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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pier 1 Imports, Inc. and Pier 1 Licensing, Inc. v. Success Work

Case No. D2001-0419

 

1. The Parties

The Complainants are: Pier 1 Imports, Inc. and Pier 1 Licensing, Inc., two companies incorporated in the State of Delaware, U.S.A. with principal offices at 301 Commerce Street, Suite 600, Fort Worth, Texas 76102, U.S.A.

The Complainants are represented by Anita Nesser, Esq., Baker Botts LLP, 2001 Ross Avenue, Dallas, Texas 75201, U.S.A.

The Respondent is Success Work, an entity whose address is Box 425, Miami, Florida 33283, U.S.A.

 

2. The Domain Name and Registrar

The domain name in dispute is <peir1.com>.

The registrar for the disputed domain name is Network Solutions, Inc. (NSI), whose address is 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.

 

3. Procedural History

This dispute is to be decided under the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).

The Complaint was filed on March 23, 2001. On March 28, 2001, the Center requested that the Registrar NSI check and report back on the identity of the registrant for the domain name <peir1.com>. On March 30, 2001, NSI reported to the Center that the registrant was the Respondent in this proceeding, "SuccessWork-This Domain Is For Sale".

On April 2, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this Proceeding officially began. Respondent's Response was received by the Center on April 14, 2001.

The Administrative Panel submitted a Declaration of Impartiality and Independence on May 1, 2001, and the Center proceeded to appoint the Panel on May 2, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.

This Decision is due by May 16, 2001.

 

4. Factual Background

One of the Complainants, Pier 1 Imports, Inc. is an importer and retailer of home furnishings, gifts and related goods. It has hundreds of stores throughout the United States of America and in a number of foreign countries. This Complainant also is quoted on the NASDAQ. The other Complainant, Pier 1 Licensing, Inc., owns all the registered Pier 1 marks and is a subsidiary of Pier 1 Imports, Inc.

The Respondent describes itself as in the web-hosting business. The Respondent registered the disputed domain name, <peir1.com>, on January 31, 2000. The Respondent claims to have transferred the disputed domain name to another company, Peir 1 Networking & Associates, in February, 2000, but the registrar's records do not show this.

The record does not show that the parties ever communicated with each other prior to this proceeding. Instead, the Complainants have moved directly to this proceeding and are seeking transfer of the disputed domain name, <peir1.com>.

 

5. The Parties' Contentions

Complainants' Contentions:

- The disputed domain name is virtually identical to the trademark registered and used by Complainants except for a misspelling.

- Respondent is not making a legitimate, noncommercial or fair use of the domain name.

- Respondent is not a licensee of Complainants, and has not received permission or consent to use the trademark Pier 1 or to apply for the disputed domain name.

- The domain name has been registered and is being used in bad faith because the Respondent registered the domain name for the purpose of selling it to the Complainants or a competitor of the Complainants for far more than the Respondent paid for it.

- The Respondent registered the domain name to prevent the Complainants from doing so and has engaged in a pattern of such conduct in violation of the Policy at para 4(b)(ii).

- The Respondent registered the domain name in order to disrupt the Complainants' business.

- The Respondent is in bad faith because it registered the domain name intending to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainants' mark in violation of the Policy at 4(b)(iv).

- The disputed domain name should be transferred to the Complainants.

Respondent's Contentions:

- Respondent registered the domain name for its web hosting business.

- Respondent traded the domain name to Peir 1 Networking & Associates in February 2000 in exchange for networking services. Peir 1 Networking & Associates has been engaged in selling hubs, routers, bridges and switches since late 1999.

- Peir 1 Networking & Associates has acquired common law trademark rights through use.

- Respondent registered and is using the domain name in good faith.

 

6. Discussion and Findings

In order for Complainant to prevail and have the disputed domain name <peir1.com> transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii):

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith

Identical or Confusingly Similar

The Complainants have provided numerous examples of registrations of their Pier1 mark as used in their imported home furnishings business. The mark is used for the stores offering the sales as well as on the goods themselves, ie, it is used as both a service mark and a trademark. Exemplary copies from the principal register of the United States of America Patent and Trademark Office include: no. 948,076 registered on November 28, 1972 and renewed in 1992 in int. class 42 for retail gift store services; and no. 1,620, 518 dated October 30, 1990 also in int. class 42 for store services in home furnishings (Complaint Annex 3).

The Respondent registered the disputed domain name <peir1.com>. Orthographically, the Respondent has varied the Complainants' mark by reversing the middle vowels. Phonetically, the domain name is virtually identical in pronunciation to the Complainant's mark. Both the mark and the domain name have the number "1" at the end. The Panel finds the disputed domain name, <peir1.com> immediately recalls the Complainants' mark Pier1, and that it is confusingly similar to the mark. Accordingly, the Complainants have satisfied 4(a)(i) of the Policy:

Legitimate Rights or Interests

The Complainants contend they have not licensed the Respondent to use their mark and that the Respondent is not making a bona fide or fair use of the disputed domain name.

Respondent claims it registered the domain name for use "in our web hosting business" but offers no evidence of what this business was or is. Respondent claims to have transferred the disputed domain name to Peir 1 Networking Associates in February, 2000 but this is not reflected in the registration of the domain name. This latter company's name does currently appear at the disputed domain name web page as a seller of Internet-related equipment but the relationship between the Respondent and Peir 1 Networking Associates, if one exists, has not been clarified for the Panel. The domain name remains registered to Respondent under the name: "SuccessWork-This Domain Is For Sale".

The Panel does not see any legitimate rights or interests in the domain name on the part of the Respondent.

Registered and Used in Bad Faith

The Complainants have advanced a number of grounds on which they allege the Respondent registered and is using the domain name in bad faith under the Policy.

The Complainants contend the Respondent registered the domain name in order to disrupt the Complainants' business (the Policy 4b(iii)), but the Complainants have offered no proof in this regard.

The Complainants also contend the Respondent has registered the domain name in order to deprive the Complainants of the name and that the Respondent has engaged in a pattern of such conduct (the Policy 4b(ii)). It seems unlikely to the Panel that the Complainants would themselves have registered a deliberate misspelling of their mark, which is what the disputed domain name, <peir1.com> amounts to. And in any case, the Complainants did not show the Respondent engaged in a pattern of such registrations as required by the Policy. Instead, the Complainants merely listed a number of domain name registrations without offering any proof they were registered by the Respondent (Complaint p. 6).

The Panel does however find the Complainants have proved the Respondent registered and was using the disputed domain name in bad faith on two grounds. First, the very choice of Respondent’s registrant name, ie, "SuccessWork-This Domain Name Is For Sale" is eloquent of the Respondent's intentions in violation of the Policy at 4(b)(i): to sell the domain name to the Complainants or a competitor for far more than the Respondent paid for it (see Chanel, Inc. v. Mike Torres d/b/a National Promotions, Inc., ICANN/WIPO Case No. D2000-1833, February 22, 2001, involving respondent/registrant "This Domain Name Is for Sale").

Second, the Panel finds the Complainants have shown the Respondent registered and was using the domain name in bad faith in violation of the Policy at 4(b)(iv): the Respondent is using the domain name to attract traffic for commercial gain by creating a confusing similarity with the Complainants' mark. The Respondent currently is offering a variety of Internet-related equipment and services at the disputed domain name website, and is counting on the notoriety of the Complainants' mark in the deliberately misspelled domain name to drive Internet clients to Respondent's website.

The Panel concludes the Respondent registered and is using the disputed domain name in bad faith.

 

7. Decision

The Respondent registered a domain name deliberately misspelled so as to be confusingly similar to the Complainants' mark. In addition, the Respondent had no legitimate rights or interests in the domain name and registered and was using it in bad faith. Therefore, based on ICANN Policy para 4(i) and Rule 15, the Panel orders that the disputed domain name, <peir1.com> be transferred from the Respondent, SuccessWork, to the Complainants, Pier 1 Imports, Inc. and Pier 1 Licensing, Inc.

 


 

Dennis A. Foster
Sole Panelist

Date: May 16, 2001

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2001/d2001-0419.html

 

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