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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lanco, Inc., Lane Bryant, Inc. and Charming Shoppes, Inc. v. Party Night, Inc. c/o Peter Carrington

Case No. D2003-0173

 

1. The Parties

The Complainants are Lanco, Inc. (Complainant 1), a company incorporated under the laws of Delaware, of Wilmington, Delaware, United States of America ("USA"); Lane Bryant, Inc. (Complainant 2), a company incorporated under the laws of Delaware, of Reynoldsburg, Ohio, USA; and Charming Shoppes, Inc. (Complainant 3), a company incorporated under the laws of Pennsylvania, of Bensalem, Pennsylvania, USA. Complainants are represented by Mr. Frank J. Colucci, Colucci & Umans of New York, USA.

The Respondent is Party Night, Inc. c/o Peter Carrington of Amsterdam, The Netherlands.

 

2. The Domain Name and the Registrar

The domain name at issue is <laynbryant.com> (the "Domain Name"). The registrar is Key-Systems GmbH d/b/a domaindiscount24.com, Saarpfalz-Park Building 7, 66450 Bexbach, Germany (the "Registrar").

 

3. Procedural History

On March 3, 2003, Complainants filed a complaint (the "Complaint") by e-mail with the WIPO Arbitration and Mediation Center (the "Center"). The Center received a hard copy of the Complaint on March 5, 2003.

On March 5, 2003, the Center requested the Registrar to verify the Domain Name in dispute. The Registrar confirmed on March 7, 2003, that it is the registrar of the Domain Name, that the registrant of the Domain Name is Party Night, Inc. c/o Peter Carrington, Jan Luykenstraat 58, Amsterdam, 1071 CS, the Netherlands, that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is applicable to the Domain Name, that the Domain Name remains locked during these proceedings and that English is the applicable language for the registration agreement.

On March 7, 2003, the Center requested Complainants to provide the Respondent with all annexes to the complaint by post or courier, which was confirmed by Complainants on March 10, 2003.

The Center proceeded to verify whether the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "ICANN Rules") and the World Intellectual Property Organization Arbitration and Mediation Center Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Center Rules"), including the payment of the requisite fees. On March 11, 2003, the Center concluded that the Complaint satisfies all of these formal requirements.

On March 11, 2003, the Center sent a copy of the Complaint to the Respondent and to its technical contact. The Center indicated this date as the formal date for the commencement of the administrative proceeding and March 31, 2003, as the last day for the Respondent to file a Response to the Complaint.

On April 1, 2003, the Center notified the Respondent that it has failed to meet that deadline and was, therefore, in default.

On April 8, 2003, the Center informed the Parties that an administrative panel (the "Panel") had been appointed and transferred the file to the Panel.

The Panel finds it was properly constituted in compliance with the ICANN Rules and the Center Rules and the panelist issued a Statement of Acceptance and Declaration of Impartiality and Independence.

Having reviewed the communication records in the case file, the Panel finds that the Center has discharged its responsibility under paragraph (2)a of the ICANN Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Panel shall issue its decision without the benefit of any Response from the Respondent.

 

4. Factual Background

Complainants are active in the business of women's clothing and operate retail stores throughout the United States of America. These retail stores sell clothing with the brand name "Lane Bryant" and other brand names.

Complainant 1 owns LANE BRYANT trademark registrations for the International Classes 9, 14, 25, 26 and 42 in the United States. Copies of these registrations are attached to the Complaint in Exhibit C.

Complainant 1 further owns registrations of the word mark LANE BRYANT in numerous other countries mostly for Classes related to apparel and clothing. Copies of the corresponding registration certificates are attached to the Complaint in Exhibit D.

Complainant 1 has licensed the right to use the LANE BRYANT trademark to Complainant 2 who operates numerous retail stores under this trademark.

Complainant 3 is the parent company of both Complainant 1 and Complainant 2. Complainant 3 has registered several domain names containing the word mark LANE BRYANT and operates websites related to the business of Complainants under these domain names. Examples of such websites and extracts of the whois-database of the registrar with regard to these domain names are attached to the Complaint in Exhibits E and F.

The Respondent registered the Domain Name on November 30, 2002. The Domain Name automatically links the user to a website located at "www.yes-yes-yes.com". This website further contains hyperlinks to "www.mp3messenger.com" and "www.prescription-drugs.com". Because of Respondent's default, nothing further is known about the Respondent.

 

5. Parties' Contentions

A. Complainants

Complainants contend:

- that their promotion, advertisement and sale of merchandise in connection with the LANE BRYANT marks since 1911 has caused this trademark to become famous, distinctive and well-known both in the United States and abroad.

- that the Domain Name is virtually identical and confusingly similar to the LANE BRYANT trademark, because it is a misspelling of that trademark.

- that the automatic hyperlinking by the Respondent to other websites constitutes a case of "mousetrapping" by diverting customers from Complainants' websites. Internet users are further prevented from easily realizing that they have misspelled the Internet address because of these hyperlinks.

- that the Respondent has no legitimate trademark interest in the Domain Name, which constitutes a deliberate misspelling of Complainants trademark and is a clear attempt to confuse and divert customers of Complainants.

- that the Respondent does not own any registration of the trademark LANE BRYANT or of any variation thereof.

- that the Respondent does not use the Domain Name in connection with a bona fide business use, because the Domain Name is automatically hyperlinked to other websites.

- that Complainants never received an answer to their e-mail to the Respondent requesting to stop using the Domain Name and to transfer it to them. They further assert that the address provided by the Respondent in the whois-database is the address of a hotel where the Respondent has never been a guest or an employee. Complainants claim that both of the above constitutes and demonstrates the bad faith of the Respondent.

- that the Respondent must have known the famous and well-known trademark LANE BRYANT and that it registered the Domain Name in a bad faith intent to violate Complainants' trademark rights.

- that the Respondent has registered several other domain names which are confusingly similar to famous trademarks of other trademark holders. Complainants refer to several other WIPO decisions under the Policy and assert that in all of those cases it has been decided that the Respondent had registered and used those domain names in bad faith and that therefore these domain names have been transferred to the Complainants.

- that the Respondent has engaged in a pattern of deliberate cybersquatting by registering and using numerous domain names such as the Domain Name, incorporating famous and well-known trademarks, in bad faith.

Complainants request that the registration of the Domain Name <laynbryant.com> be transferred to Complainant 3.

B. The Respondent

The Respondent did not file any Response to the Complaint.

 

6. Discussion and Findings

To have the disputed Domain Name transferred to Complainant 3, Complainants must prove each of the following (Policy, paragraph 4(a)):

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

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

(iii) that the Respondent's domain name has been registered and is being used in bad faith.

(i) Identity or Confusing Similarity

Complainant 1 has shown that it owns numerous trademark registrations of the mark LANE BRYANT in the US and other countries. Among the three Complainants, the right to use these trademarks is apparently governed by license agreements.

Although the Domain Name is not identical to the trademark LANE BRYANT, it is such a close alteration of the trademark LANE BRYANT that it constitutes a misspelling thereof. Misspellings of trademarks ("typo-squatting") have been disapproved of in various WIPO decisions (e.g. Telstra Corp. Ltd. V. Warren Bolton Consulting Pty. Ltd., WIPO Case No. D2000-1293; Playboy Enterprises International Inc. v. SAND WebNames-For Sale, WIPO Case No. D2001-0094). Considering that the pronunciation of the trademark LANE BRYANT and the derived Domain Name is the same, so that their sound could be spelled in these two different ways in the English language, this must be considered a case of "typo-squatting".

The Panel thus finds that the Domain Name at issue is confusingly similar to Complainants' trademark.

(ii) Legitimate Rights or Interests

As the Respondent did not file a Response to the Complaint and has no obvious connections with the Domain Name, it is sufficient for Complainants to prima facia show that the Respondent has no rights or legitimate interests in the Domain Name (<sachsen-anhalt.com> Land Sachsen-Anhalt v. Skander Bouhaouala, WIPO Case No. D2002-0273; <volvovehicles.com> Volvo Trademark Holding AB v. Nicklas Uvelov, WIPO Case No. D2002-0521).

Before notice of the dispute, the Respondent did not show preparations to use or the actual use of the Domain Name in connection with a bona fide offering of goods or services. The websites where the Internet user is hyperlinked to when entering the Domain Name have no connection to the name "Lane Bryant". Therefore, this does not constitute a right or legitimate interest of the Respondent in the Domain Name.

There is no evidence that the Respondent has been commonly known by the Domain Name. Moreover, the Domain Name is not a generic or descriptive term. According to a dictionary query, it does not have a meaning of its own. Thus, the use of the Domain Name by the Respondent cannot constitute a fair use of a commonly known and preexisting term in its actual dictionary meaning. Rather, the Respondent seems to use the misspelling of the trademark LANE BRYANT to confuse consumers and to misleadingly divert them from Complainants' websites to other websites.

Therefore, the Panel finds that the Respondent does not have legitimate rights or interests in the disputed Domain Name.

(iii) Registration and Use in Bad Faith

The Domain Name, as already considered above, is pronounced the same way as the trademark LANE BRYANT. It is therefore likely that a potential customer of Complainants who knows the trademark LANE BRYANT but uses the wrong spelling of the name may be diverted to the Respondent’s website. This might indeed discourage customers from further searching for the websites of Complainants and thus disrupt their business. The fact that the Respondent has registered such a confusing misspelling of the trademark LANE BRYANT as a Domain Name supports the conclusion that it must have been aware of the trademarks held by the Complainants.

Furthermore, it must be taken into account that the Respondent seems to have engaged in a pattern of registering and using several domain names that incorporate either a famous or well-known trademark or a misleading alteration of such a trademark. In all of these cases, his behaviour has been considered as "cybersquatting" or "typosquatting" and it has been decided that the registration and use occurred in bad faith (i.e. <nestlesusa.com> Société des Produits Nestlé SA v. Peter Carrington, c/o Party Night Inc., WIPO Case No. D2002-0954; <big5sportingoods.com> Big 5 Corp. v. Peter Carrington and Party Night Inc., WIPO Case No. D2002-0897; <attboadband.com>, <attbradband.com> AT&T Corp. v. Peter Carrington/ Party Night Inc., WIPO Case No. D2002-0931). The registration of the Domain Name therefore constitutes a further case of "typosquatting", where the Respondent intentionally attempts to create a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website and the websites linked thereto.

The Panel, therefore, finds that the Respondent registered and used the Domain Name in bad faith.

 

7. Decision

For all of the foregoing reasons, this Panel decides that the Domain Name <laynbryant.com> registered by Respondent is confusingly similar to the trademark "LANE BRYANT" owned by Complainants, that the Respondent does not have rights or legitimate interests in respect of this Domain Name, and that the Respondent registered and used the Domain Name in bad faith. Accordingly, pursuant to paragraph 4 (i) of the Policy, the Panel requires that the registration of the Domain Name <laynbryant.com> be transferred to the Complainant 3.

 

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Andrea Mondini
Sole Panelist

Dated: April 22, 2003