california-closets.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

California Closet Company, Inc. v. Domainhiway.com

Case No. D2006-1357

1. The Parties

The Complainant is California Closet Company, Inc., San Rafael, California, United States of America, represented by Wiley, Rein & Fielding, United States of America.

The Respondent is Domainhiway.com, San Diego, California United States of America.

2. The Domain Name and Registrar

The disputed domain name <california-closets.com> is registered with Stargate.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2006. On October 24, 2006, the Center transmitted by email to Stargate.com a request for registrar verification in connection with the domain name at issue. On October 24, 2006, Stargate.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 1, 2006. 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 November 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2006.

The Center appointed Sandra A. Sellers as the sole panelist in this matter on December 19, 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.

On December 22, 2006, the Panel requested that the Center advise the Panel on a previous case, California Closet Company, Inc. v. Domain Active Pty Ltd, WIPO Case No. D2003-0606, which involved the same domain name. The Panel also indicated that more time would be needed to file its decision, originally due on January 2, 2007. On January 3, 2007, the Center confirmed that California Closet Company, Inc. v. Domain Active Pty Ltd, WIPO Case No. D2003-0606 had been terminated. On January 4, 2007, the Panel fixed the new decision due date on January 18, 2007 and issued Administrative Panel Procedural Order No. 1, to which the Complainant responded on January 11, 2007.

4. Factual Background

General Facts Concerning the Complainant

The Complainant has registered the following trademark and service marks in the United States:

CALIFORNIA CLOSET COMPANY, Reg. No. 1,412, 380, October 7, 1986; CALIFORNIA CLOSETS, Reg. No. 1,613,365, September 11, 1990; and

CALIFORNIA CLOSETS (plus design), Reg. No. 2,138,333, February 24, 1998.

In addition, Complainant also owns the following domain names:

<californiaclosets.com>, registered June 30, 2000; and

<calclosets.com>, registered January 15, 1997.

From the period 1994 through 2005, Complainant submits it spent approximately United States dollars 63.4 million on protection and promotion of its marks.

General Facts Concerning the Respondent

The Respondent registered the disputed domain name on August 30, 2004.

Facts Concerning Registration of the Disputed Domain Name

The disputed domain name, <california-closets.com>, has been registered by several entities over the years, as follows:

06/24/02: registered to Domain Active Pty Ltd.

08/12/03: Complainant filed a Complaint against Domain Active Pty Ltd. (WIPO Case No. D2003-0606). The domain name was voluntarily transferred to Complainant and the case was terminated.

08/16/03: transferred to Complainant.

06/24/04: Complainant’s registration expired.

08/30/04: registered to Respondent.

In its Response to Administrative Panel Procedural Order No. 1, Complainant indicated that Complainant inadvertently allowed the registration to expire during a time of Complainant’s internal reorganization, and took action to address this lapse as soon as Respondent’s registration and use of the domain name was discovered.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s registered service marks and Complainant’s common law rights to the California Closets marks. Complainant further contends that Respondent has no rights or legitimate interest in the disputed domain name, and that Respondent has never been known as “California Closets” or by a similar name.

Complainant also alleges that the disputed domain name was registered and is being used in bad faith. Respondent allegedly has registered the domain name to prevent Complainant from reflecting the value of its registered marks and to disrupt Complainant’s business. Complainant states that Respondent has sought to capitalize on Complainant’s goodwill by directing Internet users to its website or through direct links to the website contained at the disputed domain name redirecting to other websites that are direct competitors of Complainant. Complainant alleges that Respondent’s use of the domain name is for commercial gain and with the intent to misleadingly divert consumers or to tarnish Complainant’s registered or common law marks. Finally, Complainant alleges that Respondent has engaged in a pattern of misconduct noted in two previous domain name decisions, duPont Publishing, Inc. v. Domain Active Pty.Ltd., NAF Claim No. FA 02120013713, dated February 5, 2003; and Medline, Inc. v. Domain Active Pty. Ltd., NAF Claim No. FA 0301000139781, dated February 6, 2003.

In its Response to Administrative Panel Procedural Order No. 1, Complainant reaffirmed its arguments that Respondent has registered and operated the domain name in bad faith, as set forth in its Complaint.

B. Respondent

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

6. Discussion and Findings

Pursuant to, paragraphs 4(a)(i)-(iii) of the Policy, for Complainant to prevail and have the disputed domain name transferred to it, Complainant must show that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the registered marks containing CALIFORNIA CLOSETS. Even though more relevant under the second and third element, the Panel notes that Complainant’s use of these marks and its related domain names precedes Respondent’s registration of the disputed domain name.

The Panel finds that the disputed domain name is confusingly similar to Complainant’s marks, and that Complainant meets the first criterion of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Respondent has not been granted any rights by Complainant to use any of Complainant’s marks. On the evidence before the Panel, Respondent does not appear to make any legitimate non-commercial or fair use of the domain name. The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name. Respondent has not rebutted this.

Based on the foregoing and considering Respondent’s use of the domain name explained further below under 6.C., the Panel find that Respondent does not have any rights or legitimate interests in respect of the domain name and that Complainant meets the second criterion of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Respondent is located in the United States of America, where Complainant has registered its marks. Accordingly, this Panel finds that Respondent had constructive notice of Complainant’s marks.

Further, in all likelihood, Respondent had also actual notice of Complainant’s marks prior to registering the disputed domain name. Respondent is located in the United States of America, where the Complainant’s marks are registered and where Complainant sells it goods and services. Complainant has spent over USD60 million on promoting its goods and services. From the evidence submitted by the Complainant, it appears from Respondent’s website that Respondent is familiar with the closet business (seeAnnex F to the Complainant, which reflects a link from the disputed domain name to <funcloset.com>, and a link from “www.closethelp.com” to the disputed domain name. Accordingly, this Panel infers that Respondent was aware of Complainant’s marks when Respondent registered the disputed domain name. See, e.g., Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, in which the panel found it “inevitable that Respondent registered the domain names in full knowledge of Complainant’s rights and interests.”

The Panel has also considered whether the Complainant’s failure to renew and the resulting expiration of Complainant’s registration should have any bearing on the issue of whether Respondent registered the domain name in bad faith. However, Respondent has failed to file a Response to the Complaint and has thus not rebutted Complainant’s allegations. Complainant has explained its inadvertent expiration of the registration, and by filing this Complaint has demonstrated its lack of intent to abandon the domain name, to the satisfaction of the Panel.

Paragraph 4(b)(iv) of the Policy states that there is bad faith if respondent has attempted to attract, for commercial gain, Internet users to [his/her] website or other on-line location, by creating a likelihood of confusion, with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [his/her] website or of a product or service on [his/her] website or location.

Respondent has used a domain name virtually identical to Complainant’s marks, to direct visitors to other closet-related websites, who are Complainant’s competitors. This Panel finds that Respondent has used the disputed domain name for commercial gain and with the intent to misleadingly divert consumers to Complainant’s competitors’ websites.

For the reasons given above, the Panel finds that Complainant has established that Respondent has registered and used the domain name in bad faith under paragraph 4(b) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the domain name <california-closets.com> be transferred to the Complainant.

Sandra A. Sellers
Sole Panelist

Dated: January 17, 2007