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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Federated Western Properties, Inc. v. Amjad Kausar

Case No. D2003-0265

 

1. The Parties

The Complainant is Federated Western Properties, Inc., C/O Wendy Schmidt, of Las Vegas, NV 89103, United States of America, represented by Amster, Rothstein & Ebenstein of New York, New York, United States of America.

The Respondent is Amjad Kausar, C/O Amjad Kausar, of Karachi, 74000, Pakistan.

 

2. The Domain Name and Registrar

The disputed domain name <richsdepartmentstore.com> (the "Domain Name") is registered with Enom, Inc., Redmond, Washington, USA.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 7, 2003. On April 8, 2003, the Center transmitted by email to Enom, Inc. a request for registrar verification in connection with the Domain Name at issue. On April 16, 2003,Enom, Inc. 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 the Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for the 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 April 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2003.

The Center appointed J. Nelson Landry as the sole Panelist in this matter on May 15, 2003. 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 Complainant is the owner of the trade mark RICH’S registered in the United States under no 1,126,482 on October 30, 1979, in International Class 42, and of the trade name RICH’S DEPARTMENT STORES (herein the "trade mark Rich’s", "Trade mark" and the "Trade name"). The Complainant is also the owner of "www.richonline.com" website.

The Complainant states that the trade mark RICH’S and the trade name RICH’S DEPARTMENT STORES have been in use by the Complainant, its licensees and its predecessors-in-interest since 1867, in connection with retail department stores services and related products.

The Complainant further states that it along with its affiliates and licensees, manufactures and sells diverse products and renders diverse services not only in its Rich’s department stores but through its "www.richonline.com" website.

The department stores furthermore widely advertises to the purchasing public throughout the United States and the world by all means and all types of advertising media, including newspapers, magazines, television, trade publications, and the like. The Complainant further states that in 2002 alone, its licensees spent in excess of $35 millions in advertising and that in the same year, sales were in excess of $780 millions.

The Complainant also states that its licensees do significant business in advertising on their "www.richonline.com" website and that their customers over the world thus purchase items on the website as well as learn of present and upcoming in-store promotions.

The Complainant thus states, on the basis of those facts, that its trade mark RICH’S and RICH’S DEPARTMENT STORES trade name have developed a secondary meaning and significance in the minds of the public and are now world famous.

The Domain Name in dispute <richsdepartmentstore.com> was registered on September 30, 2001, with registrar Enom Inc. of Redmond, Washington, USA.

On December 19, 2002, the Complainant sent a letter to the Respondent via both airmail and e-mail advising the Respondent of the Complainant’s rights in RICH’S trade mark and demanding the transfer of the Domain Name. There was no response from the communications by the Respondent. Furthermore, according to the Complainant, the e-mail address that the Respondent Kausar listed is not a valid e-mail address as confirmed by exhibit (Annexe H).

The disputed Domain Name currently links to a web page for "magazines.com" containing information and links to several cooking and food magazines including gourmet magazines. Prior to reading this page a pop up ad announces " you’ve won virtual reality casino", one is encouraged to " Click on OK" which takes the user to "Startluck Casino" at super-casino.com com (see exhibit B).

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the Domain Name <richsdepartmentstore.com> is confusingly similar to the Complainant’s registered trade mark RICH’S and is identical to its well-known RICH’S DEPARTMENT STORE trade name as well as to its "www.richonline.com" internet website.

In support of its legal basis in respect of this element, the Complainant relies on several cases from various Courts within the United States of America. The general contention is that the addition of "department store" to the trade mark RICH’S does not avoid the likelihood of confusion by the addition of such descriptive or otherwise subordinate matter. (see exhibits I, F and G)

The Complainant contends that the Respondent lacks rights and legitimate interest with respect to the Domain Name in dispute. It further represents that it does not do business under a name comprised in whole or in part of the trade mark RICH’S or trade name RICH’S DEPARTMENT STORE and is not commonly known by any name which includes either said Trade mark or Trade name.

Finally, the Complainant alleges that the Domain Name <richsdepartmentstore.com> has been registered and is being used in bad faith.

The Complainant contends upon information and belief that the Respondent registered the Domain Name in dispute with full knowledge of Federated Western’s world-wide renown and thus, therefore, attempted to profit of the Complainant’s Trade mark and Trade name and of the goodwill and services associated with such Trade mark and Trade name.

Furthermore, according to the Complainant, the Respondent registered the Domain Name in dispute long after the Complainant’s Trade mark and Trade name became famous and after using its Trade mark and Trade name and accordingly, there cannot be any other explanation for the Respondent’s registration of the Domain Name in dispute that the Respondent intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Complainant further alleges that numerous customers upon navigating will encounter the Respondent’s website with the intention of finding the Complainant Rich’s department stores. The Complainant contends in acting in such a way to create a likelihood of confusion this amounts to prima facie bad faith.

B. Respondent

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

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following 3 elements in order for a domain name to be cancelled or transferred:

i. 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

ii. The respondent has no rights or legitimate interest with respect to the domain name; and

iii The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

There is no doubt that the domain name <richsdepartmentstore.com> is confusingly similar with the trade mark RICH’S of the Complainant for purposes of the Policy. The Domain Name in dispute incorporates in its entirety the trademark RICH’S.

Although it is not a legal basis under the Policy, as the Complainant stated, the Domain Name in dispute is identical to the Trade name under which the Complainant carries on business and confusingly similar to the website address "richonline.com" of the Complainant. In the opinion of the Panel, the addition of the descriptive words department stores do not deter the reader from the fact that the trade mark RICH’S has been taken and associated with descriptive words which furthermore result in the Domain Name which to the exception of the suffix ".com" corresponds or is identical to the Complainant’s Trade name.

The Panel finds that the Domain Name in dispute is confusingly similar with the registered trade mark RICH’S of the Complainant.

The criteria of paragraph 4(a)(i) has therefore been met.

B. Rights or Legitimate Interests

The Complainant has made a prima facie case that the Respondent lacks rights to or legitimate interest in the Domain Name in dispute by alleging that the Respondent has never been known by the Domain Name in dispute, is not making legitimate non commercial or fair use of the Domain Name in dispute, and is not using the Domain Name in dispute in connection with the bona fide offering of goods and services.

As shown by the Complainant, the use of the Domain Name in dispute by the Respondent is simply to divert internet users to another website that has no correlation or connexity with the commercial activities of the Complainant and furthermore in respect or which there is no evidence that the Respondent is involved in anyway with this documentation related to cooking and food and in particular gourmet publication or "magazine.com" or with the Starluck casino web page to which the internet user will find its way upon accepting the invitation therein.

The Panel concludes that the Respondent has not made any use of the Domain Name in dispute in connection with the bona fide offering of goods and services.

Accordingly, there is no evidence that the Respondent has any rights or legitimate interest in the Domain Name in dispute and the conditions for the second criteria have been fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

i. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

ii. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

iii you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, internet user to your website or other on-line location, by creating a likelihood or confusion with the Complainant’s mark as to the source, sponsorship, affiliating, or endorsement of your website or location or of a product or service on your website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

The Complainant contends that the Domain Name was registered and is used in bad faith.

The Panel has determined from the documentation that the Domain Name was registered in 2001, decades after the registration of the trade mark RICH’S by the Complainant and more than a century after the commencement and continued use of the Trade mark by the Complainant, its licensees and predecessors in title. The Respondent was imitating the Complainant’s Trade mark and Trade name which had become well known including online activities, when registering the Domain Name in dispute.

The Panel, therefore, concludes that the Domain Name was registered in bad faith.

The series of links documented in the evidence indicates that the Respondent not only is diverting those who inadvertently make typographical errors in their URLs to a competitor’s website, but is also attempting to "mouse-trap" which encourages the internet user to enter on on-line casino gambling another website. The Panel has observed and found that the Domain Name has been and is still used as a portal of a website to gambling, despite the letter of complaint from the Complainant.

On May 24, 2003, the Panel attempted to verify this information. Upon going to "www.richsdepartmentstore.com", the Panel reached an introduction page on which there was flashing in large red color the words "UNLIMITED MUSIC DOWNLOAD" and one could read underneath "Click Here for Napster’s Replacement"as one can see on the first page of annex A hereto. The Panel observed that a transfer had been made to "www.ownbox.com/treasure/search.html". Furthermore a window was flashing indicating that the reader had won virtual reality casino. Upon clicking, as encouraged to do, a second page pop up under the heading Starluck Casino Online.

It is not clear what the relationship between the Respondent and these other websites is. However since the Respondent is the registrant and the administrator of the Domain Name in dispute, the consequence of using the Domain Name in dispute as a portal of other websites should attributed to the Respondent.

Therefore, the Panel finds that the Domain Name in dispute was registered and is being used in bad faith.

 

7. Decision

The Panel concludes that:

(a) the Domain Name<richsdepartmentstore.com> is confusingly similar to the Complainant’s Trade mark "RICH’S";

(b) the Respondent has no rights or legitimate interest in the Domain Name;

(c) the Domain Namehas been registered and is being used in bad faith because the Respondent’s primary intent in registration and use of that Domain Name was to benefit commercially from the likelihood of confusion between it and the Complainant’s Trade mark and Trade name.

Therefore in accordance with paragraphs 4(a) et 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <richsdepartmentstore.com> be transferred to the Complainant.

 

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J. Nelson Landry
Sole Panelist

Dated: May 24, 2003