from the CASABLANCA mark and, therefore, the domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combined the complainant’s mark with a generic term that had an obvious relationship to the complainant’s business); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words “fashion” or “cosmetics” after the trademark were confusingly similar to the trademark).

 

 

(2) Rights or Legitimate Interests

 

 

In the absence of a response, a Panel may accept as true all reasonable allegations contained in the Complaint unless clearly contradicted by the evidence. Complainant has alleged that Respondent lacks rights and legitimate interests in the <casablancafans.com> domain name. Faced with the absence of a response in this case, the Panel finds that neither Respondent nor the evidence contradicts this allegation. The Panel further concludes that, because Respondent has failed to submit a response, Respondent has failed to propose any set of circumstances that could substantiate its rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a complaint to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

 

Complainant asserts, and the Panel has verified on a proprio motu basis, that the <casablancafans.com> domain name does not resolve to any active website. Moreover, Respondent has held the domain name registration for more than seven years. Since Respondent has made no demonstrable preparations to use the disputed domain name, Policy ¶¶ 4(c)(i) and 4(c)(iii) are inapplicable. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent advanced no basis on which the panel could conclude that it had rights or legitimate interests in the domain names, and no use of the domain names was established).

 

Complainant alleges, and the Panel cannot find any indications otherwise, that Respondent is not commonly known by the <casablancafans.com> domain name. Furthermore, the domain name’s WHOIS information states that Respondent is known as “Ceiling Fans, Inc.” It is therefore apparent from this information and Respondent’s lack of response that Respondent has failed to demonstrate rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”).

 

 

(3) Registration and Use in Bad Faith

 

Most of the time, it is quite difficult, if not impossible, to actually show bad faith with concrete evidence, particularly given the limited scope of the inquiry in these proceedings; as rule, one should not expect to find the “smoking gun”. At the same time, good faith is to be presumed. However, it is the Panel’s view that once Complainant has made a prima facie case in that direction, it is then incumbent upon Respondent to either respond or explain why its conduct should not be ascribed to bad faith. The Panel’s understanding of the Policy is that although the initial burden to prove Respondent’s bad faith in the registration or the use of the disputed domain name lies squarely on the shoulders of Complainant, once a prima facie case of bad faith has been made by Complainant, as the Panel finds in the present case, it is up to Respondent to either justify its business conduct, explain it, or demonstrate satisfactorily the contrary. See, e.g., Royal Bank of Scotland Group v. Lopez, D2002-0823 (WIPO Dec. 3, 2003); AT&T Corp. v. Linux Sec. Sys., DRO2002-0002 (WIPO Oct. 11, 2002).

Complainant asserts that Respondent, a ceiling fan retailer of the CASABLANCA brand, is reflecting its CASABLANCA mark in a corresponding domain name. The Panel might infer that there was a lack of bad faith from the fact that Respondent is a retailer of Complainant’s brand. However, the Panel finds that there is no evidence that Respondent had a license to use the CASABLANCA mark and that there is no per se license to use a trademark in a domain name simply because one is selling a trademarked product at retail.

While each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of the domain name, additional factors can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

 

Complainant asserts, and so the Panel finds, that Respondent is not using the disputed domain name. Respondent has held the <casablancafans.com> domain name registration for more than seven years. If the Panel finds that Respondent has engaged in passive holding, then the Panel may find that Respondent registered and used the domain name in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of Policy ¶ 4(a)(iii)); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).

 

Respondent’s registration of the disputed domain name, which is confusingly similar to Complainant’s mark, suggests that Respondent knew of Complainant’s rights in the CASABLANCA mark. Additionally, Complainant’s trademark registration for the CASABLANCA mark on the Principal Register of the United States Patent and Trademark Office gave Respondent constructive notice of the mark. The Panel can therefore infer that Respondent had constructive knowledge of the fact that Complainant owned a registration for the CASABLANCA mark in conjunction with the sale of fans. This is only confirmed by the fact that Complainant’s mark is well-known in the field. Thus, the Panel finds that Respondent chose the <casablancafans.com> domain name based on the distinctive and well-known qualities of Complainant’s mark, which evidences bad faith registration and use under Policy ¶ 4(a)(iii). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it was “inconceivable that Respondent could make any active use of the disputed domain names without creating a false impression of association with Complainant”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) (“Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.”).

 

 

DECISION

 

Having established all three elements required under the ICANN Policy, the majority of the Panel, Jacques A. Léger, Q.C. and Paul M. DeCicco, concludes that relief shall be GRANTED

 

Accordingly, it is Ordered that the <casablancafans.com> domain name be TRANSFERRED from Respondent to Complainant.

  

Jacques A. Léger, Q.C.

Presiding Panelist

  

Paul M. DeCicco

Panelist

 

 

            Houston Putnam Lowry, Chartered Arbitrator, dissents.

 

Reasons for dissent:

 

I respectfully dissent for one, and only one, reason.  According to UDRP §4(a)(iii), the domain name must have been registered and used in bad faith [emphasis added].  See Agent Host Co. v. Host Dot Com Invs., AF-0343 (eResolution Oct. 16, 2000).  It seems fairly clear from the evidence that

(i)                  the domain name registered by Respondent 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 respect of the domain name.

Likewise, it is clear Respondent is “using” the domain name in bad faith (this is a case of passive holding).

 

The only question is whether or not the domain name was REGISTERED in bad faith.  It is undisputed the domain name was registered on November 10, 1997 (seven and one half years ago).  It is also undisputed Respondent was one of Complainant’s distributors at the time of registration.

 

This has provoked a spirited discussion among the Panelists as to the power of a distributor (generally) and this distributor (a ceiling fan retailer) in particular.  It is true distributors (particularly recently created distributors) tend to be somewhat restricted in their use of their principal’s trademarks.  Rather than inquire on this subject, the majority proceed based upon the assumption this distributor did not have the power to register a domain name including its principal’s trademark.

 

It is this Panelist’s experience that distributors sometimes even have this explicit power, especially when an old contract is involved.  See Mark Travel Corp. v. ATHS, FA 154644 (Nat. Arb. Forum May 29, 2003).  There is no doubt an authorized distributor of a trademarked product may use the trademark in connection with the sale of the trademarked product.  Without a specific demarcation of how far the trademark is used (and nothing specific was introduced into evidence here), it is clear the trademark may be used in advertisements for the trademarked product.  The trademark may also be used on stationary and in brochures (once again in connection with the trademarked product).  Although it is less common, distributors sometime construct words to represent telephone numbers that incorporate a trademark.  There is a split of authority between panelists on whether a distributor can register a domain name that includes a principal’s mark (without an explicit grant of authority one way or the other).

 

The facts as the Panelists know them are limited.  We don’t know when Respondent was terminated as a distributor or why.  We don’t know if Respondent ever used the domain name or for what purpose.  Perhaps Respondent used the domain name for permissible purposes while it was a distributor (a supposition that doesn’t require much imagination).  We simply do not know and the majority does not want to ask any questions.  A claimant still needs to make out a prima facie case because panelists do not render default awards simply because the respondent fails to respond, ICANN Rule 5(ix)(e).  While panelists will (and generally should) believe assertions of fact that are uncontested, we should not accept unopposed ultimate conclusions of law that are not supported by factual claims.  I believe that is the present case.

 

For the foregoing reasons, I would either ask for additional information or deny the application without prejudice.

 

Houston Putnam Lowry 

Panelist, dissenting

                                               Dated:  May 11th, 2005