For Your Ease Only, Inc. v Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1302001483711
Complainant is For Your Ease Only, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lorigrenier.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 5, 2013; the Forum received payment on February 5, 2013.
The lapse in time between February 5, 2013 and the present is due to the fact that certain receivership and bankruptcy proceedings were taking place during that time in the United States District Court for Northern District of Texas. In the course of those proceedings, the Court issued a stay of proceedings which affected the ongoing conduct of this proceeding. The Forum understands that as at July 11, 2019 the Receivership proceeding was terminated and also that the bankruptcy proceeding is now closed. Accordingly, the present proceeding has been resumed.
On Jun 18, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lorigrenier.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lorigrenier.com. Also on June 19, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant operates in the consumer household goods industry. Complainant has rights in the LORI GREINER mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,568,060, registered January 27, 2009). See Compl. Ex. 1A. Complainant also has common law rights in the LORI GREINER mark based on longstanding use of the mark in commerce dating back to 1996. See Compl. Exs. 2 through 10. Respondent’s <lorigrenier.com> domain name is identical or confusingly similar to Complainant’s LORI GREINER mark because it wholly incorporates Complainant’s LORI GREINER mark, removes the space and merely transposes several letters while adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <lorigrenier.com> domain name. Respondent is not authorized or licensed to use Complainant’s LORI GREINER mark and there is no evidence to suggest that the Respondent listed in the WHOIS record is commonly known by the disputed domain name. See Compl. Ex. 13. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses Respondent uses the disputed domain name to host pay-per-click links and misdirect internet traffic away from Complainant’s website. See Compl. Exs. 14 and 16. Additionally, Respondent engages in typosquatting.
Respondent registered and uses the <lorigrenier.com> domain name in bad faith. Respondent diverts internet users away from Complainant’s website. Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent creates a likelihood of confusion with Complainant and hosts pay-per-click links. See Compl. Exs. 14 and 16. Additionally, Respondent engages in typosquatting. Respondent had actual knowledge of Complainant’s LORI GREINER mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the consumer household goods industry and, in particular, the provision of goods and services associated with the name of its founder, President and CEO Lori Greiner, including jewelry cabinets, cosmetic organizers, fashion accessories, kitchen tools and electronic products.
2. Complainant has established its trademark rights in the LORI GREINER mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,568,060, registered January 27, 2009).
3. Complainant has also established common law trademark rights to the LORI GREINER mark dating back to 1996.
4. Respondent acquired the disputed domain name on December 4, 2010.
5. Respondent has caused the domain name to resolve to websites promoting the sale of products purporting to be the same products as those supplied by Complainant under the LORI GREINER mark, including jewelry cabinets, cosmetic organizers, fashion accessories, kitchen tools and electronic products, as well as the competitors’ own products.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant has rights in the LORI GREINER mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 3,568,060, registered January 27, 2009). See Compl. Ex. 1A. Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Therefore, the Panel finds Complainant has rights in the LORI GREINER mark per Policy ¶ 4(a)(i).
Complainant also submits that it holds common law rights in the LORI GREINER mark and that it has held them since 1996. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant provides screenshots of Complainant’s own website and articles covering Complainant’s business. See Compl. Exs. 2 through10. It is very apparent from the evidence that Complainant’s business has in every sense operated through the name Lori Greiner, the founder, President and CEO of Complainant, that Lori Greiner is the alter ego of Complainant and that the words “Lori Greiner” have attracted a secondary meaning, namely that the words are equated with Complainant, its business and its products, including those products sold under the name Lori Greiner. The Panel therefore finds that Complainant does hold common law trademark rights in LORI GREINER name for the purposes of Policy ¶ 4(a)(i) and that it has held them since 1996.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s LORI GREINER mark. Complainant argues Respondent’s <lorigrenier.com> domain name is identical or confusingly similar to Complainant’s LORI GREINER mark because it wholly incorporates Complainant’s LORI GREINER mark, removes the space and merely transposes several letters while adding the “.com” generic top-level domain (“gTLD”). A respondent’s use of a misspelling of a complainants mark in a domain name can evince a finding of confusing similarity. See Chegg Inc. v. Company CEO / Qulity Programming, FA 1610061 (Forum Apr. 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) whereas “Respondent’s <chwgg.com> domain name is a simple misspelling of Complainant’s CHEGG.COM mark.”). Here, Respondent’s transposition of the “in” to ni” could be a misspelling of the LORI GREINER mark. Therefore, the Panel agrees with Complainant and finds Respondent’s disputed domain name to be confusingly similar to the Complainant’s LORI GREINER mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s LORI GREINER trademark and to use it in its domain name, merely transposing several letters that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent acquired the disputed domain name on December 4, 2010;
(c) Respondent has caused the domain name to resolve to websites promoting the sale of products purporting to be the same products as those supplied by Complainant under the LORI GREINER mark, including jewelry cabinets, cosmetic organizers, fashion accessories, kitchen tools and electronic products, as well as the competitors’ own products;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interests in the <lorigrenier.com> domain name because Respondent is not authorized or licensed to use Complainant’s LORI GREINER mark and there is no evidence to suggest that the Respondent listed in the WHOIS record is commonly known by the disputed domain name. See Compl. Ex. 13. WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The registrar provides WHOIS information for Respondent indicating that Respondent is known as “Carolina Rodrigues/Fundacion Comercio Electronico” and no information of the record indicates that Respondent was authorized to use the Complainant’s LORI GREINER mark. See Compl. Ex. 13. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the disputed domain name to host pay-per-click links and misdirect internet traffic away from Complainant’s website. A respondent’s use of a disputed domain name which resolves to a webpage hosting pay-per-click links does not constitute a bona fide offering or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Here, the resolving webpage of the disputed domain name hosts pay-per-click links for “Jewelry Cabinets”, “Cosmetic Organizers”, “Travel Products”, and “Fashion Accessories” which compete directly with Complaint’s goods. See Compl. Exs. 14 and 16. Therefore, the Panel finds that Respondent has failed to provide 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);
(g) Complainant alleges Respondent lacks rights and legitimate interests in the disputed domain name because Respondent engages in typosquatting. A respondent’s typosquatting evinces a respondent’s lack of rights and legitimate interests in a disputed domain name pursuant to Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Assocation v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”). Here, Respondent’s disputed domain name is a misspelled version of Complainant’s mark. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent engages in typosquatting.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the <lorigrenier.com> domain name in bad faith because Respondent diverts internet users away from Complainant’s website by hosting links and advertising products competitive with Complainant. A respondent’s use of a disputed domain name to sell competing products evinces bad faith registration and use. See Kipling Apparel Corp. v. Yan Feng Geng, FA 1703296 (Forum Dec. 20, 2016) (finding the respondent registered and used the <kiplingstores.com> domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the domain name to sell the complainant’s products that were either counterfeit or genuine products resold without authorization). Here, Respondent uses the disputed domain name to host pay-per-click links which purport to sell products such as “Jewelry Cabinets”, “Cosmetic Organizers”, “Travel Products”, and “Fashion Accessories” which compete with Complainant’s household goods. See Compl. Exs. 14 and 16. Thus, the Panel may find that Respondent has engaged in disruption under Policy ¶ 4(b)(iii).
Secondly, Respondent registered and uses the <lorigrenier.com> domain name in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent uses the resolving webpage to host pay-per-click links. A respondent using a disputed domain name to host third-party links to complainant’s competitors from which respondent is presumed to obtain some commercial benefit has been found to evince bad faith registration and use. See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). See Compl. Exs. 14 and 16. Thus, the Panel finds that Respondent has engaged in attraction for commercial gain under Policy ¶4 (b)(iv).
Thirdly, Complainant submits that Respondent had actual and/or constructive knowledge of Complainant’s rights in the LORI GREINER mark as the result of Complainant’s extensive use of the mark predating the date on which respondent registered the <lorigrenier.com> domain name and Respondent’s use of a typosquatted version of the mark in the disputed domain name. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a mark in a disputed domain name may demonstrate that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration, thus constituting bad faith. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant provides screenshots of Complainant’s own website and articles covering Complainant’s business. See Compl. Exs. 2 through 10. Thus, as the Panel agrees, the Panel finds that Respondent had actual notice of Complainant’s rights in the LORI GREINER mark under Policy ¶ 4(a)(iii).
Fourthly, Complainant argues Respondent registered and uses the <lorigrenier.com> domain name in bad faith because Respondent engages in typosquatting. A respondent’s typosquatting can evince bad faith registration and use. See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein). Here, Complainant submits that Respondent registered the disputed domain name as a misspelling of Complainant’s LORI GREINER mark. Therefore, as the Panel agrees, the Panel finds Respondent registered and uses the disputed domain name in bad faith because Respondent engages in typosquatting.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the LORI GREINER mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lorigrenier.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 14, 2019
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