Stroer & Graff, Inc. v. timothy jeff
Claim Number: FA2007001906322
Complainant is Stroer & Graff, Inc. (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is timothy jeff (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <strorandgraff.com>, registered with NameCheap, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 28, 2020; the Forum received payment on July 28, 2020.
On July 29, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <strorandgraff.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 August 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 2020 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@strorandgraff.com. Also on August 3, 2020, 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 August 25, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <strorandgraff.com> domain name is confusingly similar to Complainant’s STROER & GRAFF, INC. mark.
2. Respondent does not have any rights or legitimate interests in the <strorandgraff.com> domain name.
3. Respondent registered and uses the <strorandgraff.com> domain name in bad faith.
B. Respondent failed to submit a response in this proceeding.
Complainant, Stroer & Graff, Inc., is a pile driving and shoring contractor, and has been using the STROER & GRAFF, INC. mark for over 40 years.
Respondent registered the <strorandgraff.com> domain name was registered on June 29, 2020, and fails to make an active use of the domain name.
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”).
Complainant claims to have common law rights in the STROER & GRAFF, INC. mark. Registration of a mark is not required when Complainant can demonstrate common law rights in the mark. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”). To establish common law rights in a name, a complainant generally must show extensive and continuous use in commerce such that consumers have come to associate the mark with the complainant as the source of the goods or services. See Iacocca v. Tex. Int’l Prop. Assocs., FA 1088017 (Forum Nov. 29, 2007) (“In order to garner the benefit of common law trademark rights, Complainant must lay out, not only evidence of extensive and continuous use of the mark in commerce, but also evince some strong probability that as a result of such exposure, that consumers have come to associate the mark with Complainant, as to the source of the goods.”). Complainant provides proof of 40 years of continuous use of its STROER & GRAFF, INC. mark and also shows use throughout its business operations. The Panel may find this is sufficient evidence of common law rights in the mark under Policy ¶ 4(a)(i).
Respondent’s <strorandgraff.com> domain name features a misspelling of the STROER & GRAFF, INC. mark and merely adds the “.com” gTLD. These changes do not distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Klein Tools, Inc. v chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire BANK OF AMERICA mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)). Therefore, the Panel finds that Respondent’s <strorandgraff.com> domain name is confusingly similar to Complainant’s STROER & GRAFF, INC. mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <strorandgraff.com> domain name, as Respondent is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use the STROER & GRAFF, INC. mark. The WHOIS information for the disputed domain name shows that the registrant’s name is “TIMOTHY JEFF.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant claims that Respondent fails to use the <strorandgraff.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make an active use of the domain name. Failure to make an active use of a disputed domain name evinces a lack of rights and legitimate interests. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant provides screenshots of the website resolving form <strorandgraff.com> that show an inactive index website. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <strorandgraff.com> domain name in bad faith by typosquatting its mark. The Panel agrees and finds that Respondent’s omission of one letter from Complainant’s mark in the disputed domain name is typosquatting, which constitutes bad faith. See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”)
Complainant also claims that Respondent used a privacy shield to hide their identity. The use of a privacy registration service to conceal identity can indicate of bad faith. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). Complainant argues that Respondent affirmatively concealed their true identity, insinuating that Respondent had something to hide. The Panel agrees that such use is a further indication of bad faith, noting no response from Respondent.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <strorandgraff.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 26, 2020
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