Sico Incorporated v.
Claim Number: FA0712001117992
Complainant is Sico
represented by Collin B. Foulds, of Gray, Plant, Mooty, Mooty & Bennett, P.A., 500 IDS Center,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sicofloor.com> and <sico-floor.com>, registered with Key-Systems Gmbh.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 7, 2007.
On December 11, 2007, Key-Systems Gmbh confirmed by e-mail to the National Arbitration Forum that the <sicofloor.com> and <sico-floor.com> domain names are registered with Key-Systems Gmbh and that the Respondent is the current registrant of the names. Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 17, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 2008 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 firstname.lastname@example.org and email@example.com by e-mail.
A Response was received on January 7, 2008. The Response was deficient under ICANN Rule 5 as the hard copy was not timely received.
A Response was received electronically on January 7, 2008, but was not received in hard copy by that date. This was a violation of ICANN Supplemental Rule No. 5(a). Nevertheless, because the electronic response was timely and no prejudice appears, the Response will be considered.
Complainant made an Additional Submission, which was timely but not in compliance with Supplemental Rule No. 7, because it was not accompanied by the required fee. The Panel will nevertheless consider the Additional Submission.
On January 18, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Sico Incorporated is the owner of a federally-registered mark SICO® and has used and licensed its mark in connection with portable floors and folding beds since 1970. Complainant obtained federal registration of the mark on February 23, 1971. Complainant operates a website at <sicoinc.com> through which it sells goods using its mark. Complainant registered its domain name on December 3, 1997.
On or about October 8, 2007, Silvatrade
Respondent filed a response contending that SICOFLOOR is registered as a German national trademark, which led to registration of the domain name <sicoinc.com>. Respondent contends that the trademark of SICOFLOOR stands for composite exterior flooring. The response was accompanied by a document purporting to show the German registration by Respondent of the mark “SICOFLOOR,” which appears to have occurred in the year 2007. The response does not contain any contentions responding to Complainant’s assertions in the complaint.
C. Additional Submissions
Complainant in its Additional Submission contends that the response does not establish a legitimate interest by Respondent in the disputed domain name and does not adequately respond to the evidence provided by Complainant in support of its contentions.
Complainant is the owner of the federally-registered mark SICO® and has used and licensed the mark in connection with its merchandising of portable floors and folding beds since 1970. Complainant obtained federal registration of its mark on February 23, 1971. Complainant operates a website at <sicoinc.com> through which it promotes and sells its goods under the mark SICO®. Complainant registered its domain name on December 3, 1997. Respondent registered its domain names <sicofloor.com> and <sico-floor.com> on October 8, 2007. It appears that Respondent obtained a German trademark registration of its mark SICOFLOOR during 2007. The record contains no evidence that Respondent is commonly known by either of the <sicofloor.com> or <sico-floor.com> domain names. No evidence appears that Respondent is authorized to use Complainant’s SICO mark and Complainant alleges no such authority exists. Respondent is using its domain names in connection with selling floor products which are similar in nature to the floor product offerings of Complainant. On that basis, it appears that Respondent uses its domain names to advertise goods and services in direct competition with those marketed by Complainant for commercial gain. The similarity of goods, sequence of events, and similarity of marks and domain names make it appear that Respondent had actual knowledge of Complainant’s marks and use of marks when registering its mark and the disputed domain names.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 trademark registration adequately establishes Complainant’s right in the SICO mark for purposes of Policy ¶ 4(a)(i). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006). No doubt exists that the <sicofloor.com> and <sico-floor.com> domain names are confusingly similar to Complainant’s mark within the meaning of the policy. This is established because the disputed domain names incorporate Complainant’s mark in its entirety and add the term “floor,” which is a term related to Complainant’s product offerings under its SICO mark. Moreover, the addition of a hyphen in one of the disputed domain names and the addition of the generic top-level domain “.com” to the disputed domain names does not adequately distinguish Respondent’s domain names from Complainant’s mark. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001).
Because Complainant has established that Respondent’s domain names are confusingly similar to Complainant’s mark and has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain names, Respondent had the burden of showing that it is commonly known by either of the <sicofloor.com> and <sico-floor.com> domain names or that Respondent was authorized to use Complainant’s SICO mark. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Nothing in the record demonstrates that Respondent is commonly known by the disputed domain names within the meaning of Policy ¶ 4(c)(ii). Complainant has shown that Respondent is not a licensee of the Complainant, that Complainant’s prior rights in the domain name precede Respondent’s German registration of its mark and registration of the disputed domain names, and that Respondent is not commonly known by the disputed domain names. Respondent has no rights or legitimate interests in the disputed names. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000). It also appears that Respondent is using the disputed domain names to market a product in competition with products offered by Complainant under its SICO mark. The record establishes that Respondent does not use the disputed domain names to make a bona fide offering of goods or services. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006).
The circumstantial evidence warrants an inference that Respondent registered the disputed domain names and uses them in bad faith within the meaning of Policy ¶ 4(b)(iv). The disputed domain names and resulting websites are likely to create confusion concerning a relationship to the domain names and websites. This demonstrates Respondent’s bad faith within the meaning of Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000). It is bad faith within the meaning of the Policy for Respondent to register and use domain names that are identical or confusingly similar to Complainant’s mark and domain name with an apparent purpose to redirect users to websites that offer goods similar to those offered by the Complainant. The record supports an inference that Respondent is “palming off” its goods as having a relationship to Complainant’s goods and goodwill. This supports the finding of bad faith registration and use. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sicofloor.com> and <sico-floor.com> domain names be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: February 1, 2008
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