Case No. D2005-1332

1. The Parties

The Complainant is Harry and David, Medford, Oregon, United States of America, represented by Klarquist Sparkman, LLP, Portland, Oregon, United States of America.

The Respondent is Jill Wasserstein, Houston, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <haryanddavid.com> is registered with NameScout Corp.

3. Procedural History

Two days before Christmas, Complainant initiated these proceedings by filing its Complaint with the WIPO Arbitration and Mediation Center (the “Center”). The named Respondent was Steven Newman of Houston, Texas, United States of America. Newman was listed as the registrant of <haryanddavid.com> at the time the Complaint was prepared.

On December 23, 2005, the Center transmitted by email to NameScout Corp. a request for registrar verification in connection with the domain name at issue. On December 28, 2005, NameScout Corp. transmitted by email to the Center its verification response. NameScout Corp. confirmed that it was the registrar for <haryanddavid.com> but stated the registrant was now Jill Wasserstein, not Steven Newman.

On January 6, 2006, the Center notified Complainant that the registrant was Jill Wasserstein and therefore the Complaint was deficient. In response, the Complainant filed an amendment to the Complaint on January 9, 2006. This amendment included Jill Wasserstein as a Respondent.

The Center verified that the Complaint and the Amendment thereto 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 January 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2006.

The Center appointed Steven L. Snyder as the sole panelist in this matter on February 15, 2006. 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.

On February 19, 2006, the Center received an email with header information showing it had been sent by Steven Newman, the former registrant. The email was signed by “Jill,” the name of the current registrant. In that email, “Jill” (or Steven Newman) expressed a desire to file a response and asked the Center for guidance. The Center responded that the deadline for a response had passed but that “[s]hould you wish to file a response at this time, it would be considered a late response and it would be in the sole discretion of the Administrative Panel as to whether or not he will accept and/or consider it.” The Respondent declined to test the Panel’s discretion and did not file a response.

4. Factual Background

According to the Complaint, in 2005, it mailed out more than 90 million catalogs bearing the HARRY AND DAVID trademark. 90 million: That is more than the combined populations of California, Texas, Florida and Illinois; that is more than the entire population of Germany. In addition to its massive direct mail program, the Complainant claims to operate more than one-hundred HARRY AND DAVID outlet and specialty stores throughout the United States of America. It also has an interactive website, <harryanddavid.com>.

Through its direct mail catalogs, its website and its brick-and-mortar stores, the Complainant offers fresh fruits, candies, meat, cheese, plants and other foodstuffs. Its goods come in a variety of packages, including gift baskets that are stuffed with fresh fruits, chocolates and confections.

The use of the HARRY AND DAVID trademark began in 1942, according to the trademark registrations on file with the United States Patent & Trademark Office. As a result of the mark’s long and widespread use, the Complainant claims that “nearly sixty percent of Americans with income over $75,000 are aware of the HARRY AND DAVID brand.” Affluent and hungry Americans are not the only target of the Complainant’s efforts. It has also registered the HARRY AND DAVID mark in Canada and Japan.

In August 2001, one of the Respondent’s predecessors registered <haryanddavid.com> with Namescout.com. When the Complainant discovered the domain name, it was registered in the name of Steven Newman of Houston, Texas. A user clicking on <haryanddavid.com> would be taken to “www.giftbaskets.com.” This website offers gift baskets filled with fresh fruits, chocolates, confections and other goodies.

Around the time the Complainant initiated this proceeding, Mr. Newman transferred <haryanddavid.com> to Jill Wasserstein. The <haryanddavid.com> domain was also rerouted. Visitors clicking on the domain name are now sent to the Complainant’s own website, “www.harryanddavid.com.” The process is instantaneous, so visitors who intend to land at the Complainant’s website either do not realize they misspelled the Complainant’s name or continue to believe that “Harry” has only one “r.”

5. Parties’ Contentions

A. Complainant

To prevail in a proceeding brought pursuant to the Policy, a complainant must show that (1) the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights,” (2) the respondent has “no rights or legitimate interests in respect of the domain name,” and (3) the domain name was “registered and is being used in bad faith.” See Policy, paragraph 4(a)(i)-(iii).

Regarding the first element, the Complainant claims that it has rights in the HARRY AND DAVID trademark stemming from its long usage, its direct mail campaign, the multiple trademark registrations in several countries and the market recognition its marks enjoy. There should be “no question,” the Complainant states, that the disputed domain name, <haryanddavid.com>, is confusingly similar to the HARRY AND DAVID trademark.

As for the second element, the Complainant points to the Whois registration records for <haryanddavid.com>, which show that the Respondent is not commonly known as Hary and David. Indeed, the Complainant contends the Respondent could not be commonly known as Hary and David given the extensive use and considerable fame of the Complainant’s trademark. The Respondent’s use of the domain name to steer users to the Complainant’s competitor is further proof that the Respondent lacks any rights or legitimate interests in <haryanddavid.com>.

With respect to the third element, the Complainant maintains that registration of the confusingly similar domain name had to be in bad faith considering it came many years after the HARRY AND DAVID trademark had enjoyed widespread use and recognition. Bad-faith usage is shown, the Complainant claims, by the former use of the domain name to direct users to one of the Complainant’s competitors, <giftbaskets.com>. The Complainant also claims that the Respondent has engaged in a “pattern of engaging in cybersquatting against other companies.” As proof of this alleged pattern, the Complainant cites another case involving Mr. Newman. See Deutsche Telekom AG v. Steven Newman, WIPO Case No. D2005-0707 (the Respondent registered <tmobilesidekickii.com> and <tmobilesidekick2.com>; a complainant sold the “T-Mobile Sidekick II” phone).

B. Respondent

On February 19, 2006, two weeks after the deadline for filing a response in this proceeding, an email from “Steven Newman” was sent to the Center. The email contained the following text: “Hi, I would like to file a response. How do I do so? Please let me know. Regards, Jill.” However, no further communications were received by the Respondent.

6. Discussion and Findings

The question is whether the Respondent is Jill Wasserstein or Mr. Newman or both. The Complainant states that Mr. Newman was listed as the registrant at the time it prepared its Complaint. According to the Registrar, the registrant of <haryanddavid.com> is now Jill Wasserstein.

There is reason to doubt that a transfer occurred among two unrelated individuals.

A reasonable person would suspect that Jill Wasserstein and Mr. Newman are either the same person or acting in concert. This suspicion is strengthened by very similar behavior in a previous proceeding involving Mr. Newman. In Deutsche Telekom AG v. Steven Newman, WIPO Case No. D2005-0707, Mr. Newman belatedly sent emails to the Center expressing a desire to file a response and asking for instructions. He then failed to file any response. The same modus operandi was exhibited in this case. Accordingly, the Panel will not assume that the current Respondent is an innocent purchaser of the disputed domain name but instead for the purpose of this specific case, will infer that she and Mr. Newman are either the same person or are acting in conceit. See Rules, paragraph 10(d) (permitting the Panel to determine materiality of evidence); paragraph 15(a) (permitting the Panel to determine and apply applicable principles of law).

A. Identical or Confusingly Similar

The first element the Complainant must prove actually has two subparts. The Complainant must show that it has rights in a trademark or service mark. It must then demonstrate that the disputed domain name is identical or confusingly similar to the mark. See Policy paragraph 4(a)(i).

The Complainant’s rights in the HARRY AND DAVID trademark is evidenced by its numerous trademark registrations, its long history of using the mark, the numerous stores offering its goods, its interactive website and its annual deluge of catalogs. See The Cyberbingo Corporation v. 207 Media Inc., WIPO Case No. D2005-0714 (citing registered trademarks as evidence of complainant’s rights); see also Harry and David v Personal, NAF Claim No. 95744 (2000) (recognizing the Complainant’s rights in HARRY AND DAVID trademark).

But for the omission of one letter, the disputed domain name, <haryanddavid.com>, is identical to Complainant’s trademark, HARRY AND DAVID. It is an understatement to declare that the domain name is confusingly similar to the trademark. See Expedia, Inc. v. Seocho, WIPO Case No. D2002-0288 (finding “expecia”is confusingly similar to “expedia”).

B. Rights or Legitimate Interests

Even though a domain name is confusingly similar to a trademark, a respondent may nevertheless use the domain name if the respondent has “rights or legitimate interests in respect of the domain name.” See Policy paragraph 4(a)(ii). The Policy provides three examples of a respondent’s rights or legitimate interests in a domain name. See Policy paragraph 4(c)(i)-(iii). None of those examples appears to apply to this case.

First, the Respondent did not use the domain name in connection with a bona fide offering of goods or services. All she (or he) did was link the confusingly similar domain name to one of the Complainant’s competitors. That does not constitute a “bona fide” offering of goods or services any more than does selling hot goods from the back of a van in a Brooklyn alley. See ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; Lexar Media, Inc. v. Huang, WIPO Case No. D2004-1039.

Second, the Respondent apparently is not “commonly known by the domain name.” According to the Whois record, the Respondent is neither named Hary nor David, much less Hary and David. Instead, the Respondent is allegedly named Jill. While a Whois record is not conclusive proof regarding a person’s common name, nickname, trade name or stage name, it is all we have to go on in this proceeding, due to the Respondent’s failure to file a response. See Diebold, Incorporated v. Paul Terwilliger, WIPO Case No. D2003-0416 (“Both the fame of Complainant’s mark and the name given in the Whois contact information . . . supports the reasonable inference that Respondent is not commonly known as any of the disputed domain names.”).

Third, the Respondent is not making “a legitimate noncommercial or fair use of the domain name.” Instead, the Respondent has used the confusingly similar domain name to divert consumers from the Complainant’s website and to a competitor’s website. That is not legitimate, noncommercial, or a fair use. See Brechbuhler Scales, Inc. v. Dynamic Scales c/o Victoria Herrmann, NAF Claim No. 164564 (2003).

The Complainant has offered evidence strongly suggesting that the Respondent does not have rights or legitimate interests in the domain name. In the absence of a rebuttal by the Respondent, the Panel finds the second element of the Policy established.

C. Registered and Used in Bad Faith

Under the Policy, bad-faith registration and use are shown e.g. when a respondent uses a domain name to “attract, for commercial gain, Internet users to [a] website . . . by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website.” See Policy paragraph 4(b)(iv). That is exactly what the Respondent did: She (or he) registered a domain name which is virtually identical to the Complainant’s trademark and then linked that domain name to a website which sold the very same type of goods as the Complainant. See Amazon.com, Inc. v. Victor Korotkov, WIPO Case No. D2002-0516 (“the diversion by confusion is evidence of bad faith”).

This not the first time the Respondent has misused a famous trademark in such a fashion. See Deutsche Telekom AG v. Steven Newman, WIPO Case No. D2005-0707. While it may be a bit of hyperbole for the Complainant to claim that two cases establishes a “pattern” of cybersquatting, it is enough to conclude that the Respondent is not merely a sloppy typist. In the absence of a contrary explanation and based on the Case File, we conclude that the Respondent registered and used the domain name in bad faith. Cf. ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (holding that typosquatting is evidence of bad-faith registration and use).

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 <haryanddavid.com> be transferred to the Complainant.

Steven L. Snyder
Sole Panelist

Dated: February 28, 2006