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WIPO Arbitration and Mediation Center

Complainant:
Club Monaco Corporation
430 King Street West
Toronto
Ontario
Canada M5V 1L5

Respondent:
Charles Gindi
1811 Ocean Parkway 5A
Brooklyn
New York 11223
United States of America

Domain Names: clubmonacocosmetics.com

Registrar: Register.com, Inc

The Complaint was received by WIPO in hard copy on August 7, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that clubmonacocosmetics.com ("the Domain Name") was registered through Register.com and that Charles Gindi is the current registrant of the Domain Name. The Registrar has further confirmed that the Policy is applicable to the Domain Name.

On August 18, 2000, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending his response to the Complainant and to WIPO was September 7, 2000.

On August 19, 2000, the Respondent sent an email to ICANN asking, inter alia, what his options were in the matter. That email is quoted in full below.

On August 21, 2000, WIPO received from lawyers representing the Complainant a letter setting out the difficulties that they had had in communicating with the Respondent, the Respondent apparently no longer being at the address that the Complainant had for him. The letter goes on to deal with two emails received from the Respondent on August 16, 2000. Those emails are quoted in full below.

On August 21, 2000, WIPO responded to the Respondent’s email of August 19, 2000, sending the Respondent a further copy of the Notification of Complaint and drawing the Respondent’s attention to the fact that an explanation of the proceeding is set out in the Notification.

No Response having been received from the Respondent, on September 25, 2000, WIPO issued to the Respondent a Notification of Respondent Default informing the Respondent of the consequences of his default.

The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panel’s Decision is October 17, 2000.

The Complainant is the proprietor of the trade mark CLUB MONACO, which is registered in the United States under US Trade Mark Registration Number 2,137,573, dated February 17, 1998, for, inter alia, "cosmetics".

On May 25, 2000, the Respondent registered the Domain Name.

According to the Complainant, it wrote to the Respondent a letter of complaint, to which it had no reply. The letter of complaint is not exhibited.

The Complaint was launched on August 3, 2000, and, having had difficulty transmitting the Complaint to the Respondent in hard copy form by courier, the Complainant transmitted a copy of the Complaint to the Respondent by email on August 14, 2000.

On August 16, 2000, the Respondent replied as follows:

"I’m not sure what this is. The format in which you have sent it can not be read by my computer normally, it is all garbled. Please email it to me in wordpad or notepad form. Or just copy and paste it into an email. What I could decipher said something to the effect that Club Monaco wishes to obtain a domain name that I own, clubmonacocosmetics.com from me to use for their own purposes. If you are an attourney for them, you may advise them that if they wish to purchase it from me, I would be willing to listen to a fair monetary offer. Please get back to me as soon as possible. You may reach me at 917-952-9730 after 9:15 pm M-F.

Thank you,
Charles Gindi

P.S. – Please make sure to include a reformatted version of what you forwarded that I can read comprehensively."

Later that day the Complainant re-sent the Complaint, having converted the document to Notepad. The Respondent responded as follows:

"Three things:

1) It says in this notice that I was made aware on July 14, that clubmonacocosmetics.com was pointing to another site pornographic in nature? This is not so. I do not have the domain name pointing anywhere at all, I have recently changed hosts and I still see the domain name pointing nowhere. As well and most important, there is absolutely no record of Club Monaco sending me any such mail. I have never received any such complaint, & if they wish to say in this letter that they have I would like proof of a signature on a return receipt. Certainly I Charles Gindi signed nothing.

2) There is mention of another letter with written form of this document having been sent out on August 3, 2000. I have not received nor signed for a single thing. To receive a mere email for all of this is certainly not sufficient.

3) Yes, I am not doing anything with the domain name currently, however I do wish to keep it. I am not sure if Club Monaco wishes or already has offered to purchase it, I had noticed in this agreement a mention of $1,000 U.S. Dollars. Please enlighten me further.

Many thanks for your help.
Charles Gindi"

A. Complainant

The Complainant claims that Club Monaco Cosmetics is a division of the Complainant. It points to the fact that its trade mark registrations for the name CLUB MONACO include a registration for cosmetics. It claims that the Domain Name is identical or confusingly similar to the federally registered trade mark, details of which are given above.

The Complainant claims that the Respondent has no rights to the name and mark CLUB MONACO. The Complainant asserts that the Respondent owns no trade mark registrations which are comprised in whole or in part of the mark CLUB MONACO and so far as the Complainant is aware, the Respondent does not do business under a name comprised in whole or in part of the mark CLUB MONACO and is not known or associated with any name which includes the CLUB MONACO name or mark.

The Complainant asserts that the Respondent registered the Domain Name in bad faith and is using it in bad faith. First, the Complainant relies upon the fact that the Respondent owns no trade mark registrations which include the mark CLUB MONACO, nor does he do any business under that mark. Secondly, the Complainant complains that when one tries to access the website at www.clubmonacocosmetics.com, one is linked to the twinkshow.com website, which is pornographic in nature. Documents evidencing this connection are annexed to the Complaint.

The evidence comprises print ups of two pages from pornographic websites, one at least of which is from the website at www.twinkshow.com. There is also an NSI Whois search showing that the domain name twinkshow.com is owned by the Respondent. Finally, there is a page headed "about FeCoNtExT=00AA8EA30" which is part of a larger document (unidentified) but which appears to demonstrate a link between www.clubmonacocosmetics.com and www.twinkshow.com.

The Complainant claims that this linkage to a pornographic website was clearly intended to engender confusion among the purchasing public and the trade, by falsely indicating that the pornographic website is associated with, or authorised by the Complainant, when in fact it is not. The Complainant concludes that the Respondent by using the Domain Name in this way is intentionally attempting to attract internet users for financial gain by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or products or services on the website.

Finally, the Complainant states that the mere association of the CLUB MONACO trade mark with a pornographic website itself constitutes bad faith and dilutes by tarnishing the CLUB MONACO trade mark.

By its lawyers’ letter of August 18, 2000, (received by WIPO on August 21, 2000) the Respondent adduces "additional evidence of bad faith". This is derived from the two emails from the Respondent of August 16, 2000, quoted above. The Complainant asserts that in the first email of August 16, 2000, the Respondent states that if Club Monaco wishes to purchase the Domain Name from him, he would be willing to listen to a fair monetary offer. The Complainant then observes that later that day the Respondent sent a second email in which he states "yes I am not doing anything with the domain name currently, however I do wish to keep it. I am not sure if Club Monaco wishes or already has offered to purchase it, I had noticed in the agreement a mention of $1,000 US".

The Complainant asserts that these representations constitute evidence that the Respondent has used the Domain Name in bad faith as defined in the Policy by registering or acquiring the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to Club Monaco for valuable consideration in excess of its out of pocket cost directly related to the Domain Name.

B. Respondent

The Respondent has not filed a formal Response. The only communication which begins to set out the Respondent’s position is his email to ICANN on August 19, 2000, which reads as follows:

"To whom it may concern,

I purchased a domain name "clubmonacocosmetics.com" for personal reasons. A few days ago I received a blank email with a forward (The first forward attached) saying something to the effect that Club Monaco wishes to have that domain name from me, and that they sent postal mail to me. Firstly I never received any such mail, never signed for anything from either an attourney or Club Monaco. In the forward it mentioned something of a specified payment in U.S. funds of $1,000. I had replied to the person who sent me the forward telling them that I was not really interested in selling the domain name, but was willing to listen to an offer. I also asked them in another email what the $1,000 was for and to whom was it being sent to, as I had not received anything by postal mail. The person or company that sent me the forward took my reply without permission or authorization from me, proceeded to cut parts of what I wrote and again emailed ICANN. Please take a look at the emails attached, they are in order of how they were sent, with my replies to their emails. I would like to know what my rights of the domain name holder are. What the "1,000 U.S dollars according to precedented rules" is about, and what my options are in this matter.

Please reply to me as soon as possible to let me know how I might choose to proceed further.

Thank you
Charles Gindi

P.S. - I have arranged the attachments in order of what was received and replied to, one by one."

Taking that, together with his second email of August 16, 2000, his position appears to be that he registered the Domain Name for personal reasons (unidentified), he had no particular interest in selling the Domain Name but was prepared to listen to an offer and that the Domain Name is not pointing to a pornographic site.

According to paragraph 4a of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that

(i) The 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 interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

Had the Complainant produced evidence to show that Club Monaco Cosmetics is a divisional name of the Complainant other than a bare assertion to that effect, the Panel would have held that the Domain Name is identical to the Complainant’s trade mark. However, it is sufficient for present purposes that the Complainant is able to prove that the Domain Name is confusingly similar to a trade mark in which it has rights.

The Complainant has produced evidence to show that it is the proprietor of the trade mark CLUB MONACO for cosmetics. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark to which the Complainant has rights.

Proving that the Respondent has no rights or legitimate interest in respect of the Domain Name involves proving a negative. Proving a negative is notoriously difficult and it is no doubt for this reason (at any rate in part) that by virtue of paragraph 4(c) of the Policy the burden of proof is to a certain extent shifted onto the shoulders of the Respondent. That sub paragraph sets out certain circumstances which, if found by the Panel to be proved, will demonstrate the Respondent’s rights or legitimate interest to the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy.

The circumstances set out in that sub paragraph are:

- Before any notice to the Respondent of the dispute, the Respondent’s use, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

- The Respondent, (as an individual, business or other organisation) has been commonly known by the Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or

- The Respondent is making a legitimate non commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The obligation on the Complainant is to make out a prima facie case and it has done so. The Domain Name is complex and specific and appears to be directed to the Complainant’s business. There is no evidence before the Panel to show that the Respondent has any interest in the world of cosmetics. The Respondent has produced no material to demonstrate any of the circumstances set out in paragraph 4(c) of the Policy. Indeed, the Respondent has made no real effort of any kind to discharge the burden upon him under this paragraph of the Policy.

In these circumstances the Panel finds that the Respondent has no rights to or legitimate interests in the Domain Name.

Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith. The burden of proof here is clearly on the Complainant. The circumstances set out in paragraph 4(b) are:

(i) Circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out of pocket costs directly related to the Domain Name; or

(ii) The Respondent has registered the Domain Name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to his web site or other online location, by creating a likely confusion with the Complainant’s 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.

The Complainant relies, inter alia, upon sub-paragraphs (i) and (iv) of paragraph 4(b).

The Panel is not satisfied that the circumstances under 4(b)(i) are made out. Indeed, the Panel believes that the Complainant has misunderstood the Respondent’s reference to the sum of US$1,000. The Panel is almost certain that the reference to the US$1,000 is a reference to the US$1,000 appearing in paragraph 19 of the Complaint, being the fee payable by the Complainant to WIPO. Evidently, the Respondent was wondering whether that sum was due to him, the text indicating that that sum was accompanying the hard copy of the Complaint.

As to the circumstances set out in sub-paragraph (iv) of paragraph 4(b), the Panel is ready to accept that visitors hoping to reach Club Monaco Cosmetics would have been very confused on arriving at the twinkshow.com destination. Whether the Respondent expected to make any commercial gain out of the linkage, the Panel has no idea. Maybe he did, maybe he did not, but there is no evidence before the Panel.

However, the evidence of the linkage of the Domain Name to the pornographic site, which is also owned by the Respondent is dated July 7, 2000. The evidence appears clear. Accordingly, the Panel has to look closely at the Respondent’s second email of August 16 2000, in which he says:

"It says in this notice that I was made aware on July 14 that clubmonacocosmetics.com was pointing to another site pornographic in nature? This is not so. I do not have the domain name pointing anywhere at all, I have recently changed hosts and I still see the domain name pointing nowhere …".

At first sight, the Panel took this to be a denial that the Domain Name had ever pointed at a pornographic website. On closer analysis, however, it appears that the denial is twofold. The Respondent denies that he received the letter of complaint on July 14, 2000, and he denies that as at August 16, 2000, the Domain Name is pointing anywhere at all. He does not deny that at July 7, 2000, the Domain Name was pointing to his pornographic website.

The Respondent has had ample opportunity to respond fully to the Complaint, but has chosen not to do so.

The Panel finds that prior to the Respondent’s receipt of any communication from the Complainant, the Domain Name was indeed pointing to a pornographic website, namely his own website at www.twinkshow.com. Is the linkage of a domain name to a pornographic website bad faith use of that domain name in circumstances where the domain name is the name of somebody else and to which domain name the Respondent has no rights or legitimate interest?

If the Respondent’s choice of the Domain Name was wholly random and made without knowledge of the Complainant’s name/trade mark, then it would be difficult to make a finding of bad faith.

In this case, however, as already observed, the Domain Name is complex and specific and the Panel finds it impossible to believe that the Respondent did not have the Complainant in mind when registering the Domain Name. None of the Respondent’s communications include a denial of knowledge of the Complainant and beyond saying simply that he registered the Domain Name for personal reasons, the Respondent has not responded further.

Accordingly, the Panel finds that the Respondent registered the Domain Name with knowledge of the Complainant’s name and trade mark, with intent to link it to his pornographic website at www.twinkshow.com and duly linked the Domain Name to that website. The Panel finds that that constitutes registration and use in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.

In light of the above findings, namely that the Domain Name is confusingly similar to a trade mark to which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith, the Panel directs that the Domain Name, clubmonacocosmetics.com, be transferred to the Complainant.

Tony Willoughby
Sole Panelist

Dated: October 17, 2000