B&B ITALIA SPA v. Paul Lum
Claim Number: FA2102001931932
Complainant is B&B ITALIA SPA (“Complainant”), represented by Thomas A. Polcyn of Thompson Coburn LLP, Missouri, USA. Respondent is Paul Lum (“Respondent”), represented by Mark Borghese, Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tuftytime.com>, registered with TLDS L.L.C. d/b/a SRSPlus.
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.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 12, 2021; the Forum received payment on February 12, 2021.
On February 16, 2021, TLDS L.L.C. d/b/a SRSPlus confirmed by e-mail to the Forum that the <tuftytime.com> domain name is registered with TLDS L.L.C. d/b/a SRSPlus and that Respondent is the current registrant of the name. TLDS L.L.C. d/b/a SRSPlus has verified that Respondent is bound by the TLDS L.L.C. d/b/a SRSPlus 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 February 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 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@tuftytime.com. Also on February 17, 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.
A timely Response was received and determined to be complete on March 2, 2021.
On March 5, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Antonina Pakharenko-Anderson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, B&B Italia Spa, is an international furniture company headquartered in Italy. Complainant has rights in the TUFFY TIME mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,156,506, registered Sep. 22, 2020). Complainant also has established common law rights in the mark through commercial recognition and significant promotional effort.
Respondent’s <tuftytime.com> domain name is identical or confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s TUFTY TIME mark, simply adding the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <tuftytime.com> domain name because Respondent is not licensed or authorized to use Complainant’s TUFTY TIME mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to offer goods that compete with Complainant. Further, Respondent’s disclaimer at the website is inadequate to confer rights and legitimate interests on Respondent.
Respondent registered and uses the <tuftytime.com> domain name in bad faith. Respondent attempts to attract Internet users to its competing website for commercial gain. Additionally, Respondent had actual knowledge of Complainant’s rights in the TUFFY TIME mark as shown through Respondent’s reference to Complainant at the disputed domain.
B. Respondent
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Respondent has rights and legitimate interests in the <tuftytime.com> domain name because it operates a webpage at the disputed domain that offers legitimate goods. Additionally, Respondent has been commonly known by the disputed domain name. Further, Complainant’s delay in taking action against Respondent suggests that Respondent’s use of the domain has not caused problems to Complainant.
Respondent did not register and use the <tuftytime.com> domain name in bad faith. Respondent makes a legitimate use of the disputed domain and Complainant provides insufficient evidence that Respondent disrupts Complainant’s business or create a likelihood of confusion with Complainant for commercial gain.
C. Additional Submissions
An Additional Submission from the Complainant was received on March 05, 2021.
In his Additional Submission (“Complainant’s Reply to Respondent’s Response”) the Complainant states that Respondent’s main arguments appear to be as follows: [a.] respondent has established “legitimate” interests in the domain due to its longstanding, infringing use and [b.] laches. Complainant counterarguments were that there was no bona fide offering of goods by Respondent since the Respondent's use of a confusingly similar domain name in connection with goods/services which compete with the complainant's business does not constitute a bona fide offering of goods and services and that the Respondent cannot admit in a disclaimer on its website that it is not the original Tufty Time, and then turn around claim to have established rights due to longstanding use of the brand and domain name TUFTY TIME. The Complainant also repeatedly states that Respondent is not commonly known by the domain name. Concerning laches – the Complainant provides the examples of the decisions illustrating that even if laches is considered as a factor, the doctrine of laches is inapplicable when the nature of use has not been legitimate use. In this part, the Complainant makes a conclusion that because Respondent has no legitimate interests in the domain and is using the domain in bad faith as demonstrated in the Complaint, the doctrine of laches should not be considered as a defense.
Factual findings
The disputed domain name was registered by Respondent on April 22, 2011.
Complainant owns a federal trademark registration for TUFTY TIME, which is registered with the United States Patent and Trademark Office (“USPTO”) in connection with “sofas,” (U.S. Registration No. 6156506 for TUFTY TIME). TUFTY TIME was registered with the USPTO on September 22, 2020. As noted in the registration, TUFTY TIME has been in use since December 2006.
Complainant opposed Northbanq Design Collection Corp’s federal trademark application for TUFTY TIME (U.S. Application No. 88445913) (TTAB Opposition Number 91253067). US Trademark Trial and Appeal Board entered Judgment by default against Northbanq Design Collection Corp on March 28, 2020. U.S. Application No. 88445913 is now marked abandoned. Moreover, Northbanq Design Collection Corp’s website (1) lists TUFTY TIME as one of its line of brands and (2) lists the same physical address as that of Respondent. Therefore, to the best of B&B’s knowledge, B&B submits that the now-abandoned U.S. Application No. 88445913 was related to Respondent.
As per Respondents contentions contained in the Response, due to the expense involved in fighting the Opposition Proceeding, Northbanq Design decided not to respond to the Opposition Proceeding and a default was entered against it.
Respondent’s makes the following disclaimer at <tuftytime.com> website:
· “[W]e specialize in high-quality reproductions of the original Tufty Time sofa.”
· “Please note that this is not an original Tufty Time, nor is it manufactured by or affiliated with B&B Italia.”
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.
Complainant asserts rights in the TUFTY TIME mark based upon the registration with the USPTO (e.g., Reg. No. 6,156,506, registered Sep. 22, 2020). Registration of a mark with the USPTO is generally sufficient to establish rights in the mark. 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).”).
Since Complainant provides evidence of registration of the TUFY TIME mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <tuftytime.com> domain name is identical or confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s TUFTY TIME mark, simply adding the “.com” gTLD. Addition of a gTLD to a mark is irrelevant in determining confusing similarity under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).) See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Similarly, the addition of a gTLD is irrelevant to a confusingly similar analysis. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the TUFTY TIME mark under Policy ¶ 4(a)(i).
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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <tuftytime.com> domain name because Respondent is not licensed or authorized to use Complainant’s TUFTY TIME mark and is not commonly known by the disputed domain name. WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), particularly when a privacy service is used. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists “Perfect Privacy LLC” as the registrant and verification from the registrar has revealed “Paul Lum” as the registrant.
Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant claims that Respondent doesn’t use the <tuftytime.com> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead offers goods that compete with Complainant.
As shown at the screenshots attached to the complaint, Respondent is offering competing goods, namely, sofas under the brand TUFTY TIME. Strikingly, Respondent admits on its “Tufty Time | Our Story | Company Background” webpage that it engages in unauthorized/unlicensed reproductions of B&B’s TUFTY TIME sofas. Respondent’s following disclaimer acknowledges consumer confusion regarding the source of the TUFTY TIME sofas:
· “[W]e specialize in high-quality reproductions of the original Tufty Time sofa.”
· “Please note that this is not an original Tufty Time, nor is it manufactured by or affiliated with B&B Italia.”
Use of a disputed domain name to offer products that compete with a complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). As mentioned above, Complainant provides a screenshot of the resolving webpage at the disputed domain, claiming that Respondent offers sofas for sale and admits to engaging in unauthorized/unlicensed reproduction of Complainant’s products. See Compl. Exs. G & H. Thus, the Panel agrees with Complainant and finds that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant also argues that Respondent’s disclaimer is inadequate to confer rights and legitimate interests on Respondent. Use of a disclaimer to dispel confusion between a complainant and respondent does not necessarily evidence rights and legitimate interests in a disputed domain name per Policy ¶ 4(a)(ii). See AltaVista Co. v. AltaVisa, FA 95480 (Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”). Complainant provides a screenshot of the disclaimer present on Respondent’s webpage and argues that it does nothing to establish rights and legitimate interests because it is only present to consumers after they visit the webpage. The Panel further finds that Respondent lacks rights and legitimate interests per Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <tuftytime.com> domain name in bad faith since Respondent attempts to attract Internet users to its competing website for commercial gain. Use of a disputed domain name to offer competing good for sale under a complainant’s mark may evidence bad faith per Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Complainant provides a screenshot of the resolving webpage at the disputed domain, claiming that Respondent offers sofas for sale and admits to engaging in unauthorized/unlicensed reproduction of Complainant’s products in violation of the Complainants intellectual property rights.
Additionally, it is obvious for the Panel that Respondent had actual knowledge of Complainant’s rights in the TUFTY TIME mark as shown through Respondent’s reference to Complainant at the <tuftytime.com> domain. Actual knowledge of a complainant’s rights in a mark evidences bad faith per Policy ¶ 4(a)(iii) and may be shown by the fame of the mark and the use a respondent makes of it. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Complainant argues that actual knowledge is evident based upon the well-known nature of the TUFTY TIME mark and Respondent’s direct reference to Complainant’s goods on the resolving webpage.
It is obvious that the Respondent, who in bad faith uses – i.e., manufactures, offers for sale and sales the copies of the Complainants famous TUFTY TIME sofas (as per information from their website), - had registered the disputed domain name in bad faith. What is more, TUFTY TIME mark was for the first time used in commerce in 2006 – five years prior to the registration of the disputed domain name by the Respondent.
Concerning the doctrine of laches (which the Respondent obviously applied to stating in the Response that there was the substantial delay of Complainant in taking any action) the Panel agrees with the established practice, and because Respondent has no legitimate interests in the domain and is using the domain in bad faith as demonstrated in the Complaint, the Panel agrees with the arguments provided in the Complainants Additional Submission and shares the opinion that the doctrine of laches should not be considered as a defense in the current case. See Elvis Presley Enterprises, Inc. v. Simon Higgs, FA1401001540234 (Forum Mar. 6, 2014) (finding it is unlikely that any delay in bringing the subject UDRP action would militate against the success of the complainant due to the findings of the Panelists as to the nature of the continuous bad faith usage revealed by the evidence “which means the Respondent has not built up legitimate rights in the name, despite the length of time of use and is not unduly prejudiced by the delay.”). Moreover, prior cases have held that mere passage of time is not sufficient in and of itself to establish a defense of laches. See George Patton Associates, Inc. v. LABJ, Inc. / Chen, Victor, FA1208001459492 (Forum Oct. 8, 2012).
Consequently, the Panel finds bad faith per 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 <tuftytime.com> domain name be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: March 10, 2021
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