Donaldpliner.com

The timeline behind donaldpliner.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Donald J Pliner Concepts, Inc. v. Cayman Trademark Trust c/o Generic Search Terms c/o Domain Administrator Claim Number: FA0602000651490 PARTIES Complainant is Donald J Pliner Concepts, Inc. (“Complainant”), represented by Eric D. Isicoff, of Isicoff, Ragatz & Koenigsberg, 1200 Brickell Ave., Suite 1900, Miami, FL 33131. Respondent is Cayman Trademark Trust c/o Generic Search Terms c/o Domain Administrator (“Respondent”), Domain Administrator, Generic Search Terms, PO Box 533 WB, West Bay, Grand Caym GT, KY. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <donaldpliner.com>, registered with Bulkregister, Llc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Judge Ralph Yachnin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 3, 2006. On March 1, 2006, Bulkregister, LLC confirmed by e-mail to the National Arbitration Forum that the <donaldpliner.com> domain name is registered with Bulkregister, LLC and that Respondent is the current registrant of the name. Bulkregister, LLC has verified that Respondent is bound by the Bulkregister, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On March 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 29, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@donaldpliner.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On April 4, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <donaldpliner.com> domain name is confusingly similar to Complainant’s DONALD J. PLINER mark. 2. Respondent does not have any rights or legitimate interests in the <donaldpliner.com> domain name. 3. Respondent registered and used the <donaldpliner.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Donald J Pliner Concepts, Inc., has continuously and extensively used the DONALD J. PLINER mark in connection with its men’s and women’s apparel, shoes, belts and handbags since 1989. Complainant primarily sells its products in upscale retail outlets, department stores, and online at the <donaldjpliner.com> domain name (registered October 27, 1998). Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the following marks: DONALD J. PLINER (Reg. No. 2,007,793 issued October 15, 1996; Reg. No. 1,991,045 issued August 6, 1996), DONALD J PLINER (Reg. No. 2,534,444 issued January 29, 2002) and DJP (Reg. No. 2,426,567 issued February 6, 2001). Complainant has also registered the DONALD J PLINER mark in Japan, Mexico, China, Korea, Australia, The European Community, Canada and Colombia. Respondent registered the <donaldpliner.com> domain name on June 11, 2001. Respondent is using the disputed domain name to operate a web directory containing links to the websites of Complainant’s direct competitors. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Paragraph 4(a) of the Policy requires that Complainant must 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) 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. Identical and/or Confusingly Similar Complainant has established rights in the DONALD J. PLINER mark through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”). Respondent’s <donaldpliner.com> domain name is confusingly similar to Complainant’s DONALD J. PLINER mark pursuant to Policy ¶ 4(a)(i), because it contains the predominant terms of the mark and merely omits the letter “J.” In Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002), the panel found that the respondent’s <compq.com> domain name was confusingly similar to the complainant’s COMPAQ mark because the domain name differed from the mark by only one letter. The Panel concluded that such a small change did not diminish the confusing similarity between the mark and the domain name. Id. Therefore, Respondent’s omission of one letter from Complainant’s DONALD J. PLINER mark in the <donaldpliner.com> domain name renders the domain name confusingly similar to the mark. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant contends that Respondent lacks rights and legitimate interests in the <donaldpliner.com> domain name. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <donaldpliner.com> domain name. See Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c). Respondent has registered the domain name under the name “Cayman Trademark Trust,” and there is no other evidence in the record that Respondent is commonly known by the <donaldpliner.com> domain name. Consequently, Respondent has not established rights or legitimate interests in the <donaldpliner.com> domain name pursuant to Policy ¶ 4(c)(ii). See Great S. Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that the respondent was not commonly known by the domain name <greatsouthernwood.com> where the respondent linked the domain name to <bestoftheweb.com>); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark). Moreover, Respondent’s <donaldpliner.com> domain name, which includes Complainant’s DONALD J. PLINER mark, resolves to a web directory containing links to Complainant’s direct competitors. In Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the respondent was using a domain name confusingly similar to the complainant’s AMERITRADE mark to divert Internet users to a competing financial services website. The panel concluded that redirecting Internet users to a competing website could not be deemed a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and that such use for Respondent’s own commercial gain could not be a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Because Respondent is using the disputed domain name to redirect Internet users to a website providing links to Complainant’s direct competitors, Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). Therefore, Respondent lacks rights and legitimate interests in the disputed domain name. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent has registered and is using the <donaldpliner.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because it is using the disputed domain name to divert Internet users seeking Complainant’s products to a web directory displaying links to websites offering similar products as Complainant at the <donaldjpliner.com> domain name. In Ticketmaster Corporation v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 11, 2001), the respondent registered the <ticketmaster.net> domain name, which included the complainant’s TICKETMASTER mark, and was using it to redirect Internet users to a competing website at the <ticketpro.com> domain name. The panel found that such use constituted bad faith registration and use, because “[s]uch actions clearly manifest an intent of the [r]espondent to commercially benefit from the ensuing confusion of Internet users” who enter the disputed domain name attempting to reach the complainant’s website but are instead directed to the respondent’s website. Id. In this case, Respondent is also redirecting Internet users seeking Complainant’s products and services to competing websites for its own commercial gain, is taking advantage of the confusing similarity between the disputed domain name and Complainant’s DONALD J. PLINER mark, and profiting off of the goodwill associated with the mark in violation of Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <donaldpliner.com> domain name be TRANSFERRED from Respondent to Complainant. Hon. Ralph Yachnin, Panelist Justice, Supreme Court, NY (Ret.) Dated: April 17, 2006 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.