Colfax Furniture of Greensboro, Inc. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1108001403991
Complainant is Colfax Furniture of Greensboro, Inc. (“Complainant”), represented by Michael J. Allen of Carruthers & Roth, P.A., North Carolina, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <colfaxfurniture.com>, registered with Power Brand Center Corp.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 19, 2011; the National Arbitration Forum received payment August 19, 2011.
Although the Forum made numerous requests, the Registrar, POWER BRAND CENTER CORP., has not confirmed to the National Arbitration Forum that the <colfaxfurniture.com> domain name is registered with POWER BRAND CENTER CORP. or that Respondent is the current registrant of the name. The Registrar’s non-compliance has been reported to ICANN. The Forum’s standing instructions are to proceed with this dispute.
On September 27, 2011, after repeated attempts to contact POWER BRAND CENTER CORP. by ICANN, POWER BRAND CENTER CORP. responded by explaining that the failure to respond previously was based on personnel issues that had arisen and confirming by e-mail to the National Arbitration Forum that the <colfaxfurniture.com> domain name is registered with POWER BRAND CENTER CORP. and that Respondent is the current registrant of the name. POWER BRAND CENTER CORP. verified that Respondent is bound by the POWER BRAND CENTER CORP. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 2011, 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@colfaxfurniture.com. Also on September 8, 2011, 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 October 5, 2011, pursuant to Complainant s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <colfaxfurniture.com>, is identical to Complainant’s COLFAX FURNITURE mark.
2. Respondent has no rights to or legitimate interests in the <colfaxfurniture.com> domain name.
3. Respondent registered and used the <colfaxfurniture.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has been in the business of retail distribution of home furnishings since 1968. Complainant has used the COLFAX FURNITURE mark for forty-three years to identify and brand its services. Complainant provides such services through its numerous store locations throughout North Carolina.
Respondent registered the <colfaxfuniture.com> domain name August 4, 2002. The disputed domain name resolves to a directory website, which states: “Welcome to colfaxfurniture.com” and features links that redirect those seeking Complainant to Complainant’s competitors in the home furniture industry.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 urges that it has established rights in the COLFAX FURNITURE mark. A trademark registration is not necessary to establish rights in the mark under Policy ¶ 4(a)(i) so long as a complainant can demonstrate common law rights in the 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 Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Complainant is also not required to register in the country where Respondent resides or operates so long as it has established rights in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant claims that it has demonstrated common law rights in the COLFAX FURNITURE mark through its continuous and exclusive use of the mark in connection with its retail home furnishing services since 1968. Complainant claims that its stores in Greensboro and Kernersville, North Carolina, both opened in 1968, and its store in Winston-Salem, North Carolina, opened in 2002. Complainant states that it uses its COLFAX FURNITURE mark for sales and advertising and since 1995, has had total sales of more than $175,000,000.00 in goods. Complainant provides sales numbers for fiscal years 1995 through 2009. Additionally, Complainant estimates that its aggregate sales for the period 1968 through 1994, under the COLFAX FURNITURE mark, were at least $200,000,000. In the past several years, Complainant contends that it has invested significant efforts in advertising and promoting its mark. Complainant provides numbers for its advertising expenditures for 1995 through 2009. Complainant also registered and maintains several websites incorporating the COLFAX FURNITURE mark, including <colfaxtfurniture.net>, and colfaxfurniture.org>.
The Panel finds that Complainant demonstrated that its COLFAX FURNITURE mark has acquired sufficient secondary meaning within the home furniture industry, specifically in the North Carolina area, that it has established common law rights in the mark dating back by its continuous use of the mark to1968 under Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Complainant also contends that Respondent’s <colfaxfurniture.com> domain name is identical to its COLFAX FURNITURE mark. The disputed domain name incorporates Complainant’s mark in its entirety and only changes it by deleting the space between the words of the mark and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that deleting the space and adding a gTLD does not adequately distinguish the disputed domain name from Complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i).
Therefore, the Panel finds that Respondent’s <colfaxfurniture.com> domain name is identical to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the <colfaxfurniture.com> domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that once a prima facie case has been established by the complainant, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). This Panel finds that Complainant made a prima facie case to support its claims.
Respondent did not submit a response to the Complaint, and the Panel may assume that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). However, the Panel examines the record before determining whether the evidence in the record suggests that Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <colfaxfurniture.com> domain name. The WHOIS information identifies Respondent as “PrivacyProtect.org / Domain Admin,” a privacy shield that reflects no association with the disputed domain name or Complainant and its mark. Moreover, Complainant states that it has not licensed or otherwise authorized or permitted Respondent to use its COLFAX FURNITURE mark within the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under a Policy ¶ 4(c)(ii) analysis and nothing in the record indicates otherwise. 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s disputed domain name resolves to a directory website, featuring Complainant’s COLFAX FURNITURE mark and offering links to third party websites directly competing with Complainant’s furniture business. Respondent likely receives revenue from these click-through links. The Panel finds that Respondent’s use of the disputed domain name in order to redirect Internet users seeking Complainant to Complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s disputed domain name redirects Internet users to a directory website containing links to third-party sites in direct competition with Complainant’s furniture business. Internet users intending to buy Complainant’s furniture goods may find Respondent’s website and purchase similar goods from a competitor as a result. The Panel finds that Respondent’s registration and use of the <colfaxfurniture.com> domain name disrupts Complainant’s business, which supports findings of bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant asserts that Respondent’s use of the COLFAX FURNITURE mark within the disputed domain name and on the resolving website, as well as the similar furniture content of the site, creates a likelihood of confusion as to Complainant’s sponsorship of, or affiliation with, the resolving website and third-party links. Respondent is likely profiting from this confusion by collecting click-through fees from the previously mentioned links. The Panel finds that registration and use for such a purpose constitutes bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Respondent registered and used the disputed domain name; Complainant satisfied the elements of ICANN 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 <colfaxfurniture.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 19, 2011.
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