Floor Covering Associates, Inc. v. James H Park / JIN-1
Claim Number: FA2101001926995
Complainant is Floor Covering Associates, Inc. (“Complainant”), represented by Gyeong Ok Kim of Koreana Patent Firm, South Korea. Respondent is James H Park / JIN-1 (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <efloor.net> (the “disputed domain name”), registered with DropCatch.com 776 LLC.
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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 4, 2021; the Forum received payment on January 4, 2021.
On January 4, 2021, DropCatch.com 776 LLC confirmed by e-mail to the Forum that the <efloor.net> disputed domain name is registered with DropCatch.com 776 LLC and that Respondent is the current registrant of the name. DropCatch.com 776 LLC has verified that Respondent is bound by the DropCatch.com 776 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 January 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 2021 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@efloor.net. Also, on January 8, 2021, 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 February 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a flooring retailer that began selling flooring supplies in the United States using the trademark efloors.com in 1999. Complainant has rights in the efloors.com trademark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,965,863, registered on July 12, 2005) (hereinafter referred to as the “EFLOORS.COM Mark”).
Complainant contends that the disputed domain name <efloor.net> is identical or confusingly similar to Complainant’s EFLOORS.COM Mark as it contains the dominant “EFLOORS” portion of Complainant’s mark, merely omitting the letter “s”, and adds the top-level domain “.net.” Complainant further claims that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant owns the EFLOORS.COM Mark in the United States, that the disputed domain name is confusingly similar to Complainant’s EFLOORS.COM Mark, that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 Panel finds that the disputed domain name is confusingly similar to Complainant’s Mark per Policy ¶ 4(a)(i) as set forth below.
The Panel concludes that Complainant has rights in the EFLOORS.COM Mark through its registration of the Mark with the USPTO. (e.g., Reg. No. 2,965,863, registered on July 12, 2005). Registration of a trademark with the USPTO is sufficient to demonstrate rights in the mark per 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 demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel further finds that the disputed domain name <efloor.net> is identical or confusingly similar to Complainant’s EFLOORS.COM mark as it contains the dominant EFLOORS portion of Complainant’s mark as it merely omits the letter “s” and adds the generic Top-Level Domain (“gTLD”) “.net.” Adding a gTLD to a misspelled mark fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Wells Fargo & Company v. Xiangsheng Zhou, FA 1576852 (Forum Oct. 17, 2014) (finding that the removal of the letter “s” in the <wellfargo.net> domain name failed to differentiate it from complainant’s WELLS FARGO trademark, thus resulting in a finding of confusing similarity under Policy ¶ 4(a)(i)).
Accordingly, the Panel concludes that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain name, Complainant has not authorized, licensed, or otherwise permitted Respondent to use its Mark and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because here, Respondent is using the disputed domain name to link to websites of third parties who are operating businesses that are identical or similar to the business of Complainant and offer competing goods for sale.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
First, Respondent uses the disputed domain name to resolve to a website that contains links to third-party websites that operate businesses that are identical or similar to the business of Complainant and offer competing goods for sale. Using a confusingly similar domain name to divert Internet users to a respondent’s website that contains third-party hyperlinks that compete with complainant’s business demonstrates bad faith per Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). long with those competing goods. Such conduct is emblematic of bad faith.
Second, Respondent registered and is using the disputed domain name in bad faith as Respondent engaged in typosquatting. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Here, Respondent engaged in typosquatting by omitting the letter “s” from Complainant’s Mark. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Moreover, the Panel also finds that Respondent acted in bad faith since it used the disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Finally, Respondent did not respond to the cease-and-desist letter demanding transfer of the disputed domain name sent by Complainant. Previous UDRP panels have held that failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of a disputed domain name. See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; see also Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Thus, the Panel concludes that Respondent registered and used the disputed domain name in bad faith.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <efloor.net> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: February 15, 2021
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