Crawford Laboratories, Inc. v. Whois Protection
Claim Number: FA0708001054999
Complainant is Crawford Laboratories, Inc. (“Complainant”), represented by David
Schmetterer, of Crawford Laboratories, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <florock.com>, registered with Rebel.com.
.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On August 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 5, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@florock.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <florock.com> domain name is identical to Complainant’s FLOROCK mark.
2. Respondent does not have any rights or legitimate interests in the <florock.com> domain name.
3. Respondent registered and used the <florock.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Crawford Laboratories, Inc., manufactures and
sells Florock, which is a trade name for a line of epoxy and polyurethane
coatings that are applied to concrete floors, including resins and epoxy quartz
systems sold as concrete and garage floor finishers. Complainant has used the FLOROCK mark in
connection with these products since 1967.
Complainant currently holds a trademark registration with the United
States Patent and Trademark Office (“USPTO”) for the FLOROCK mark (Reg. No.
2,515,491 issued
Respondent registered the <florock.com> domain name on
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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’s registration of the FLOROCK mark with the
USPTO indicates that Complainant has rights in the mark under Policy ¶
4(a)(i). See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum
Under the UDRP, however, Complainant is not required to own
a trademark registration to establish rights in the FLOROCK mark. See
SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)
(finding that the Rules do not require that the complainant's trademark or
service mark be registered by a government authority or agency for such rights
to exist); see also
The Panel finds that Complainant has established common law
rights in the FLOROCK mark that predate Respondent’s registration of the <florock.com> domain name through
continuous and extensive use of the mark in connection with its concrete
finishing products for over forty years.
Complainant’s trademark registration with the USPTO indicates that
Complainant has used the FLOROCK mark in commerce since 1967. Therefore, the Panel finds that the mark has
acquired secondary meaning sufficient to establish Complainant’s rights in the
mark under Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248
(Nat. Arb. Forum
Respondent’s <florock.com>
domain name is identical to Complainant’s FLOROCK mark as it incorporates
the exact mark and merely adds the generic top-level domain (“gTLD”) “.com”
onto the mark. It is a well-established
principle under the UDRP that the addition of a gTLD is irrelevant to a Policy
¶ 4(a)(i) analysis, as a top-level domain is a required element of all domain
names. Thus, the Panel finds that the <florock.com> domain name is
identical to Complainant’s FLOROCK mark pursuant to Policy ¶ 4(a)(i). See Snow Fun, Inc. v. O'Connor, FA
96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name
<termquote.com> is identical to the complainant’s TERMQUOTE mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to the complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not
relevant); see also Gardline Surveys Ltd. v. Domain Fin. Ltd.,
FA 153545 (Nat. Arb. Forum
The Panel thus finds that Policy ¶ 4(a)(i) has been
satisfied.
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving that Respondent lacks rights and legitimate interests in the <florock.com> domain name. Once Complainant has made a prima facie case, however, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. In the present case, the Panel finds that Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to reply to the Complaint raises the
presumption that Respondent lacks rights and legitimate interests in the
disputed domain name. See Vanguard
Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum
Respondent’s WHOIS information does not indicate, and there is nothing further in the record to suggest, that Respondent is commonly known by the <florock.com> domain name. Moreover, Complainant has not authorized or permitted Respondent to use its FLOROCK mark for any purpose. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <florock.com>
domain name redirects Internet users to a website featuring links to the
websites of Complainant’s competitors, and the Panel presumes that Respondent
accrues click-through fees when users click on these links. Such use constitutes neither 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) and further indicates Respondent’s lack of rights and legitimate
interests in the <florock.com> domain
name. See TM Acquisition Corp. v. Sign
Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the
respondent’s diversionary use of the complainant’s marks to send Internet users
to a website which displayed a series of links, some of which linked to the
complainant’s competitors, was not a bona fide offering of goods or
services); see also Coryn Group, Inc. v. Media
Insight, FA 198959 (Nat. Arb. Forum Dec.
5, 2003) (finding that the respondent was not using the domain names for a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
As mentioned previously, Respondent is using the <florock.com> domain name to
redirect Internet users to a website featuring links to Complainant’s direct
competitors. The Panel finds that such
use constitutes a disruption of Complainant’s business and indicates
Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum
Furthermore, the Panel presumes that Respondent benefits
commercially when Internet users click on the competing links displayed on the
website that resolves from the <florock.com>
domain name. Respondent is therefore
taking commercial advantage of the likelihood that Internet users, seeking
Complainant’s Florock products, will be confused as to Complainant’s
affiliation with the disputed domain name.
This is further evidence that Respondent registered and is using the <florock.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA
196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name
at issue in direct competition with Complainant, and giving the impression of
being affiliated with or sponsored by Complainant, this circumstance qualifies
as bad faith registration and use of the domain name pursuant to Policy ¶
4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629
(Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”).
The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <florock.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 25, 2007
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