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and Mediation Center
The Paragon Gifts, Inc. v. Theparagoncatalog.Com c/o Whois Identity Shield
Case No. D2006-0820
1. The Parties
The Complainant is The Paragon Gifts, Inc., Westerly, Rhode Island, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.
The Respondent is Theparagoncatalog.Com c/o Whois Identity Shield, Vancouver,
British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name <theparagoncatalog.com> is registered with Nameview
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2006. On June 29, 2006, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On June 29, 2006, Nameview 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 12, 2006. The Center verified that the Complaint together with the amendment to the Complaint 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 July 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2006.
The Center appointed Clive L. Elliott as the sole
panelist in this matter on August 10, 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.
4. Factual Background
For approximately 30 years Complainant, The Paragon
Gifts, Inc. has sold special occasion, collectable and seasonal giftware and
related products. It claims to be the proprietor of the trademark/name THE PARAGON.
Respondent has registered and used a similar domain name <theparagoncatalog.com>.
5. Parties’ Contentions
Complainant asserts that it sells a variety of gift and related products through its mail order catalog THE PARAGON and since March 2001, through THE PARAGON on-line store. Complainant states that it ships in excess 1,000,000 packages per year to its customers. Complainant further states that, since 1971, it has substantially, continuously and exclusively used the trademark/name THE PARAGON in connection with its business,. It has also obtained trademark registration.
Complainant states that it has spent substantial amounts of money on advertising and promotion of its mail order and on line catalog THE PARAGON. Complainant advertises its goods and services and transacts business with its customers through its print and web based mail order catalogs and THE PARAGON on-line store which is located at the Internet addresses “www.theparagon.com” and “paragongifts.com”.
Complainant contends that as early as March 2001, and without the consent of Complainant, Respondent registered the domain name <theparagoncatalog.com>.
Complainant also contends that on or after December 25, 2001, Respondent began using the <theparagoncatalog.com> domain name to point to a website on the Internet. Respondent’s “www.theparagoncatalog.com” website is said to be a portal website that provides hyperlinks to several third party websites which offer or advertise competing gift, clothing, services, home dйcor and related products.
Complainant suggests that Respondent appears to receive a pay per click fee or commission every time it re-directs a consumer searching for Complainant to one of these third party competing websites.
Complainant says the <theparagoncatalog.com> domain name is confusingly similar to Complainant’s THE PARAGON registered trademark and Respondent’s domain name <theparagoncatalog.com> encompasses Complainant’s entire registered mark THE PARAGON.
Complainant further says that Respondent’s domain name <theparagoncatalog.com> encompasses Complainant’s entire THE PARAGON registered mark and the addition of the descriptive term “catalog”.
Complaint contends that on the basis of the foregoing, Respondent’s <theparagoncatalog.com> domain name is confusingly similar to Complainant’s THE PARAGON registered trademark.
Complainant submits that Respondent has registered and is using the <theparagoncatalog.com> domain name in bad faith primarily for the purpose of intentionally attracting, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.
It is argued that due to the fact that Respondent’s domain name contains Complainant’s entire THE PARAGON registered mark and provides links to Complainant’s competitors, it is reasonable to infer that Respondent had actual knowledge of Complainant’s rights in its THE PARAGON registered mark when it registered its <theparagoncatalog.com> domain name.
Finally, it is noted by Complainant that Respondent has used the registrar’s (Name View’s) Whois Identity Shield service to shield its true identity from public view. Complainant reserves the right to supplement its Complaint in this regard.
Respondent did not reply to Complainant’s contentions.
In this situation, as has been said on numerous occasions before, a panelist
is only able to assess the evidence and submissions filed by the complainant.
Likewise, in the absence of any contrary assertion or dispute those assertions
and submissions are presumed to be, prima facie, correct.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the domain name Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Having considered the Complaint, the Panel finds that all requirements of paragraph 4(a) of the Policy are met. The exact identity of the Respondent is unclear but in the Panelist’s view nothing turns on this. The basis for reaching this view is set out below.
A. Identical or Confusingly Similar
The evidence in this case is clear and compelling. The Complainant has sold a range of goods in the special occasion, collectable and seasonal giftware area utilising a range of distribution and promotional methods. The Panel finds that it has done so substantially, continuously and exclusively in relation to the trademark/name THE PARAGON. Through such activities and through the additional registration of its trademark, it has acquired protectable rights pursuant to the Policy.
Relevantly, Complainant asserts that it has spent substantial amounts of money on advertising and promotion of its mail order and on line catalog THE PARAGON.
The disputed domain name clearly adopts the core element of the trademark/name THE PARAGON with the addition of the non-distinctive and indeed descriptive element “catalog”, a term one would naturally use in conjunction with the trademark/name. On this basis, it is found that the disputed domain name is confusingly similar to the trademark/name THE PARAGON.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
As has been noted previously, once a complainant makes a prima facie
case the burden shifts to the respondent to establish rights or legitimate interests
in the disputed domain name; see WIPO Case
No D2000-0624, Do The Hustle, LLC v. Tropic Web, (finding that once
the complainant asserts that the respondent does not have rights or legitimate
interests with respect to the domain, the burden shifts to the respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name). The Panel concludes that, on the basis of the
record and in the absence of any effort to contradict Complainant’s assertions
and submissions, a prima facie case is established under this ground.
Notwithstanding this, the question is whether any possible explanation for the registration and use of the domain name can be found. However, one cannot go much further than the likely explanation put forward by the Complainant, namely that the Respondent has used the domain name in connection with a portal site offering links to the sites of the Complainant’s competitors.
On the basis of the evidence and this un-contradicted assertion, it is reasonable to infer that no right or legitimate interest exists on the part of the Respondent and that the Respondent’s motives are not legitimate.
Thus the Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
It is now well-established as to what constitutes bad faith under the Policy. Given what appears to be the substantial reputation and goodwill in the Complainant’s trademark/name and specifically due to its use of its trademark/name in the “catalog” area, it is reasonable to infer that the domain name was probably chosen for the reasons contended by Complainant. Put another way, it is difficult to see how (on the current record) the Respondent can claim to have registered and been using the disputed domain name in good faith.
The Panel is therefore satisfied that the third element of the Policy has been
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 <theparagoncatalog.com> be transferred to the Complainant.
Clive L. Elliott
Dated: August 24, 2006