[Indexed as: Eddie Bauer v. Spider Inc.]
[Indexed as: EDDIEBOWER.com]
eResolution Integrity Online
Administrative Panel Decision
Case No. AF-0246
Commenced: 12 June 2000
Judgment: 1 August 2000
Presiding Panelist: Margaret Chon
Domain name - Domain name dispute resolution policy - U.S. Service Mark - U.S. Trademark - Legitimate interests - Confusingly similar - Bad faith registration - Bad faith use - Homonym - Respondent owns other mis-spelled domain names of trademarks - Terms not generic.
Complainant was owner of United States service mark and United States trademark. Respondent registered the domain name, eddiebower.com. The eddiebower.com domain name re-directs users to Respondent's bigfoot.com website.
Held, Name Transferred to Complainant.
It is clear that the domain name eddiebower.com is confusingly similar to the service mark and trademark registered and used by Complainant, Eddie Bauer, Inc. The mark Eddie Bauer and its homonym eddiebower are not generic terms for which confusing similarity might be tolerated for the sake of free expression.
Circumstantial evidence points to the inference that Respondents rights or interest in eddiebower.com is minimal to non-existent. There is no obvious business connection between eddiebower.com and Respondent's primary website, bigfoot.com, which also sells apparel in the likeness of Complainants stores.
Evidence shows that Respondent also owns other domain names that appear to be misspellings of relatively well-known marks, for example, blomindales.com and jcpeney.com. This leads to the inference that Respondent demonstrated bad faith in the registration and use of the domain name at issue, namely to attract Internet users to its website by creating a likelihood of confusion with the Complainants mark.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Panel decision referred to
Big Dog Holdings, Inc. v. Red River Farms, Inc., ICANN Case No. FA 0093554(Nat. Arb. Forum Feb. 3, 2000).
Chon, Panelist: -
1. The Parties
The complainant is Eddie Bauer, Inc., owner of a federally registered
trademark EDDIE BAUER, and owner of a federally registered service mark
EDDIE BAUER for online retail services in the field of general merchandise.
The respondent is Spider Inc., owner of a domain name eddiebower.com
which resolves to a website that is found under the domain name: bigfoot.com.
2. The Domain Names and Registrars
The domain name at issue is <eddiebower.com>, which domain name
is registered with Network Solutions, Inc.
3. Procedural History
Eddie Bauer, Inc. (hereinafter "Complainant") filed a complaint on-line
through eResolution's website on June 5, 2000. A signed print copy of the
complaint was filed on June 7, 2000. The eResolution Clerk attempted to
forward the complaint by facsimile and electronically to Paul White, listed
as the administrative and technical contact for Spider Inc. (hereinafter
"Respondent") on June 9, 2000. Both facsimile and e-mail attempts to contact
Respondent were unsuccessful. On June 21, the eResolution Clerk received
acknowledgement of receipt of the e-mail message by [email protected].
The UPS tracking information confirmed delivery on June 12, 2000 of the
hard copy of the complaint, annexes and official notification of commencement
of administrative proceedings.
The record does not reflect any response filed by the Respondent. On
July 6, 2000, the undersigned panel member agreed to act as a panelist,
and on July 7, 2000, the parties were notified of the appointment of the
panel.
On July 19, 2000, the panel requested additional information from the
parties regarding evidence of bad faith. The eResolution forwarded this
request to the parties, and received a supplemental letter on July 27,
2000 from Daniel R. Harper, attorney for the Complainant.
4. Factual Background
Complainant is the owner of a federally registered trademark "EDDIE
BAUER" for hunting and camping gear and clothing. This federal registration
issued on November 11, 1969; it indicates a date of first use in commerce
of January 0, 1922. Complainant is also the owner of a federally registered
service mark "EDDIE BAUER" for computerized on-line retail services in
the field of general merchandise. This registration issued on June 8, 1999;
it indicates a date of first use in commerce of April 24, 1996.
Respondent is the owner of a domain name "eddiebower.com," registered
through Network Solutions, Inc. (hereinafter NSI) on May 19, 1998. The
domain name "eddiebower.com" resolves to a website that is also found under
a different domain name: "bigfoot.com." Bigfoot.com appears to be an Internet
e-mail management business; however, the front page of bigfoot.com invites
viewers to visit the bigfoot.com store, in which various items of clothing
are offered for sale. Respondent is also the owner of other domain names
registered through NSI, including several that appear to be misspellings
of relatively well-known marks, for example, "blomingdales.com" and "jcpeney.com."
There is no record evidence of any offer of transfer or sale of the
contested domain name.
5. Parties' Contentions
Complainant alleges in Count 4(c) of its complaint that
(a) "eddiebower.com" is confusingly similar to Complainant's federally
registered marks, as well as to the domain name "eddiebauer.com" that is
owned by Complainant;
(b) Complainant's rights in many of its marks have become incontestable,
and therefore Respondent has no legitimate rights in the contested domain
name; and
(c) Respondent has registered and used the domain name in bad faith,
i.e., "that Respondent intentionally attempted to attract, for commercial
gain, Internet users to [its] website or other on-line locations by creating
a likelihood of confusion with the complainant's mark as to the source,
sponsorship, affiliation, or endorsement of [Complainant's] website or
of a product or service on their website." In support of this third contention,
Complainant points to the multiple registrations of marks by the Respondent
of apparently deliberately misspelled company names. Complainant also claims
that the apparel that is sold on the bigfoot.com site is "similar to that
sold in the Complainant's ("Eddie Bauer") stores."
As stated above, Respondent has filed no papers, and thus has not controverted
any of the Complainant's alleged facts
6. Discussion and Findings
The procedural posture of this case is complicated by the fact that
the Respondent has not filed a response to the complaint. Because there
is no response, I will accept as true all factual allegations in this unopposed
complaint. I thus proceed to the determination whether Complainant has
met its burden of proof of meeting each of the three required elements
of Paragraph 4a of the ICANN Policy.
Identity or Confusing Similarity of Respondent's Domain Name to Complainant's
Registered Mark: The contested domain name is not identical to Complainant's
registered marks, nor is there is no actual evidence of consumer confusion.
Nonetheless, several facts support the inference of confusing similarity.
First, the contested domain name is a homonym of the mark "EDDIE BAUER."
It is possible, indeed likely, that some potential Eddie Bauer customers
may misspell the name as "eddiebower." Moreover, the mark "EDDIE BAUER"
and its homonym "eddiebower" are not generic terms for which confusing
similarity might be tolerated for the sake of free expression. Finally,
Complainant has demonstrated that it has incontestable rights in the mark
"EDDIE BAUER" in certain classes of goods and services. Thus, I find that
while the contested domain name is not identical to the Complainant's registered
marks, there is confusing similarity between it and the Complainant's marks.
No Rights or Legitimate Interests of the Respondent in Respect of the
Domain Name: Here, I must rely on circumstantial evidence, and here again
are three relevant facts: First, when the user types in "eddiebower.com,"
s/he is taken to the "bigfoot.com" website. Second, Respondent's primary
website of "bigfoot.com" can be reached through a more intuitive domain
name for that site, i.e., "bigfoot.com." Finally, although the "bigfoot.com"
business appears to be a legitimate business of e-mail management, there
is no obvious business connection between the terms "bigfoot.com" and "eddiebower.com."
Taken together, these three facts lead to the inference that Respondent's
right or interest in "eddiebower.com" is minimal to non-existent. Respondent
has not filed any papers or otherwise pointed to any evidence to rebut
these inferences, pursuant to ICANN Policy Paragraph 4c. For example, it
has not shown that it has been commonly known by the domain name, even
though it may have not acquired trademark or service mark rights. Thus,
I find that Respondent has no right or legitimate interest in the domain
name "eddiebower.com."
Respondent's Bad Faith Registration and Use: This third element is
the most difficult for Complainant to prove, as it requires a finding of
"intentionally attempting to attract for commercial gain, Internet users
to [Respondent's] website or other on-line locations by creating a likelihood
of confusion with the complainant's mark as to the source, sponsorship,
affiliation, or endorsement of [Complainant's] website or of a product
or service [on its] website." ICANN Policy Paragraph 4(b)(iv) (emphasis
added). Again, I rely here on circumstantial evidence. This evidence includes
the following facts taken from the Complainant's supplemental letter, which
are now incorporated here as findings:
a) Respondent has registered several domain names that are misspellings
of other famous company names;
b) Users who type in "eddiebower.com" are routed to the website "bigfoot.com,"
which features apparel that is similar to that soled in the Complainant's
[]stores; and
c) User may thus believe that "eddiebower.com" is sponsored or affiliated
with the Complainant's Eddie Bauer stores.
In a similar case, a panel found that the respondent's registration
of a domain name confusingly similar to the complainant's registered marks
was intended to reroute traffic from complainant's website to respondent's
website. Big Dog Holdings, Inc. v. Red River Farms, Inc., ICANN Case No.
NAF FA 0093554 (Feb. 3, 2000). In that case, as in the instant proceeding,
the respondent had filed multiple registrations for domain names that resolved
to a website with no obvious relationship to those domain names. And as
in this case, the respondent had failed to file a response. The Big Dog
Holdings panel found bad faith on those facts.
These facts as a whole show that Respondent's registration and use
of the domain name "eddiebower.com" are in bad faith, although Respondent's
intent must be inferred from circumstantial evidence.
7. Conclusions
For the above reasons, I find that Complainant has met its burden of
proof regarding each of the three elements necessary to result in a transfer
of the domain name. I thus conclude that the domain name should be transferred
to the Complainant.
8. Signature
Seattle, WA, USA
August 1, 2000
(s) Margaret Chon,
Presiding Panelist