national arbitration forum

 

DECISION

 

California Furnishings, Inc. d/b/a Sofa Outlet v. Portacio Corporation

Claim Number: FA1111001415669

 

PARTIES

Complainant is California Furnishings, Inc. d/b/a Sofa Outlet (“Complainant”), represented by Mitch O. Onu, California, USA.  Respondent is Portacio Corporation (“Respondent”), represented by Gerard Portacio, Nevada, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thesofaoutlet.com>, registered with Network Solutions, LLC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Anne M. Wallace, Q.C., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2011; the National Arbitration Forum received payment on November 15, 2011.

 

On November 18, 2011, Network Solutions, LLC. confirmed by e-mail to the National Arbitration Forum that the <thesofaoutlet.com> domain name is registered with Network Solutions, LLC. and that Respondent is the current registrant of the name.  Network Solutions, LLC. has verified that Respondent is bound by the Network Solutions, 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 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 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@thesofaoutlet.com.  Also on November 29, 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.

 

A timely Response was received and determined to be complete on December 20, 2011.

 

Complainant submitted an Additional Submission which was received by the Forum on December 28, 2011 and deemed to be in compliance with Supplemental Rule 7. 

 

On December 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C., as Panelist.

 

On January 13, 2012, Anne M. Wallace as Panelist asked that Complainant provide information on the court proceedings referred to by Complainant as having been commenced in the Superior Court of California, County of San Mateo, Case CIV508600. Pursuant to UDRP Rule 12, the Panelist asked that Complainant provide a copy of the case proceedings.

 

On January 18, 2012, Complainant provided Additional Submissions including copies of documents case proceedings in the Superior Court of California, County of Alameda No. RG08380104, but not the requested case proceedings in Superior Court of California, County of San Mateo, Case CIV508600.

 

On January 25, 2012, Anne M. Wallace as panelist again asked that Complainant provide information on court proceedings referred to by Complainant as having been commenced in the Superior Court of California, County of San Mateo, Case CIV508600. Pursuant to UDRP Rule 12, the Panelist asked that Complainant provide a copy of the case proceedings.

 

On January 26, 2012, Complainant provided copies of the case proceedings in the Superior Court of California, County of San Mateo, Case CIV508600.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant submits:

 

• Complainant owns U.S. Trademark Reg. No. 4032824 for the mark SOFA OUTLET CUSTOM COMFORT in connection with furniture retail stores regarding advertising, designing, selling and providing custom-made sofas, tables, accent chairs, furniture accessories, bedroom and dining sets, and other related furniture products. The registration issued September 27, 2011 and is uncontestable, valid and subsisting, uncancelled, and unrevoked.

 

• Complainant owns California Service Mark Reg. No. 67228 for the mark SOFA OUTLET in connection with furniture retail stores regarding advertising, designing, selling and providing custom-made sofas, tables, accent chairs, furniture accessories, bedroom and dining sets, and other related furniture products.

 

• Since 1997, Complainant was the first to adopt and use, and has continued to use, the SOFA OUTLET name and mark in its furniture retail store and with the offering and sale of its furniture related products. Since February 1999, Complainant was first to register the SOFA OUTLET service mark as its Fictitious Business Name with the County of San Mateo. Complainant has since registered the SOFA OUTLET service mark as its Fictitious Business Name with the counties of Santa Clara and Alameda.

 

• Complainant runs an online site for its furniture retail store at <sofaoutlet.com>. Complainant’s marketing on line is through this web site. Complainant advertises in print and television media using the SOFA OUTLET mark. Complainant has made massive investments in advertising and promoting its business and the SOFA OUTLET service mark.

 

• The Disputed Domain Name is identical or confusingly similar to Complainant’s SOFA OUTLET mark. The SOFA OUTLET mark is distinctive and was distinctive well before Respondent registered the infringing domain name. Respondent registered the Disputed Domain Name only to indicate an address on the Internet and not to identify the source of its goods and services. Respondent is using the Disputed Domain Name to profit from Complainant’s service mark primarily because Respondent intends to sell the Disputed Domain Name on Go Daddy’s action website. 

 

• Respondent has no rights or legitimate interests in the Disputed Domain Name because:

 

• The mere registration of a domain name with a domain name registrar by itself does not confer trademark rights. A domain name does not become a trademark or a service mark unless it is also used to identify and distinguish the source of goods or services. Complainant says, on information and belief, that Respondent registered the Disputed Domain Name with Network Solutions only to indicate an address on the Internet and not to identify the source of specific goods and services. As such, Respondent should be considered as having no rights or legitimate interests in the Disputed Domain Name because it is not functioning as a service mark.

 

• Complainant has not granted Respondent permission, authorization, or license by which Respondent could claim rights or legitimate interests in the Disputed Domain Name nor is Respondent known by the Disputed Domain Name. 

 

• Complainant believes Respondent registered the Disputed Domain Name with the bad faith intent to profit from Complainant’s service mark for four main reasons:

 

• Respondent’s bad faith intent to profit may be inferred because Respondent provided the Registrar with false contact information. Respondent registered with intent to sell primarily because Respondent did not provide the correct address details to Network Solutions, but instead provided false contact information. Complainant attempted on numerous occasions to contact Respondent by mail at the address provided to demand that the Disputed Domain Name be transferred. All mailings were returned to Complainant.

 

• Respondent’s bad faith intent to profit may be inferred because the Disputed Domain Name does not resolve to websites owned, controlled, or endorsed by Complainant. Instead, on information and belief, Complainant says they are intended to resolve to websites that are owned and controlled by Respondent.

 

• Respondent’s bad faith intent to profit may be inferred because Respondent registered the Disputed Domain Name, which is essentially identical to Complainant’s mark, a mark which enjoys relative notoriety and was so obviously connected with Complainant that Respondent could only have registered the domain name for the purpose of sale. Respondent has made no use of the Disputed Domain Name and there is no connection between Respondent and the Disputed Domain Name. 

 

• Respondent has offered to sell the Disputed Domain Name either to Complainant or to the public through the GoDaddy auction site. At present, Respondent is currently offering the Disputed Domain Name for sale through GoDaddy Auctions. The price for an auction ending November 17, 2011 was $8,000.

 

 

B. Respondent

 

Respondent submits:

 

·        Respondent, Portacio Corporation, is the current registrant of the Disputed Domain Name. Respondent became registrant before Complainant’s California Service Mark SOFA OUTLET registration issued on September 27, 2011. Respondent was in process of re-developing a website using the Disputed Domain Name when the civil action against Respondent was filed in Superior Court of California, County of San Mateo (Case No.  CIV508600). As a result of the pending civil action, Respondent had disabled the website prior to the Complainant’s filing of this UDRP. 

 

·        Respondent denies it was using the Disputed Domain Name to profit from Respondent’s California service mark. Respondent denies knowledge of any auction involving the Disputed Domain Name on GoDaddy’s auction website.

 

·        Respondent does not believe <thesofaoutlet.com> is identical or confusingly similar to Complainant’s common law and registered service mark because the Disputed Domain Name is merely a combination of descriptive and commonly used words as opposed to the exact character mark SOFA OUTLET CUSTOM COMFORT or the service mark SOFA OUTLET.

 

·        Complainant simply states its belief in common law rights to the SOFA OUTLET name. Respondent denies it is infringing and/or diluting Complainant’s California service mark.

 

·        Respondent agrees that mere registration of a domain name with a domain registrar by itself does not confer trademark rights. However, Respondent believes it has interest in the Disputed Domain Name. Before Complainant filed this complaint, Respondent had simply renewed the domain record that was originally created and maintained since 2003. Respondent was in process of redeveloping the website using the Disputed Domain Name when the civil action against Respondent was filed in Superior Court of California, County of San Mateo. As a result of pending civil action, Respondent had disables the website before Complainant filed this UDRP.

 

·        Respondent agrees it does not have Complainant’s permission to use its California service mark SOFA OUTLET. However, Respondent is not infringing on said mark.

 

·        Respondent denies that bad faith intent to profit can be inferred as it has not provided Registrar intentionally with false contact information. Respondent correctly indicated Registered Owner, Administrative, and Technical Contacts. Respondent could be reached by email and by phone. Respondent acknowledges there may have been unforeseen clerical challenges with mail delivery.

 

C. Additional Submissions

 

·        Complainants additional submission contains no new information to assist the panel with this case.

 

·        The case proceedings in Superior Court of California, County of Alameda No. RG08380104 show Complainant brought proceedings against Jenny Young doing business as SOFA OUTLET in July 2008. Respondent was not a party to these proceedings. This proceeding ended in a Stipulated Injunction and Order, among other things, prohibiting Young from using Sofa Outlet, SofaOutlet, The Sofa Outlet or TheSofaOutlet on the Internet.

 

·        The case proceedings in the Superior Court of California, County of San Mateo, Case CIV508600 shows that Complainant commenced proceedings against Portacio Corporation, Gerard A. Portacio, and John Does 1-25 on September 27, 2011. The suit claims relief against the Defendants in relation to the SOFA OUTLET service mark and the Disputed Domain Name. Defendant Portacio has defended and the case is not yet resolved in the court.

 

FINDINGS

Complainant and Respondent both noted in their submission that there is a pending civil action involving the parties regarding the disputed domain name with the Superior Court of California, County of San Mateo (Case No. CIV508600). The civil action involves issues of infringement, dilution, and unfair competition. Complainant as Plaintiff claims significant relief against Defendant including injunctions, declarations, and damages. The proceedings are ongoing. The documents submitted show that the case is moving through the litigation process. Respondent has held the Disputed Domain Name for a long time and for a period of time appears to have operated it for the person who was Defendant in the earlier proceedings in the County of Alameda. The issues in the litigation are complicated and will involve significant evidence and issues of credibility. 

 

Where there are court proceedings, Policy ¶ 4(k) requires that ICANN not implement an administrative panel’s decision regarding a UDRP dispute “until the court proceeding is resolved.”  The court proceeding between the parties will determine the issue of rights in the SOFA OUTLET mark and rights or legitimate interests in the Disputed Domain Name. The litigation will resolve whether Defendant has acted in bad faith, including questions of damages. The issues are complicated and cannot be resolved in a proceeding such as this. No purpose will be served by this Panel ruling on the merits of this UDRP because the court is ultimately going to resolve the matter. The Panel’s order would be suspended until the litigation is concluded and then the court’s ruling governs in any event.

 

Therefore this Panel should not rule on this dispute while the court proceeding is pending because no purpose would be served. Our decision regarding the domain name will have no practical consequence. See AmeriPlan Corp. v. Gilbert, FA105737 (Nat. Arb. Forum Apr. 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶ 4(k) requires that ICANN not implement an administrative panel’s decision regarding a UDRP dispute “until the court proceeding is resolved.”  Therefore, a panel should not rule on a decision when there is a court proceeding pending because “no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.”). 

 

DECISION

Accordingly, this Complaint is hereby dismissed.

 

 

 

Anne M. Wallace, Q.C., Panelist

Dated:  January 31, 2012