Grohe AG v. grohedealer.com Private Registrant
Claim Number: FA1011001355832
Complainant is Grohe AG (“Complainant”), represented by Kourtney Mulcahy of Hinshaw & Culbertson LLP, Illinois, USA. Respondent is grohedealer.com Private Registrant (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grohedealer.com>, registered with New Dream Network, LLC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2010; the National Arbitration Forum received payment on November 2, 2010.
On November 1, 2010, New Dream Network, LLC confirmed by e-mail to the National Arbitration Forum that the <grohedealer.com> domain name is registered with New Dream Network, LLC and that Respondent is the current registrant of the name. New Dream Network, LLC has verified that Respondent is bound by the New Dream Network, 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 November 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 2010 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@grohedealer.com. Also on November 3, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
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" 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 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 <grohedealer.com> domain name is confusingly similar to Complainant’s GROHE mark.
2. Respondent does not have any rights or legitimate interests in the <grohedealer.com> domain name.
3. Respondent registered and used the <grohedealer.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Grohe AG, manufactures and sells a variety of sanitary fitting products, such as kitchen and bath products and accessories. Complainant owns trademark registrations for the GROHE mark with the United States Patent and Trademark Office (“USPTO”), the Canadian Intellectual Property Office (“CIPO”), and the European Union Office for Harmonization in the Internal Market (“OHIM”):
USPTO
Reg. No. 1,151,616 issued April 21, 1981;
Reg. No. 1,902,412 issued July 4, 1995;
CIPO
Reg. No. TMA301,914 issued April 19, 1985;
Reg. No. TMA433,915 issued September 30, 1994;
Reg. No. TMA587,363 issued August 19, 2003; and
OHIM
Reg. No. 22,662 issued December 7,1999.
Respondent, grohedealer.com Private Registrant, registered the <grohedealer.com> domain name on July 26, 2010. The disputed domain name resolves to a commercial website, which sells a variety of Complainant’s kitchen and bath products and accessories and even uses product images copied from Complainant’s online catalog.
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 argues that it has rights in the GROHE mark as a result of its trademark registrations with the USPTO, the CIPO, and the OHIM:
USPTO
Reg. No. 1,151,616 issued April 21, 1981;
Reg. No. 1,902,412 issued July 4, 1995;
CIPO
Reg. No. TMA301,914 issued April 19, 1985;
Reg. No. TMA433,915 issued September 30, 1994;
Reg. No. TMA587,363 issued August 19, 2003; and
OHIM
Reg. No. 22,662 issued December 7,1999.
The Panel finds that this evidence of trademark registration with trademark authorities around the world, including the USPTO, serves to prove Complainant’s rights in the GROHE mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <grohedealer.com> domain name is confusingly similar to Complainant’s GROHE mark because the disputed domain name contains Complainant’s entire mark and adds only the generic term “dealer” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that combining Complainant’s mark with a single generic term does not remove the disputed domain name from the realm of the confusingly similar. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). The Panel also holds that the addition of a gTLD is of no consequence to the Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Thus, the Panel finds that Respondent’s <grohedealer.com> domain name is confusingly similar to Complainant’s GROHE mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
In order to satisfy the burden imposed by Policy ¶ 4(a)(ii), Complainant must first present a prima facie case against Respondent before the burden to show rights and legitimate interests transfers to the Respondent. In this case, the Panel deems Complainant to have satisfied this burden. Respondent, however, in failing to respond to the Complaint, has not satisfied its burden and thus has not shown rights and legitimate interests in the disputed domain name. The Panel accordingly concludes that Respondent does not possess rights and legitimate interests in the disputed domain name and that Complainant’s allegations may be taken as true. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed).
Complainant alleges that there is no evidence that the <grohedealer.com> domain name comprises any part of Respondent’s legal name. While the WHOIS information, which lists the domain name registrant as “grohedealer.com Private Registrant,” may seem to imply that Respondent is commonly known by the disputed domain name, without the presentation of further supporting evidence, the Panel may still find that Respondent is not commonly known by the disputed domain name. Based on the lack of corroborating evidence in the record, the Panel accordingly finds that Respondent is not commonly known by the disputed domain name and thus has no rights and legitimate interests under Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Complainant contends that Respondent’s <grohedealer.com> domain name directs Internet users to Respondent’s commercial website which features and sells only Complainant’s products. Complainant argues, and the Panel agrees, that such unauthorized commercial use of the disputed domain name appropriating Complainant’s mark does not satisfy Policy ¶ 4(c)(i) and ¶ 4(c)(iii) in that it is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit); see also Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that the website resolving from Respondent’s <grohedealer.com> domain name offers Complainant’s kitchen and bath products for sale without authorization from Complainant. As such, Complainant argues that Respondent is using the disputed domain name containing Complainant’s GROHE mark to compete with Complainant and disrupt Complainant’s business. The Panel thus finds that Respondent’s actions in connection with the disputed domain name show bad faith registration and use under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant contends that Respondent uses the <groherdealer.com> domain name in connection with its commercial website which sells Complainant’s products, and only Complainant’s products, for profit. Complainant asserts that Respondent uses Complainant’s mark in the disputed domain name to attract consumers seeking Complainant’s products. Complainant further argues that the fact that the website sells only Complainant’s products, uses Complainant’s mark, and displays actual images from Complainant’s online catalog increases the likelihood that these attracted consumers will be confused and mistakenly believe that Respondent’s website is one authorized or endorsed by Complainant. Consequently, the Panel finds that Respondent’s registration and use of the <grohedealer.com> domain name is in bad faith according to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).
The Panel finds 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 <grohedealer.com> domain name be TRANSFERRED.
James A. Carmody, Esq., Panelist
Dated: December 1, 2010
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