national arbitration forum

 

DECISION

 

Hancock Fabrics, Inc. v. Forum LLC

Claim Number:  FA0508000547844

 

PARTIES

Complainant is Hancock Fabrics, Inc. (“Complainant”), One Fashion Way, Baldwyn, MS 38824.  Respondent is Forum LLC (“Respondent”), PO Box 2331, Roseau, Roseau 00152.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hancock-fabrics.com>, registered with Fabulous.com Pty Ltd.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 25, 2005; the National Arbitration Forum received a hard copy of the Complaint on August 30, 2005.

 

On August 25, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <hancock-fabrics.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name.  Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 August 30, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 19, 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@hancock-fabrics.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 27, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

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:

 

Hancock-fabrics.com is a website that links web users to a variety of different web sites.  Hancock-fabrics.com contains various “main categories”, such as “business”, “cars”, “entertainment”, “health”, “homes”, “legal” and “travel”. The Complainant operates 446 retail stores in 43 states, supplies various independent wholesale customers and operates an internet store under its two domain names, hankcockfabrics.com and homedecoratingaccents.com. 

 

a).        The domain name (“Hancock-fabrics.com) is confusingly similar to the trademark in which the Complainant has rights (Hancock Fabrics) as the domain name contains only one additional character (“-”).

 

b).        The Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the complaint due to the following:

 

i.       The Respondent’s use of the domain name or a name corresponding to the domain name is not in connection with a bona fide offering of goods or services;

 

ii.     The Respondent has not been commonly known by the domain name and has not acquired trademark or service mark rights;

 

iii.    The Respondent is not making a legitimate noncommercial or fair use of the domain name.  The Respondent’s intent is to mislead, confuse and divert consumers and tarnish the trademark at issue by leading would-be Complainant customers to the Respondent’s website.

 

The domain name has been registered and is being used in bad faith by the Respondent.  By using the domain name, the Respondent has intentionally attempted to attract internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s site.  The Respondent’s domain name directs internet users to a web site populated with “main categories”, including “business”, “cars”, “entertainment”, “health”, “homes”, “legal” and “travel”.  When the web user clicks onto one of these main categories, they are provided with descriptions of and links to various other websites.  For instance, when the web user clicks on the “cars” category, they are provided with links to various websites associated with purchasing cars or obtaining quotes on cars. In addition, when the web user clicks on the “internet” category, they are provided with links to sites associated with setting up internet service. The content of the Respondent’s web site bears no relation to the domain name and purports to confuse internet users, resulting in unfair competition with the Complainant and which harms the goodwill and dilutes the trademark of the Complainant – a company which has been in existence for over 47 years and operating under the federally registered trademark since 1998.

 

The domain name is also being used in bad faith by the Respondent through false designation and origin.  The domain name does not contain the legal name of the Respondent or appear to represent any connection to the Respondent’s offering of goods or services. 

 

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

 

FINDINGS

Complainant, Hancock Fabrics, Inc., sells fabrics, home sewing accessories, notions, patterns, trimmings, and crafts.  Additionally, Complainant provides consulting services related to establishing and operating retail fabric stores.  Complainant operates 446 stores in forty-three states, supplies various independent wholesale customers, and operates an internet store under its <hancockfabrics.com> and <homedecoratingaccents.com> domain names. 

 

Complainant has been using its HANCOCK FABRICS mark for over forty years and has held a registration for its mark with the United States Patent and Trademark Office (“USPTO”) since 1998 (Reg. No. 2,161,840 issued on June 2, 1998).

 

Respondent registered the <hancock-fabrics.com> domain name on June 24, 2002.  The domain name resolves to a website that consists of links to various websites. 

 

DISCUSSION

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.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant’s registration of its HANCOCK FABRICS mark with the USPTO is sufficient to establish Complainant’s rights in the mark.  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

Respondent’s <hancock-fabrics.com> domain name is confusingly similar to Complainant’s mark because it merely adds a hyphen and the generic top-level domain name (gTLD) “.com.”  Respondent’s addition of a hyphen and a gTLD is insufficient to distinguish Respondent’s domain name from Complainant’s mark for purposes of Policy ¶ 4(a)(i).  See Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.org>, <tele-place.com>, and <theteleplace.com> are confusingly similar to the complainant’s TELEPLACE trademark); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has the initial burden of proving that Respondent lacks rights and legitimate interests in the disputed domain names.  In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel held:

 

Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.

 

Id.; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).  Thus, having found that Complainant has met its initial burden by establishing a prima facie case, the Panel will now analyze whether Respondent has met its burden to establish rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).

 

Complainant claims Respondent is not commonly known by the disputed domain name.  Respondent’s WHOIS information indicates Respondent is known as “Forum LLC.”  Because Respondent did not submit a Response, the Panel accepts as true Complainant’s allegations that Respondent is not commonly known by the disputed domain name.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  The Panel concludes Respondent is not commonly known by the disputed domain name and therefore does not have rights or legitimate interests in it under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Complainant contends Respondent is using the disputed domain name by misleading Internet users and diverting them away from Complainant’s business.  Complainant argues Respondent’s website consists merely of links, from which Respondent presumably earns a profit.  Respondent’s failure to respond allows the Panel to draw adverse inferences from Complainant’s allegations and accept them as accurate descriptions of Respondent’s behavior.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).  Thus, Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate or noncommercial use under Policy ¶ 4(c)(iii).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).

 

Consequently, the Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The disputed domain name resolves to a website from which Respondent earns a profit by confusing Internet users and diverting them to Respondent’s website.  Capitalizing on the confusing similarity between Respondent’s domain name and Complainant’s mark creates a likelihood of confusion and is evidence of bad faith use and registration under Policy ¶ 4(b)(iv).  See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).

 

Additionally, Complainant’s registration of its mark with the USPTO confers constructive knowledge on Respondent of Complainant’s rights in the mark.  The Panel finds Respondent had constructive knowledge of Complainant’s rights at the time of registration.  See 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.”).  The Panel concludes Respondent’s constructive knowledge of Complainant’s rights in the mark is evidence that Respondent used and registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  See

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).

 

Therefore, the Panel concludes Complainant satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

 

Houston Putnam Lowry, Charted Arbitrator, Panelist

Dated: October 11, 2005