The Complainant is Mimran Group, Inc., Toronto, Ontario, Canada, represented by an external representative.
The Respondent is NOLDC, Inc, New Orleans, Louisiana,
United States of America.
2. The Domain Name and Registrar
The disputed domain name <alfredsungdress.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 May 10, 2006. On May 10, 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 May 10, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 6, 2006. The Center verified that the Complaint and the Amendment thereto 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 June 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2006.
The Center appointed John Katz as the sole panelist
in this matter on July 5, 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
The Complainant is the registered proprietor of a number of trademarks in various jurisdictions including the United States, Canada, UK, European Union and a number of countries in South East Asia. These marks are registered for the name ALFREDSUNG and are current.
A google search also shows that the Complainant is the proprietor of a website “www.alfredsungbridal.com”. A search of that site confirms the evidence in the Complaint that the Complainant sells under and by reference to the registered trademarks bridal dresses and accessories. There appears to be an associated website “www.alfredsungdresses.com” which advertises and promotes clothing including Alfred Sung designed clothing other than bridal wear, although this website is apparently owned by the Dessy Group of New York. It is to be assumed that this website is operated with the full knowledge and authority of the Complainant.
Google searches of the name ALFREDSUNG disclose a number of hits including the online electronic encyclopedia Wikipedia together with a number of other hits disclosing the identity and CV of the principal name behind the trademarks, ALFREDSUNG.
It also appears as if ALFREDSUNG is a name and trademark used in the course of trade in connection with fragrances.
Access to the ALFREDSUNG website shows that the company appears to be in a significant way of business involved in the design, promotion and sale of wedding dresses, bridal wear, fashion and accessories and other women’s fashion clothing. The history and CV of ALFREDSUNG, designer, can easily be discerned from the websites and other web accessible material.
The Respondent has not responded to the Complaint. It is registered with a business address of New Orleans, Louisiana, United States. Little is disclosed about it in the Complaint.
However, a google search discloses that NOLDC Inc.
of New Orleans is a company which appears to trade on line in connection with
domain names. The website “www.noldc.com” discloses that NOLDC is
an acronym for New Orleans Leftover Data Centres Inc. A search of that website
discloses the business of the Respondent which is addressed in a little more
detail in section 6 below.
5. Parties’ Contentions
A. Complainant
The Complaint of Mimran Group Inc. is brief. Suffice to say that it centres around the registered trademarks and the reputation and concomitant goodwill that has been established in the name and trademarks ALFREDSUNG under and by reference to the business of promoting, advertising and selling bridal wear and accessories by reference to the trademark ALFREDSUNG.
The Complainant contends that the disputed domain name is nearly identical to the registered trademarks used by the Complainant. The Complainant also contends that the Respondent likely knew of the Complainant’s trademarks and is seeking to take advantage of the registered trademarks.
It follows from this, so the Complainant says, that there can be no rights or legitimate interests by the Respondent in the disputed domain name and the registration of it was therefore in bad faith and the disputed domain name is being parked for pay per click fees by visitors to the disputed domain name website and is therefore being used in bad faith.
The Complainant relies upon a number of the well-known
panelists’ decisions including that in Telstra Corporation Ltd. v Nuclear
Marshmalows, WIPO Case No. D2000-0003.
B. Respondent
Because the Respondent has defaulted, it has put no evidence before the Panel.
However, some insight into the activities of the Respondent can be gleaned by accessing the NOLDC website. Much of this activity is discussed again in a little more detail in section 6 below.
Whilst certain assumptions have had to be made regarding the Respondent, these appear to be reasonable assumptions based on the available evidence. It is to be noted that given the allegations raised against it, had the Respondent wished to make out a case for retention in its own right of the disputed domain name, it would have come forward with some logical explanation for the registration and use of the disputed domain name. It has not done so. It cannot therefore be heard to complain if certain assumptions from web available material are made against it.
It is also relevant to note that in the case of a
respondent default such as here and in connection with a disputed domain name
that appears to have no logical connection whatsoever with the publicly searchable
data available on the Respondent, inferences can more readily be drawn that
are unfavourable to a respondent.
6. Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the Complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The Respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The Respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent’s domain name has been registered and is being used in bad faith.
Each of three elements must be established by a complainant to warrant relief.
A. The First Ground - Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks or service marks in which the Complainant has rights.
The Complainant must establish that it has such rights either to a common law or registered trade mark or service mark and that those rights are being abused by the Respondent.
The Complainant has registered trademarks in ALFREDSUNG in various jurisdictions.
The Complainant’s website is “www.alfredsungbridal.com”. As indicated earlier, the Complainant also appears to own the website “www.alfredsungdresses.com”.
The disputed domain name is <alfredsungdress.com>. The only point of difference of significance between the disputed domain name and the registered trademark is that the former adds the suffix “-dress” to the Complainant’s composite word mark. That is significant as the added matter is a word which descriptively captures part if not the essence of the business of ALFREDSUNG, namely couture and bridal couture in particular. Thus, the added matter does not distinguish or differentiate, rather it confounds.
That being so, the Panel is satisfied that the disputed domain name is confusingly similar to a registered trademark in which the Complainant has rights.
Paragraph 4(a)(i) is accordingly made out.
B. The Second Ground - Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to the trademark in suit, thereby justifying a proprietary right to the mark.
Under paragraph 4(a)(ii) a respondent can justify its registration of the disputed name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate non-commercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no legitimate rights or can claim none.
The NOLDC Inc. website shows it offers a domain name escrow service for individuals who frequently sell domain names. The inference may be drawn that the Respondent trades in domain names or alternatively offers a buying and selling service for others who do trade in them.
The Respondent does not appear to operate any business of trading in goods or services under or by reference to any particular trademarks including the trademarks in suit in the present Complaint.
That would suggest, absent any formal response, that the Respondent has no legitimate interest in this particular domain name.
Moreover, the NOLDC Inc. website also offers or advertises a hidden identity service for customers by enabling access to its alternative website “www.alternativeidentity.com”. That website advertises a service of hidden identity of the true owner/operator of a website or domain name acquisition. It even promotes using this service to avoid the true identity of the registrant being disclosed through the registration details provided on the WHOis database. Presumably, by this means, the disputed domain name in any case (perhaps even the present) is held by the Respondent for the benefit of an anonymous third party.
It is no part of this Panel’s function to comment on such a service as provided either by NOLDC Inc. or its alternative website. However, on the facts of the instant case alone, it can be accepted that by the purpose of utilising NOLDC Inc. for the registration of the disputed domain name whether in favour of the Respondent absolutely or as trustee for some unnamed third party beneficiary, the Respondent has not and likely could not erect any argument of legitimate interest in the disputed domain name.
Paragraph 4(a)(ii), the Policy, is accordingly made out.
C. The Third Ground - Registered and Used in Bad Faith
As to the third ground, this requires that the name be registered and used in bad faith. As has previously been said in other panelists’ decisions together with earlier decisions of this Panelist, both elements must be made out. Thus, both registration and use in bad faith have to be established by the Complainant.
Reference can be made to the facts and matters set out in the previous section B because of the elision that frequently occurs between Grounds Two and Three.
Any person legitimately searching ALFREDSUNG and wanting to find out more about the Complainant’s business, designs, outlets and generally, might, upon finding the disputed domain name, assume there was some connection with the Complainant, contrary to the fact. In accordance with traditional trademark principles and fair trading laws extant in most jurisdictions, that could be objectionable and injurious to the interests of the trademark proprietor, the Complainant.
Nothing has been put before the Panel to justify either the registration or the continued use of the disputed domain name. The Panel notes that the disputed domain name is used to display sponsored links which lead not only to websites offering competing products to the Complainant’s products but also to links such as “Travel”, “Financial Planning”, and “Real Estate”.
In view of the fact that this kind of activity most likely provides financial
gain to the Respondent, the Panel finds that these circumstances indicate bad
faith registration and use in accordance with paragraph 4(b)(iv) of the Policy.
(See Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO
Case No. D2005-0850).
Paragraph 4(a)(iii) is accordingly made out under both limbs.
7. Decision
For the reasons set above the Panel finds:
(1) The domain name in suit registered by the Respondent is identical or confusingly similar to trademarks to which the Complainant Mimran Group Inc. has rights;
(2) The Respondent does not have any rights or legitimate interests in respect of the domain name; and
(3) The Respondent’s domain name was registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4 the Policy and 15 of the Rules, the Panel orders that the registration of the disputed domain name <alfredsungdress.com> be transferred to the Complainant.
John Katz QC
Sole Panelist
Dated: July 12, 2006
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