WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Euromarket Designs, Inc. v. Domain For Sale VMI

Case No. D2000-1195

1. The Parties

The complainant is Euromarket Designs, Inc. d/b/a Crate & Barrel ("Euromarket"), an Illinois corporation having its principal place of business in Northbrook, Illinois, United States.

The respondent is Domain For Sale VMI ("the Respondent"). The record contains no identifying information about the respondent other than its address, 2101 Haskell Ave., Suite 3312, Dallas, Texas 75204, United States.

2. The Domain Name and Registrar

The disputed domain name is "crateandbarrel.org.", registered with Network Solutions, Inc. of Herndon, Virginia, United States.

3. Procedural History

Euromarkets Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") electronically on September 9, 2000, and in hard copy on September 13, 2000.

The Center acknowledged receipt to the Complainant and obtained from NSI a confirmation that it is the Registrar of the disputed domain name; that the current registrant of this domain name is Domain For Sale VMI; that the Registrants administrative and billing contacts are identified only as "Buy This name, Domain for Sale," reachable at the e-mail address "buymyname@hotmail.com"

and the technical and zone contacts as " my domain Support," reachable at "support@myinternet.com." NSI also provided postal, telephone and facsimile information for the contacts and confirmed that the status of the registration is "active."

On September 19, 2000, the Center transmitted Notification of Complaint and the Commencement of Administrative Proceeding to the Respondent at both the postal and e-mail addresses of its contacts, as well as to the Complainant.

On October 10, 2000, having received no response from the Respondent within the time specified in the Notification of Complaint, the Center issued to both parties a Notification of Respondent Default.

On October 13, 2000, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, informing them that the Administrative Panel would be comprised of a single Panelist, Natasha C. Lisman.

4. Factual Background

Euromarket alleges and has provided evidence of the following key facts:

Euromarket is a leading and widely known operator of retail stores and mail-order services selling housewares and furniture and has sold and advertised its products under the trademark CRATE & BARREL throughout the United States and world-wide. It has used this mark in connection with its business for more than 35 years and owns a number of both U.S. federal and foreign trademark and service mark registrations for that mark and the variant CRATE AND BARREL. In addition, Euromarket owns a website whose registered domain name is "www.crateandbarrel.com,"

and uses it to both publicize its business and products and to conduct electronic sale transactions. Euromarket has advertised this website extensively in many media and has entered into a contract with America Online to link to its website.

The Respondent registered the domain name "crateandbarrel.org" on March 17, 2000. Euromarkets investigation revealed that this domain name does not resolve to a website. On July 26, 2000, Euromarkets counsel sent a letter to the Respondent by Federal Express, at the address listed in the Whois database for the Registrant, in which it charged the Respondent with violation of Euromarkets rights and the U.S. law and demanded that the Respondent cease and desist from using the disputed domain name and transfer it to Euromarket. Euromarket received no response to this letter.

5. Parties Contentions

Euromarket contends that the domain name "crateandbarrel.org" is identical or confusingly similar to its registered trademarks and service marks and that the Respondent registered this domain name and is holding it without any right or legitimate interest and in bad faith.

Because the Respondent has failed to submit any response to Euromarkets Complaint, its contentions are unknown.

6. Discussion and Findings

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy (" the Policy") requires a complainant to prove three elements: first, that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; second, that the respondent has no rights or legitimate interests in respect of the domain name; and third, that the disputed domain name has been registered and is being used in bad faith.

The first of these elements presents no difficulty. Euromarket has demonstrated that it has registered and long used the mark "CRATE AND BARRELL," well as the domain name "crateandbarrel.com." The disputed domain name, "crateandbarrel.org" is in no real sense distinguishable from Euromarkets mark and domain name.

As is typical in cases where the respondent defaults on its obligation under Paragraph 5 of ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") to respond to the Complaint and meet its allegations with specificity, both proof and adjudication of the second and third elements of Paragraph 4(a) of the Policy are rendered more difficult because direct evidence of a respondents rights, interests and state of mind in respect of a domain name tends to be in the respondents exclusive or primary possession. In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition, while neither the Policy nor the Rules allow for default judgment, Paragraph 14(b) of the Rules does authorize a panel to draw such inferences from a respondents failure to respond "as it considers appropriate."

Even though in some cases the available evidence and reasonable inferences therefrom may be insufficient to support a finding in the complainants favor on elements two and three of its burden of proof, with the unfortunate result of rewarding a defaulting respondent for its default, this is not such a case. Here, Euromarket has demonstrated that the respondent is neither related to it nor authorized in any way to use Euromarkets marks. It has also shown that the Respondent is a passive holder of the disputed domain name in that the domain name does not resolve to a site. Given that the domain name has been registered since mid-March, 2000, it is fair to infer that the Respondent has not made, nor taken any preparatory steps to make, any legitimate commercial or fair use of the domain name.

This inference is buttressed by the fact that the manner in which the Respondent chose to identify itself and its administrative and billing contacts

both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name. Against the background of these facts and inferences, the Panelist also finds it significant that the Respondent failed to respond to Euromarkets "cease and desist" letter and to its Complaint in this proceeding. Drawing upon the logic behind a well known rule of evidence, the Panelist reads this failure as an adoption by silence of the material allegations made by Euromarket regarding the Respondents lack of any rights or legitimate interests in the disputed domain name and bad faith in its registration and use. 1

For these reasons, the Panelist concludes that the record in this case supports a finding in Euromarkets favor as to elements two and three of the Paragraph 4 test.

7. Decision

Having considered this case in accordance with Paragraph 15 of the Rules, the Panelist finds for the Complainant, Euromarket Designs, Inc., and ORDERS that the domain name "crateandbarrel.org" be transferred from the Respondent to the Complainant.

Natasha C. Lisman
Presiding Panelist

Dated: October 26, 2000

Footnotes:

1. The Panelist wishes to emphasize that she is not ruling that passive holding of a domain name, without more, is sufficient to support a finding of bad faith use. There may well be circumstances in which passive holding is perfectly consistent with good faith but no such circumstances are discernible here.

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