Federated Western Properties, Inc. v. Henry Chan

Case No. D2003-0472

The Complainant is Federated Western Properties, Inc. of Las Vegas, Nevada, United States of America, represented by Amster, Rothstein & Ebenstein of United States of America.

The Respondent is Henry Chan of Nassau, Bahamas.

The disputed domain names <bonmarcheservices.com>, <burdinesservices.com>, <macysflowerclub.com>, <macysvisa.com> and <richsdepartmentstores.com> are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 18, 2003. On June 20, 2003, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On June 20, 2003, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 26, 2003. 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 the Respondent of the Complaint, and the proceedings commenced on July 1, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2003.

The Center appointed Mark Ming-Jen Yang as the Sole Panelist ("the Panel") in this matter on August 6, 2003. 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.

On September 2, 2003, the Panelissued Administrative Panel Procedural Order No. 1,requesting, pursuant to Rule 12, a further statement from the Complainant, submitting allegations and evidence as to the absence of Respondent’s rights and legitimate interests and the bad faith of the Respondent, relating to the domain name <burdinesservices.com>, and setting out deadlines for the Complainant and then the Respondent to respond (September 8, 2003, and September 12, 2003, respectively) and the new deadline for it to render its decision (September 19, 2003).

On September 8, 2003, the Complainant responded with a "First Amended Complaint." The Respondent did not respond by its deadline.

The Panel notes, without comment, the implicit decision of the Center to accept the subject five domain names in the single, subject proceeding.

The Panel is satisfied with the Center’s assessment that it verified the Complaint’s compliance with the relevant requirements of the Rules, Supplemental Rules and Policy.

The Panel has not received any requests regarding further submissions, waivers or extensions of deadlines.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel shall issue its decision based upon the Complaint (with June 26, 2003 amendment) and the First Amended Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondent’s response.

In the Complaint and the First Amended Complaint and the associated Exhibits, the Complainant submitted evidence and contentions of various factual and legal conclusions based on such evidence.

Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, the Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. The Panel’s position on some contentions is amplified below (in Discussion and Findings).

In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts much of (but not all) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence, as set out in the Complaint and First Amended Complaint. The Panel accepts enough to render its decision below.

The Respondent’s five domain names are identical or confusingly similar to the trade names, trademarks and service marks of the Complainant; the Respondent has no rights or legitimate interests in the five domain names; and that the five domain names were registered and are being used in bad faith.

The Respondent did not reply to the Complainant’s contentions.

The Panel considers a trademark used or registered in association with services to be a "service mark" and therefore has treated a "trademark" and a "service mark" to be the same in this decision, regardless of the repeated use of those terms separately in the Complaint. The Complaint also uses the term, "trade name," which the Panel considers to be slightly different in law than a trademark used or registered in association with services, and the allegations about trade names are dealt with as required below.

The Panel accepts that the Complainant (based on its United States  trademark registration for RICH’S and its large United States  marketplace presence with that trademark) has substantial rights to the trademark RICH’S in association with retail department store services. The Panel does not accept the Complainant’s allegation that it has rights in "Rich’s department stores" as a trade name because the only evidence submitted was Complaint Exhibit D that indicated that an Associated Press article used the phrase "Rich’s department store" to identify a spokeswoman. The Panel does not consider the failed allegation on the trade name affects its finding on the contention of confusing similarity.

The Panel accepts that this domain name is confusingly similar to the RICH’S trademark in which the Complainant has substantial rights. The presence of the descriptive component "departmentstores" does not distinguish in law, or in the marketplace.

The Panel accepts that the Complainant (based on its plurality of United States trademark registrations having the component MACY’S, its registration of <macys.com> and its large marketplace presence with that trademark) has substantial rights to the trademark MACY’S in association with retail department store services. The Complaint occasionally refers to MACY’S as a trade name in a conclusory way. The Panel does not consider the failed allegation on the trade name, affects its finding on the contention of confusing similarity.

The Panel accepts that these two domain names are each confusingly similar to the MACY’S trademark in which the Complainant has substantial rights. The component MACYS dominates the two domain names, as proper adjectives.

The Panel accepts that the Complainant (based on its United States trademark registration for THE BON MARCHE and its large United States marketplace presence with that trademark) has substantial rights to the trademark THE BON MARCHE in association with retail department store services. The Complaint occasionally refers to THE BON MARCHE as a trade name in a conclusory way. The Panel does not consider the failed allegation on the trade name affects its finding on the contention of confusing similarity.

The Panel accepts that this domain name is confusingly similar to the THE BON MARCHE trademark in which the Complainant has substantial rights. The presence of the descriptive component "services" does not distinguish in law or in the marketplace.

The Panel accepts that the Complainant (based on its United States registrations for trademarks having the component BURDINES and its large United States marketplace presence with those trademarks (at pages 4-5 of the Complaint, under the section, "IV Jurisdictional Basis for the Administrative Proceeding," and pages 1-2 of the First Amended Complaint)), has substantial rights to the trademark BURDINES in association with retail department store services.

The Panel accepts that this domain name is confusingly similar to the BURDINES trademark in which the Complainant has rights. The presence of the descriptive component "services" does not distinguish in law or in the marketplace.

The Panel accepts the Complainant’s contention that the Respondent has no rights in this domain name based on Complainant’s allegations, based on information and belief, that the Respondent has no trademark registrations which include the component RICH’S, does no business under a name that includes the component RICH’S and is not commonly known by any name that includes the component RICH’S. The Panel infers from the Complaint and accepts, that "no rights" was meant to include "no legitimate interests."

The Panel accepts the Complainant’s contention that the Respondent has no rights in these two domain names based on Complainant’s allegations, based on information and belief, that the Respondent has no trademark registrations which include the component MACY’S, does no business under a name that includes the component MACY’S and is not commonly known by any name that includes the component MACY’S. The Panel infers from the Complaint and accepts, that "no rights" was meant to include "no legitimate interests."

The Panel accepts the Complainant’s contention that the Respondent has no rights in this domain name based on Complainant’s allegations, based on information and belief, that the Respondent has no trademark registrations which include the component BON MARCH, does no business under a name that includes the component BON MARCHE and is not commonly known by any name that includes the component BON MARCHE. The Panel infers from the Complaint and accepts, that "no rights" was meant to include "no legitimate interests."

The Panel accepts the Complainant’s contention that the Respondent has no rights in this domain name based on Complainant’s allegations, based on information and belief, that the Respondent has no trademark registrations which include the component BURDINES, does no business under a name that includes the component BURDINES and is not commonly known by any name that includes the component BURDINES. The Panel infers from the First Amended Complaint and accepts, that "no rights" was meant to include "no legitimate interests."

The First Amended Complaint uses two spellings, BURDINES and BURDINE’S for the Complainant’s trademark. The Panel assumes that the latter is a typographical error because the US trademark registrations use the former spelling.

The Panel accepts the Complainant’s contention that this domain name was registered and is being used in bad faith.

The Panel accepts that this domain name was registered in bad faith because it was registered with knowledge of the Complainant’s aforementioned registration for the trademark RICH’S.

The Panel accepts the Complainant’s contention that this domain name is being used in bad faith by the Respondent by its web site, "www.richsdepartmentstores.com," which appears to be commercial in nature and unconnected to the Complainant.

The Panel accepts the Complainant’s contention that these two domain names were registered and are being used in bad faith.

The Panel accepts that these domain names were registered in bad faith because they were registered with knowledge of the Complainant’s aforementioned registration for the trademark MACY’S.

Carefully parsed, the Complaint is not as clear as it could be on the allegation of use in bad faith (the Complaint "elides" registration and use with employment of "intention" language, perhaps because the Complaint is being influenced by a slightly different requirement under the United States Anticybersquatting Consumer Protection Act). The Panel is willing to infer (and accept) the allegation that the Respondent is using these domain names at its web sites, "www.macysflowerclub.com" and "www.macysvisa.com," which appear to be commercial in nature and unconnected to the Complainant. The Panel ignores the BroadBridge Media case under the United States Anticybersquatting Consumer Protection Act, cited in the Complaint as supporting its contention of bad faith registration and use of these domain names, because that case dealt with a situation where the domain name holder did not use the domain name, but did offer to sell it to the complaining party for unusually large financial gain, and is not helpful to the Complainant’s contention of bad faith use.

The Panel accepts the Complainant’s contention that this domain name was registered and is being used in bad faith.

The Panel accepts that this domain name was registered in bad faith because it was registered with knowledge of the Complainant’s aforementioned registration for the trademark THE BON MARCHE.

The Panel is willing to infer (and accept) the allegation that the Respondent is using this domain name at its web site, "www.bonmarcheservices.com," which appears to be commercial in nature and unconnected to the Complainant.

The Panel accepts the Complainant’s contention that this domain name was registered and is being used in bad faith.

The Panel accepts that this domain name was registered in bad faith because it was registered with knowledge of the Complainant’s aforementioned registrations for trademarks including the component BURDINES.

The Panel accepts the Complainant’s contention that this domain name is being used in bad faith by the Respondent by its web site, "www.burdinesservices.com," which appears to be commercial in nature and unconnected to the Complainant.

Carefully parsed, the First Amended Complaint is not as clear as it could be on the allegation of use in bad faith (the First Amended Complaint "elides" registration and use with employment of "intention" language, perhaps because the Complaint is being influenced by a slightly different requirement under the United States Anticybersquatting Consumer Protection Act). The Panel ignores the BroadBridge Media case under the United States Anticybersquatting Consumer Protection Act, cited in the First Amended Complaint as supporting its contention of bad faith registration and use of this domain name, because that case dealt with a situation where the domain name holder did not use the domain name, but did offer to sell it to the complaining party for unusually large financial gain, and is not helpful to the Complainant’s contention of bad faith use.

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 names <bonmarcheservices.com>, <macysflowerclub.com>, <macysvisa.com>, <richsdepartmentstores.com> and <burdinesservices.com> be transferred to the Complainant.