theparagongifts.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Paragon Gifts Holdings, Inc. v. Click Cons. Ltd

Case No. D2007-0304

1. The Parties

Complainant is The Paragon Gifts Holdings, Inc., Rhode Island, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.

Respondent is Click Cons Ltd, Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <theparagongifts.com> is registered with DomainDoorman, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2007. On March 5, 2007, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On March 5, 2007, DomainDoorman, LLC 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. The Center verified that 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 March 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2007.

The Center appointed Leon Trakman as the sole panelist in this matter on April 5, 2007. 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

Based in Westerly, Rhode Island, Complainant sells a variety of gift and related products through its well-known mail order catalog, The Paragon, and its on-line catalog, “www.paragongifts.com”. Complainant has used its trade mark, THE PARAGON, since 1971, in respect of its retail business which mark was registered in the United States on January 5 1999.

Complainant registered the domain name, <paragongifts.com>, on July 25, 1997, and has operated a website at that Internet address since at least 1999. Complainant registered the name of his online business, Paragongifts.com, in the United States on August 28, 2001.

Complainant’s registered marks, THE PARAGON and PARAGONGIFTS.COM, are both prominently displayed on its website, and have been so since March 2001.

Complainant is known as a provider of quality gift and related products supplied through its retail mail order and on-line catalog services, and that it has an active presence on the Internet. Complainant has built up substantial goodwill in its businesses as a result of thirty years of advertising and promotion and has sold millions of dollars worth of its products to consumers including over the Internet.

Complainant also actively uses its Internet website to advertise, promote and sell its products twenty four hours a day, to communicate special events and promotions to its customers, to provide them with service information and to permit them to request print catalogs and order Complainant’s gift and related products.

Complainant’s website is used in communicating, marketing and securing revenue through sales of its gifts and other products.

According to the Whois database, Respondent registered the disputed domain name, <theparagongifts.com>, with Domain Doorman, LLC on June 2, 2006. That site provides hyperlinks to the websites of third party sellers who for the most part, sell gifts and product similar to Complainant. Respondent’s website also triggers various pop up advertisements.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name, <theparagongifts.com>, “is nothing more than a ‘link farm’ website that provides hyperlinks to several third party websites that sell competing gift, and related products.” Complainant provides evidence of links to third party websites that sell the same types of gift, clothing, toy, jewelry, garden, and home décor products as is sold by Paragon in its print and on-line catalog. Among these competing websites are: “www.improvementscatalog.com”, a catalog that sells gifts, pet items, garden and home décor items; “www.homedecorators.com”, a website that sells furniture and home and garden décor items; and “www.carolwrightgifts.com”, a website that offers a variety of items including gifts, clothing, home furnishings and accessories.

Complainant contends further that Respondent uses the disputed domain name “to attract consumers who are looking for Complainant and its THE PARAGON online catalog to its website.”

Complainant also alleges that Respondent receives a pay-per-click fee or commission every time it re-directs a consumer searching for Complainant to one of these third party competing websites.

Complainant contends that Respondent is a serial cybersquatter that in the past has registered at least four other domain names containing famous or well known trademarks, or miss-spellings of trademarks of others that these were the subject of three prior UDRP proceedings, including: enterprisecarrentails.com, enterprisecarrntal.com, publixapron.com and tollbothersinc.com. In each case, the Panel required that the disputed domain name be transferred to the applicable Complainant. See Publix Asset Management Co. v. Click Cons Ltd., NAF Claim No. 874479 (February 13, 2007); Enterprise Rent-A-Car Co. v. Click Cons Ltd., NAF Claim No. 869453 (January 25, 2007); TB Proprietary Corp. c/o/ Toll Brothers Inc. v. ClickCon Ltd., NAF Claim No. 858828 (January 19, 2007).

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel holds that the disputed domain name, <theparagongifts.com>, is confusingly similar to Complainant’s registered marks, THE PARAGON and PARAGONGIFTS.COM. In particular, the disputed domain name combine Complainant’s two registered trademarks, using “the” from THE PARAGON, and “paragongifts.com” from PARAGONGIFTS.COM.

That such a combination is confusingly similar to the registered marks of Complainant is evident from a line of cases, including prior cases involving Respondent. See e.g. Nintendo of America, Inc. v Pokemon, WIPO Case No. D2000-1230 (November 23, 2000) (finding confusing similarity where respondent combined the Complainant’s Pokeman and Pikachu marks to form the <pokemonpikachu.com> domain name); Publix Asset Management Co. v. Click Cons Ltd., NAF Claim No. 874479 (February 13, 2007) (finding confusing similarity where this respondent combined complainant’s Publix mark in its entirety with a minor variation of complainant’s Apron’s mark to form, <publixapron.com>.)

B. Rights or Legitimate Interests

The Panel holds that the Respondent does not have a right to or legitimate interests in the disputed domain name <theparagongifts.com>. There is no evidence before the Panel that Respondent is not commonly known by the disputed domain name; that Respondent has a legal interest in that name. See e.g. Terecent, Inc. v. Lee Yi, NAF Case No. 139720 (February 10, 2003). Nor has Complainant authorized, licensed or otherwise permitted Respondent to apply for or use any domain name comprising or incorporating Complainant’s registered trade marks, THE PARAGON and PARAGONGIFTS.COM or any variation of those names.

Respondent has also not used the disputed domain name in connection with a bona fide offering of goods or services, or for the purpose of a bona fide non-commercial or fair use of that name. To the contrary, Respondent has used the disputed domain name to divert Internet traffic intended for the Complainant website to Respondent’s website at which Respondent provides links to numerous third party websites that advertise and sell products and services that complete directly with those of Complainant. Respondent has also used the disputed domain name to generate pop up advertisements for unrelated third party websites and products.

There are a number of prior cases in which panels have concluded that respondents that use such websites to sellers of other products ordinarily receive either pay-per click or pay-per impression fees from advertisers when Internet users follow the links on its website or pop up advertisement. These self-same panels have also held that such practices are not consistant with a bona fide offering. See e.g. MB Financial Bank, NA v. LaPorte Holdings, Inc., NAF Claim No. 362110 (December 28, 2004); Black & Decker Corp. v. ClinicalEvaluations, NAF Claim No. 112629 (June 24, 2004).

Prior panels have also held that the use of confusingly similar domain names to divert Internet users to competitors’ websites do not constitute a use of that name for a bona fide offering of goods or services nor for a legitimate non-commercial or fair use of that name. See e.g. America On-Line, Inc. v. Tencent Communications Corp., NAF Case No. 93668 (March 21, 2000) (finding that use of complainant’s mark “as a portal to suck surfers into a site sponsored by respondent hardly seems legitimate”); Newcastle Permanent Building Society Ltd. v. LaPorte Holdings, WIPO Case No. D2005-0511 (July 21, 2005) (holding respondent’s use of the domain name, <newcastlepermanant.com>, to redirect visitors to other sites which are in direct competition with the products and services offered by complainant was neither a bonafide offering of goods and services, nor a legitimate non-commercial or fair use); Cendant Corp. v. LaPorte Holdings, Inc., NAF Case No. 348124 (December 14, 2004) (holding respondent’s use of the domain name, <cendantfriendsandfamily.com>, to redirect consumers to websites that offer competing goods and services is not a bona fide offering of goods and services nor a legitimate non-commercial or fair use); MBFinancial Bank, N.A. v. LaPorte Holdings, Inc., NAF Case No. 362110 (December 28, 2004) (holding Respondent was not engaged in a bona fide offering of goods and services or a legitimate non-commercial or fair use when Respondent used the domain name, <mbfinancial.com>, to redirect consumers to a website that contained links to other websites offering services that compete with complainant from which Respondent received pay-per-click fees from advertisers when such consumers followed the links on its site).

Prior panels have also held that the use of a confusingly similar domain name to trigger pop up advertisements for third party websites and products does not constitute a bonafide offering of goods or services nor a legitimate non-commercial or fair use. See e.g. MBNA America Bank, N.A. v. Vertical Axis, Inc., NAF Claim No. 133632 (January 6, 2003) (finding websites containing pop up advertisements is not a bona fide offering of goods and services or a legitimate noncommercial or fair use); RE/MAX International, Inc. v. Domain Active Pty. Ltd., NAF Claim No. 145277 (April 2, 2003) (generating pop up advertisements is not a legitimate non-commercial or fair use).

Several prior panels have also considered this Respondent’s registration and use of domain names containing the well-known trade marks or miss-spellings of trademarks of others for similar purposes; and have held that such use does not constitute a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use. See Publix Asset Management Co. v. Click Cons Ltd., NAF Claim No. 874479 (February 13, 2007); Enterprise Rent-A-Car Co. v. Click Cons Ltd., NAF Claim No. 869453 (January 25, 2007); TB Proprietary Corp. c/o/ Toll Brothers Inc. v. Click Con Ltd., NAF Claim No. 858828 (January 19, 2007).

C. Registered and Used in Bad Faith

The Panel holds that Respondent has registered and is using the disputed domain name, <theparagongifts.com>, in bad faith for the purpose of intentionally attracting for commercial gain, Internet users to Respondent’s website. Respondent is also acting in bad faith in deliberately intending to create confusion between the disputed domain name and the Complainant’s marks for the purpose of Respondent’s commercial gain. Respondent is in bad faith, too, for intentionally seeking to confuse consumers into believing either that Respondent is Complainant, and/or that Respondent has been sponsored by, is affiliated with or sells products that are endorsed by, Complainant, none of which is the case in fact.

Prior panels have held that such conduct constitutes evidence of the bad faith registration and use of a disputed domain name. See e.g.etWizards, Inc. v.Spectrum Enterprises, WIPO Case No. D2000-1768 (April 4, 2001) (Registration and use of a domain name to re-direct Internet users to websites of competing organizations constituted bad faith registration and use); Tarjeta Naranja SA v. Mr. Dominio.com andAlejandro San Jorge, WIPO Case No. D2001-0295 (April 10, 2001) (registration to link Internet surfers looking in their browsers for the mark of complainant to a competitor’s website is a typical bad faith registration and use under the Policy); Daimler Chrysler Corp., et. al. v. LaPorte Holdings, Inc.,WIPO Case No. D2005-0143 (April 1, 2005)(finding respondent registered and used the domain name, <mbcredit.com>, in bad faith where respondent used such domain name to divert internet users to its website which provided links to websites that offered products in competition with Complainant); Scotsman Publishing, Inc. v. LaPorte Holdings, Inc.,WIPO Case No. D2005-0228 (April 15, 2005) (holding that respondent registered and used the domain mane, <scotsmansguide.com>, in bad faith where respondent linked the domain name to a website that contained links to online stores that offered the same types of goods and services as complainant and such website contained pop-up advertisements); Fashion Seal Corp. v. LaPorte Holdings, Inc.,WIPO Case No. D2005-0435 (June 30, 2005)(holding respondent’s use of a domain name identical or confusingly similar to the trademark of another to capture users and divert them to unconnected websites and to the websites of competitors of the trademark owner represents registration and use of the domain name in bad faith.)

Prior panels have also held that the use of a confusingly similar domain name to trigger pop up advertisements for third party websites and products is evidence of bad faith. See Best Western International, Inc. v. Azra Khan, NAF Claim No. 125265 (October 30, 2002) (finding use of confusingly similar domain name to trigger pop up advertisements constitutes evidence of bad faith); MBNA America Bank, N.A. v.Vertical Axis, Inc., NAF Claim No. 133632 (January 6, 2003) (redirection of domain name to pop up advertisements constitutes bad faith use and registration); Wells Fargo & Company v. Venta and Leonard Bogucki a/k/a NA and The data in Bulkregister.com’sWHOIS is database, NAF Claim No. 147305 (April 16, 2003) (use of confusingly similar domain name to generate pop up advertisements constitutes bad faith); RE/MAX International, Inc. v. Domain Active Pty. Ltd., NAF Claim No. 145277 (April 2, 2003) (redirection of consumers to website with pop up advertisements for third party websites is evidence of bad faith under the Policy).

Prior panels have also held that this Respondent’s registration and use of a series of disputed domain names were in bad faith. See Publix Asset Management Co. v. ClickCons Ltd., NAF Claim No. 874479 (February 13, 2007); Enterprise Rent-A-Car Co. v.Click Cons Ltd., NAF Claim No. 869453 (January 25, 2007); TB Proprietary Corp. c/o/Toll Brothers Inc. v. Click Con Ltd., NAF Claim No. 858828 (January 19, 2007).

The Panel notes that Respondents’ bad faith is evident in a consistent course of bad faith conduct, notably in prior registration and use of other domain names containing the famous or well known trademarks, or misspelling of trademarks of others, such as <enterprisecarrentails.com>, <enterprisecarrntal.com>, <publixapron.com> and <tollbothersinc.com>. Prior panels have held that the use of the disputed domain name in each case constitutes bad faith. See Publix Asset Management Co. v. Click Cons Ltd., NAF Claim No. 874479 (February 13, 2007); Enterprise Rent-A-Car Co. v. Click ConsLtd., NAF Claim No. 869453 (January 25, 2007); TB Proprietary Corp. c/o/ TollBrothers Inc. v. Click Con Ltd., NAF Claim No. 858828 (January 19, 2007). For Panel decisions holding that such pattern of behavior constitute bad faith registration and use, see tooInter-IKEA Sys.B.V. v. Tech Educ. Ctr.,WIPO Case No. D2000-0522 (August 7, 2000); Bell-Phillip Televisual Prods. v. Aford., WIPO Case No. D2000-0180 (May 2, 2000).

Nor can Respondent in this case reasonably allege a lack of actual or constructive knowledge of Complainant’s well-known brand and mark for various reasons. Complainant had registered and used its trade marks, domain name and website some years prior to Respondent’s registration and use of the disputed domain name. Complainant had sold millions of products under its registered trade mark within its region which includes Respondent. It is unreasonable to hold in such circumstances that Respondent somehow lacked notice of Complainant’s registration and use of its distinctive brand, or that Respondent was somehow entitled to register and use a confusingly domain name to that of Complainant.

The Panel therefore finds that Respondent had knowledge of Complainant’s rights and acted in bad faith in disregard of them. See too eBay, Inc. v.SGR Enterprise et al, WIPO Case No. D2001-0259 (April 11, 2001) (actual or constructive knowledge of complainant’s rights in its trademark supports a finding of bad faith); Kate Spade LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (January 3, 2002) (applying the principals of constructive notice in finding bad faith). The Panel also holds that, given the similarity between Complainant’s well-known mark and Respondent’s confusingly similar domain name and the number of years over which Complainant’s mark had become established, it is reasonable to presume that Respondent also had actual knowledge of Complainant’s trade mark and attendant rights. See e.g.Dollar Rent A. Car, Inc. v. Albert Jackson, NAF Claim No. 187421 (September 24, 2003). Registration and use of a disputed domain name that infringes Complainant’s rights, despite actual knowledge of those rights, gives rise to a reasonable presumption of bad faith. The Sports Authority Michigan, Inc. v. DomholdCo. a/k/a D’Vaul, NAF Claim No. 135011 (January 9, 2003); Digi Int’l v. Digi Sys, NAF Claim No. 124506 (October 24, 2002) (holding that there is a legal presumption of bad faith when respondent reasonably should have been aware of complainant’s trademarks, actually or constrictively).

The Panel therefore concludes that Respondent’s registration and use of the disputed domain name, <theparagongifts.com>, constituted bad faith.

7. Decision

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 name, <theparagongifts.com>, be transferred to the Complainant.

Leon Trakman
Sole Panelist

Dated: April 19, 2007