Savinarluggage.com

The timeline behind savinarluggage.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 H. Savinar Luggage Co., Inc. v. xc2 c/o Internet Coordinator Claim Number: FA0610000810589 PARTIES Complainant is H. Savinar Luggage Co., Inc. (“Complainant”), represented by Jill M. Pietrini, of Manatt, Phelps & Phillips LLP, 11355 West Olympic Boulevard, Los Angeles, CA 90064. Respondent is xc2 c/o Internet Coordinator (“Respondent”), P.O. Box No. 71826, KCPO, Central 00000 HK. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <savinarluggage.com>, registered with Enom, Inc. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. John J. Upchurch as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 2, 2006. On October 3, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <savinarluggage.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 October 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 31, 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@savinarluggage.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On November 3, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <savinarluggage.com> domain name is confusingly similar to Complainant’s H. SAVINAR LUGGAGE CO. INC mark. 2. Respondent does not have any rights or legitimate interests in the <savinarluggage.com> domain name. 3. Respondent registered and used the <savinarluggage.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, H. Savinar Luggage Co., Inc., is a large distributor and seller of luggage products. Complainant has been offering its products and services since at least 1916. Complainant holds a registration with the United States Patent and Trademark Office (“USPTO”) for the H. SAVINAR LUGGAGE CO. INC mark (Reg. No. 2,343,459 issued April 18, 2000). Complainant also operates a website at the <savinarluggageonline.com> domain name. Respondent registered the <savinarluggage.com> domain name on March 3, 2003. Respondent’s disputed domain name resolves to a website that displays hyperlinks to third-party websites, some of which are in direct competition with Complainant. Additionally, Respondent has been a participant in several other UDRP decisions in which Respondent’s disputed domain names were transferred from Respondent to the respective complainants in those cases. 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 The Panel finds that Complainant has established rights in the H. SAVINAR LUGGAGE CO. INC mark through its registration with 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 KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Respondent’s <savinarluggage.com> domain name is confusingly similar to Complainant’s H. SAVINAR LUGGAGE CO. INC mark as the disputed domain name contains the dominant portion of Complainant’s mark, omitting the “H” at the beginning of the mark and the “Co.” and “Inc” at the end of the mark. Such omissions do not negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name under Policy ¶ 4(a)(i). See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to the complainant’s MINNESOTA STATE LOTTERY registered mark); see also Down E. Enter. Inc. v. Countywide Commc’ns, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to the complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant initially must establish that Respondent lacks rights or legitimate interests in the <savinarluggage.com> domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name. 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.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). Complainant asserts that Respondent is not authorized to use Complainant’s H. SAVINAR LUGGAGE CO. INC mark and that Respondent is not associated with Complainant in any way. Furthermore, Respondent’s WHOIS information does not suggest that Respondent is commonly known by the <savinarluggage.com> domain name. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel found that the respondent did not have rights in the disputed domain name where the respondent was not known by the mark. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"). Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Respondent is using the <savinarluggage.com> domain name to display hyperlinks to third-party websites, some of which are in direct competition with Complainant. The Panel infers that such use is for the commercial benefit of Respondent through the accrual of click-through fees. Such a use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent is using the disputed domain name to divert Internet users to a website that displays hyperlinks to third-party websites, some of which are in direct competition with Complainant. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)). The <savinarluggage.com> domain name resolves to a website that displays hyperlinks to third-party websites, presumably for the commercial benefit of Respondent through the earning of click-through fees. Additionally, the disputed domain name creates a likelihood of confusion as to the source and affiliation of Complainant with the disputed domain name and corresponding website. In Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000), the panel found bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent. See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). Accordingly, the Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). Furthermore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(ii) as Respondent has been involved in several previous UDRP decisions where the disputed domain names were transferred from Respondent to the respective complainants in those cases. See Hilton Hospitality, Inc, and Hilton HHonors Worldwide, LLC v XC2, FA 200662 (Nat. Arb. Forum November 14, 2003); see also ESPN, Inc. v. XC2, D2005-0444 (WIPO June 28, 2005). The Panel finds that such evidence demonstrates Respondent’s pattern of registering infringing domain names, which is evidence of bad faith under Policy ¶ 4(b)(ii). See Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites). The Panel finds that Policy ¶ 4(a)(iii) has been granted. 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 <savinarluggage.com> domain name be TRANSFERRED from Respondent to Complainant. John J. Upchurch, Panelist Dated: November 14, 2006 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

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