The Complainant is The Talbots, Inc., New York, United States of America, represented by Baker Botts, LLP, United States of America.
The Respondent is Peeter Mitauskas, Tallin, Estonia.
2. The Domain Name and Registrar
The disputed domain name <talbots-corp.com> is registered with Moniker Online Services, LLC.
3. Procedural History
On August 11, 2009 the Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”).
On August 12, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name.
On August 12, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2009.
The Respondent did not submit any Response.
On September 8, 2009 the Center notified the Respondent's default.
On September 17, 2009 the Center appointed James Bridgeman as the sole panelist in this matter.
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 domain name in dispute was registered on January 21, 2009.
The Complainant is a specialty retailer and direct marketer of women's apparel, shoes and accessories and is the owner of a large portfolio of registrations and pending applications for the TALBOTS trademarks and other trademarks incorporating the word TALBOTS in numerous jurisdictions throughout the world.
The Complainant has provided evidence of its ownership of the following U.S. federal trademark registrations:
U.S. federal trademark registration number 2790627 registered on December 9, 2003 for TALBOTS & design covering “body lotion, bath gel, bath soap, talcum powder, potpourri, sachets, perfume, eau de toilette, liquid cleaning preparations for lingerie and delicate clothing,” “costume jewelry,” “handbags and wallets, “towels and receiving blankets,” “men's, women's and children's clothing and accessories, namely, dresses, suits, blouses, shirts, knit tops, slacks, ties, jackets, sweaters, trousers, pants, jeans, swimwear, shorts, jumpers, blazers, suits, coats, raincoats, rainslickers, sport coats, vests, shoes, neckwear, socks, underwear, pajamas, robes, belts, hats, caps, gloves, scarves, jackets, skirts, anoraks, polo shirts; infants' and toddlers' clothing, namely, overalls, rompers, baby bibs not of paper, cap and bootie sets, boots and shoes; women's intimate apparel; namely, panties, bras, slips, hosiery, petticoats, bloomers, camisoles, bodysuits, nightgowns, pajamas, robes bed jackets, and lounge wear” and “retail store services and mail order catalog services in the field of men's, women's and children's clothing and accessories; online retail store services featuring men's, women's and children's clothing and accessories; retail department store services and mail order services in the field of men's, women's and children's apparel and accessories”;
U.S. federal trademark registration number 1826424, registered on March 5, 1994 for TALBOTS PETITES & design covering “women's clothing; namely, dresses, suits, blouses, skirts, shorts, slacks, vests, jackets, sweaters and shirts” and “retail store services [and mail order catalog sales services] in the field of women's clothing”;
U.S. federal trademark registration number 1720913, registered on September 29, 1992 for TALBOTS IS THE CLASSICS covering “mail order catalog sales and retail store services in the field of women's clothing, and limited to applicant's own catalogs and its own wholly owned stores”;
U.S. federal trademark registration number 2297384, registered on December 7, 1999 for TALBOTS & design covering “body lotion, bath gel, bath soap, talcum powder, potpourri, sachets, room deodorizers, perfume, eau de toilette, liquid cleaning preparations for lingerie and delicate clothing sold only in its own catalogs and its own wholly owned stores,” “costume jewelry,” “handbags and wallets,” “towels and receiving blankets,” “women's and children's clothing, namely, dresses, suits, blouses, bed jackets, bloomers, petticoats, bras, slips, hosiery, camisoles, body suits, nightgowns, pajamas, robes, and lounge wear, anoraks, coats and scarves, t-shirts, polo shirts, underwear, infants' and toddlers' clothing, namely, overalls, rompers, bibs, cap and bootie sets; boots and shoes, sold only in its own catalogs and its own wholly-owned stores” and “retail store services and mail order catalog services in the field of women's and children's clothing and limited to its own catalogs and its own wholly owned stores”;
U.S. federal trademark registration number 2311088 registered on January 25, 2000 for TALBOTS COLLECTION covering “women's clothing, namely, jackets, sweaters, shirts, pants, blouses, skirts, jeans” and “retail mail order catalog services in the field of women's clothing”;
U.S. federal trademark registration number 3119743, registered on July 25, 2006 for TALBOTS WOMAN PETITES covering “retail store services, online retail store services and catalog sales services in the field of women's clothing”;
U.S. federal trademark registration number 3079412, registered on April 11, 2006 for TALBOTS COLLECTION PETITES covering “women's clothing, namely, jackets, sweaters, shirts, pants, blouses, skirts, jeans”;
U.S. federal trademark registration number 2692954, registered on March 4, 2003 for TALBOTS CLASSIC AWARDS covering “retail store services in the field of men's, women's and children's clothing and accessories featuring a bonus incentive program for customers”;
U.S. federal trademark registration number 2684622, registered on February 4, 2003 for TALBOTS MENS covering “men's clothing and accessories, namely, shirts, knit tops, slacks, ties, jackets, sweaters, trousers, jeans, swimwear, shorts, outerwear, namely, coats and raincoats, suits, sport coats, vests, shoes, neckwear, socks, underwear, pajamas, robes, belts, hats, caps, gloves and scarves” and “retail store services and mail order catalog sales services in the field of men's clothing and accessories; online retail store services featuring men's clothing and accessories”;
U.S. federal trademark registration number 2894484, registered on October 9, 2004 for TALBOTS INTIMATES & design covering “women's intimate apparel, namely, robes and loungewear”; and
U.S. federal trademark registration number 1711809, registered on September 1, 1992 for TALBOTS KIDS & design covering “children's clothing and accessories; namely, sweaters, pants, dresses, jackets, skirts, shorts, jumpers, rainslickers, shirts, vests, socks, blazers, blouses, belts, and ties, sold only in applicant's own stores or its own catalogs” and “catalog sales services and retail store services, both in the field of children's clothing and only for sale in applicant's own stores or through its own catalogs.”
The Complainant is the owner of the domain names <talbots.com>, record created on November 3, 1994 and <thetalbotsinc.com>, record created on April 7, 2006.
5. Parties' Contentions
A. Complainant
The Complainant states that its business was established in 1947. In 1948, the founders launched their direct mail business. The business subsequently expanded and was sold to General Mills in 1973 and in 1988 the business was acquired by JUSCO Co., Ltd. (now AEON Co., Ltd.).
The Complainant became publicly traded in 1993 and its stock is currently traded on the New York Stock Exchange under the symbol TLB.
The Complainant claims that its business expanded significantly during the 1990's and launched a successful e-commerce site at the “www.talbots.com” address in 1999. At the end of the 2008 fiscal year, the company operated stores in 587 retail store locations in 47 states, the District of Columbia, and Canada. The company's retail operation comprises approximately 85% of its overall business, with Internet and catalog sales accounting for the balance.
The Complainant claims to have distributed 25 separate TALBOTS brand catalogs in 2008 reaching a worldwide circulation of nearly 55 million. The Complainant currently employs approximately 12,000 employees. Revenues for 2008 alone were $1.495 billions.
The Complainant states that since at least as early as 1947, the Complainant (and its predecessors-in-interest), has continuously used the mark TALBOTS in association with its clothing stores, catalog and online services. The Complainant claims to have invested substantial time, effort and money promoting the TALBOTS trademark. The Complainant has been featured frequently in numerous magazines and print publications. A printout from the Complainant's website showing examples of its print publications is annexed to the Complaint.
The Complainant submits that, as a result, the TALBOTS mark is now famous and has become entrenched in the minds of the public. The Complainant claims that the TALBOTS mark is instantly recognized around the world as the exclusive source of the Complainant's goods and services.
The Complainant claims ownership of numerous registrations consisting of or incorporating TALBOTS in many countries around the world. There is a detailed list of the Complainant's trademark registrations and pending applications in an annex to the Complaint,
The Complainant claims that it has exercised considerable care and skill in the advertising, marketing and promotion of the many products and services sold or rendered under the TALBOTS mark and over the nature and quality of these products and services. As a result, the TALBOTS mark has acquired an outstanding celebrity symbolizing immense goodwill in the U.S., Canada, and around the world. In the Complainant's submission, the mark TALBOTS has been exclusively associated with its owner and its goods and services, has acquired an extraordinary degree of consumer recognition in the minds of the purchasing public, and is famous.
The Complainant submits that the domain name at issue consists of the Complainant's trademark, TALBOTS together with a hyphen and the generic term “Corp.”
The Complainant argues that whether used alone or together with another element, the Complainant's mark TALBOTS can only signify one thing, namely the Complainant, its business, and its goods and services.
The Complainant argues that it is extremely likely that when Internet users encounter the disputed domain name, they simply assume that Talbots Corp. is the Complainant's full corporate name.
The Complainant further submits that the addition of the generic term “corp” will not alleviate the likelihood of confusion. In this case, the Respondent registered a domain name that is identical to the Complainant's TALBOTS mark with the addition of the generic term “corp.” Yahoo! Inc. v. Hangzhou Hi2000 InfoTech Co. Ltd. a/k/a Hangzhou Shixin Info Tech Co. Ltd, NAF Claim No. 301000141825 (Nat. Arb. Forum, February 26, 2003) (“it is also well-established under the Policy that a domain name composed of a trademark coupled with a generic term still is confusingly similar to the trademark”); Prada S.A. v. Roderick G. Arnold,
WIPO Case No. D2002-0928 (“[t]he addition of the suffix ‘casa' does not affect the attractive power of the word Prada and the name ‘pradacasa' is consequently confusingly similar to the registered trademarks Prada”).
The Complainant submits that Internet users are likely to believe that the domain name at issue is related to, associated with, or authorized by the Complainant. It is precisely because of this association with the Complainant's TALBOTS mark that the Respondent registered the domain name.
The Complainant further submits that the Respondent has no rights or legitimate interest in the domain name. The Complainant argues that the Respondent has made no use of, or demonstrable preparations to use, the disputed domain name (or a name corresponding to the domain name) in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute.
The Complainant submits that the Respondent has never been commonly known by the disputed domain name; is not making a legitimate non-commercial or fair use of the disputed domain name; is not a licensee of the Complainant, and has not received any permission or consent to use the trademark TALBOTS or to apply for the domain name in dispute.
The Complainant submits that where, as here, the Complainant's name and mark is widely recognized and has been used in connection with clothing, shoes, accessories, stores, catalog sales, and online retail store products and services for so many years, there can be no legitimate use by the Respondent. In support of this submission the Complainant cites Nike Inc. v. B.B. de Boer,
WIPO Case No. D2000-1397 where the panel concluded that the respondent had no legitimate rights, noting that it was difficult to see how the Respondent could not have known about the trademark NIKE.
The Complainant submits that the domain name in dispute has been registered and is being used in bad faith.
The Complainant states that the Respondent registered the domain name in dispute on January 21, 2009 under a privacy shield, which allows the actual registrants of domain names to hide their identities. The Complainant has furnished a copy of the Whols printout for the domain name <talbots-corp.com> as an annex to the Complaint.
The Complainant submits that the Respondent is using the domain name in dispute to host a website whose primary purpose is to divert Internet users looking for Complainant's websites. When the domain name in dispute is entered into a web browser, an unused or parked page appears. The Complainant has furnished a copy of the page to which the <talbots-corp.com> domain name resolves in an annex to the Complaint.
The Complainant submits that the Respondent quite clearly registered the domain name in dispute to attract users looking for the Complainant's websites to its own site, which the Complainant submits is evidence of the Respondent's bad faith intention to attract, undoubtedly for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's TALBOTS mark.
The Complainant further submits that it has been widely held by previous panels that “evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration.” Credit Suisse Group on behalf of Winterthur v. Pal-Ex Kft, NAF Claim No. 102971 (Nat. Arb. Forum, February 25, 2002); Victoria's Secret v. Hardin, NAF 96694 (Nat. Arb. Forum March 31, 2001)(holding that actual or constructive knowledge of a famous mark at the time the disputed domain name was registered constitutes bad faith); Samsonite Corp. v. Colony Holding, NAF Claim No. 94313 (Nat. Arb. Forum, April 17, 2000)(finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
The Complainant argues that bad faith can also be found by the fact that although the Respondent acquired the disputed domain name over seven months ago, it has not used it in any way, except as a parked page. ASSA ABLOY AB v. P D S AB,WIPO Case No. D2000-0442 (bad faith found where respondent registered complainant's mark, which enjoyed wide reputation, and did not use the domain name in any way).
As noted above, long before the Respondent registered the domain name in dispute, the Complainant had firmly established its rights in the TALBOTS mark. The Respondent cannot claim or show any rights to the domain name in dispute that are superior to the Complainant's rights in the Complainant's TALBOTS mark, as evidenced by Complainant's prior and well-known use.
The Complainant submits that even without the actual notice described above, the Respondent has had years of constructive notice of the Complainant's registered trademarks under U.S. law. See 15 U.S.C. § 1072.
On May 7, 2009, the Complainant's outside counsel sent a cease and desist letter to the administrative contact for the <talbots-corp.com> domain name, namely, Moniker Privacy Services, as the domain name in dispute was originally registered under a privacy shield, requesting that the Respondent transfer ownership of the domain name in dispute to the Complainant.
On May 7, 2009, the Complainant's outside counsel also sent a letter to the registrar, namely, Moniker Online Services, Inc. requesting that it provide all contact information in its custody of the <talbots-corp.com> domain name, as it was registered using a domain name privacy shield.
On May 14, 2009, the Complainant's outside counsel received an e-mail from the registrar stating that it had forwarded the May 7, 2009 letter to the registrant of the <talbots-corp.com> domain name, and that if the registrant has not resolved the matter within 5 business days, it would remove the privacy shield and reveal the registrant's identity and contact information.
On May 22, 2009, the Complainant's counsel advised the registrar by e-mail that they had not received any contact from the registrant of <talbots-corp.com> and requested that the registrar remove the privacy shield.
On May 26, 2009, the registrar e-mailed the Complainant's outside counsel advising of the identity and current contact information for the <talbots-corp.com> domain name, and advising that Complainant should contact the registrant directly.
On June 8, 2009, the Complainant's outside counsel sent a second letter to the Respondent requesting that it transfer ownership of the <talbots-corp.com> domain name to the Complainant. The Complainant states that as of the date of making of this Complaint, the Complainant has not received a response to either its May 7, 2009 or June 8, 2009 letters.
Copies of the above listed letters and emails have been furnished by the Complainant in an annex to the Complaint.
The Complainant argues that the fact that the actual registrant of the disputed domain name chose to hide his identity by subscribing to a WhoIs Privacy Protection service is in itself evidence that the domain name was registered in bad faith.
The Complainant further argues that the Respondent's failure to respond to the Complainant's letters is further evidence of bad faith. See Southern Exposure v. Southern Exposure, Inc. NAF 5000094864 (Nat. Arb. Forum July 18, 2000) (respondent's failure to respond to complainant's cease and desist letter was further evidence of bad faith); RRI Financial, Inc., v. Ray Chen,
WIPO Case No. Case No. D2001-1242 (bad faith found where respondent did not respond to cease and desist letter).
The Complainant submits that the disputed domain name registered by the Respondent embodies a world famous trademark which has no inherent meaning or significance other than identifying the Complainant and its products and services. The Respondent has ignored a request from the Complainant to transfer the disputed domain name to the rightful owners and has retained the disputed domain name without legitimate or, in fact, any use thereof. The Complainant submits that when viewed as a whole, the circumstances indicate that the Respondent has registered the disputed domain name primarily for the purpose of depriving the Complainant of the benefit and use of the disputed domain name, thereby causing the Complainant to expend corporate resources to track the Respondent down as a cybersquatter. The Complainant submits that the Respondent's actions are directed at the Complainant to deprive it of the use of its rightful disputed domain name. Accordingly, the Respondent's bad faith use and registration of the disputed domain name is clearly established.
The Complainant argues in the alternative, that if the Respondent's conduct is not deemed to fall under any of the specific provision of paragraph 4(b) of the Policy, those provisions are without limitation. The Complainant alleges that the circumstances of this dispute warrant a finding of bad faith. Specifically, the Complainant alleges that the Respondent's registration of the disputed domain name without any legitimate right or interest thereto, followed by complete inaction with respect to the disputed domain name and mere passive holding thereof, constitutes bad faith. See Aeroturbine, Inc. v. Domain Leasing Ltd, NAF Claim No. 93674 (Nat. Arb. Forum, March 23, 2000) (bad faith registration followed by inaction or passive holding constitutes bad faith use of domain name under UDRP).
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its ownership of the trademark TALBOTS through its registrations and use in the mail order business since 1948. On the evidence the Complainant has developed a significant reputation for the TALBOTS trademark both through its retail stores and more recently on the Internet since 1999.
The domain name in dispute, <talbots-corp.com>, consists of three elements, viz. the word “talbots”, the word “corp” separated by a hyphen, followed by the gTLD extension “.com”.
The dominant element of the <talbots-corp.com> domain name is the word “Talbots” which is identical to the Complainants primary trademark. The second element is the word “corp” which is usually taken as an abbreviation for the word corporation. In the view of this Panel the second element does not distinguish the “Talbots” element in the domain name from the Complainant's trademark and in the particular circumstances of this case where Complainant's company name is “The Talbots Inc.” the use of the word “corp” in combination with the word “talbots” and “corp” is more likely to add to the confusion on the part of Internet users rather than to distinguish the domain name at issue and Complainant's TALBOTS trademark.
The Complainant has therefore satisfied the first element of the test in paragraph 4 of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or interest in the domain name <talbots-corp.com>. In this regard the Complainant has convincingly argued that it is improbable that the Respondent has any rights in the domain name given the Complainant's prior rights in the TALBOTS trademark through its registrations and at common law.
The Complainant has argued that the Respondent has never been commonly known by the disputed domain name; is not making a legitimate non-commercial or fair use of the disputed domain name; is not a licensee of the Complainant, and has not received any permission or consent from the Complainant to use the trademark TALBOTS or to apply for the domain name in dispute.
In the circumstances, applying the principles generally accepted by panels, this Panel is of the view that the burden of proof for the second element of the test in paragraph 4 of the Policy shifts to the Respondent.
The Respondent has not filed any Response and it follows that since the Complainant has made out a prima facie case, this Panel finds that the Respondent has no rights or legitimate interest in the <talbots-corp.com> domain name.
The Complainant has therefore satisfied the second element of the test in paragraph 4 of the Policy.
C. Registered and Used in Bad Faith
The domain name in dispute was registered on January 21, 2009. The Respondent has not provided any explanation as to why he chose and registered <talbots-corp.com> as a domain name.
The Complainant claims to have first established a mail order business using the TALBOTS brand over sixty years ago in 1948. The Complainant's < talbots.com> domain name was created on November 3, 1994 and the Complainant has developed a significant reputation for its business established through its website at the “www.talbots.com” address since 1999.
On the evidence, in the view of this Panel, while the Respondent may or may not have had actual knowledge of the Complainant's trademark registrations, it is unlikely that the Respondent was not aware of the Complainant's <talbots.com> domain name, the Complainant's website, the Complainant's reputation in its mail order business and the Complainant's goodwill in the use of the TALBOTS mark when the domain name at issue was registered on January 21, 2009.
The word “Talbot” is not unique. It is a family name. However the Complainant uses the family name with the additional letter “s” as its TALBOTS trademark. The domain name in dispute, <talbots-corp.com>, also includes the additional letter “s”.
While the Respondent has not linked the domain name to any active website in the view of this Panel, the Respondent registered the <talbots-corp.com> domain name because of its confusing similarity to the Complainant's TALBOTS trademark and the Complainant's <talbots.com> domain name. On the balance of probabilities the Respondent intended to take predatory advantage of the Complainant's goodwill in the TALBOTS mark.
In the circumstances this Panel finds that the passive holding of the domain name by the Respondent without explanation is also an indicator of bad faith registration and use of the <talbots-corp.com> domain name by the Respondent.
In the view of this Panel while the domain name is not currently used actively, the Respondent most likely has chosen and registered the <talbots-corp.com> domain name in an intentional attempt to attract, for commercial gain, Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's TALBOTS mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location.
In the absence of any Response from or explanation by the Respondent, this Panel finds that on the balance of probabilities, the Respondent registered and is using the domain name at issue in bad faith.
The Complainant has therefore satisfied the third and final element of the test in paragraph 4 of the Policy and is entitled to succeed in this Complaint.
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 <talbots-corp.com> be transferred to the Complainant.
James Bridgeman Sole Panelist
Dated: September 30, 2009
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