Floor and Decor Outlets of America, Inc. v. Anna Marie Fanelli
Claim Number: FA1202001430576
Complainant is Floor and Decor Outlets of America, Inc. (“Complainant”), represented by Paul S. Owens of Paul Owens & Associates, Georgia, USA. Respondent is Anna Marie Fanelli (“Respondent”), represented by Stephen W. Bialkowski, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <flooranddecor.com>, registered with GoDaddy.com, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Sir Ian Barker, Hon. Bruce E. Meyerson (Ret.) and G. Gervaise Davis III, Esq. as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2012; the National Arbitration Forum received payment on February 21, 2012.
On February 21, 2012, Go Daddy confirmed by e-mail to the National Arbitration Forum that the <flooranddecor.com> domain name is registered with Go Daddy and that Respondent is the current registrant of the name. Go Daddy has verified that Respondent is bound by the Go Daddy 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 February 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2012 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@flooranddecor.com. Also on February 24, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 March 16, 2012.
Timely Additional Submissions were received from both the Complainant and the Respondent.
On March 28, 2012, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Ian Barker, Hon. Bruce E. Meyerson (Ret.) and G. Gervaise Davis III, Esq. as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant is a ‘big box’ retailer of flooring and wall-covering materials, including wall tiles (in a range of materials such as natural stone, ceramics, porcelain and marble), tile flooring of various sorts and kitchen and bathroom accessories. The Complainant offers design and installation devices for its products.
The Complainant operates 30 stores in several states. It has spent large sums on advertising of various kinds. It has a large presence on the internet through which it also sells its products and services. It has acquired extensive goodwill in the name ‘Floor & Decor’ since it first used it in commerce. The Complainant owns United States registered trademarks for the FLOOR & DECOR word mark, registered July 4, 2003 and for FLOOR & DÉCOR word mark and design registered June 13, 2006.
The disputed domain name was first registered to John Fanelli of Tenafly, New Jersey on April 3, 2002. He assigned it to the present Respondent, his wife, Anna Marie Fanelli on October 31, 2010.
From April 2002 until June 2008, the disputed domain name was ‘parked’ displaying “under construction” pages. By August 23, 2003, Mr. Fanelli showed a “coming soon” page entitled with the Floor & Decor name. This website operates as a ‘Coming Soon’ page with a ‘click-through’ to an email page called info@flooranddecor.com.
From about May–June 2008, visitors to the website were automatically forwarded to the Respondent’s email address of <annamariefanelli.com>. The website at this address offers the Respondent’s tile interior decorating service and trips. The expression ‘Floor & Decor’ does not feature. Neither John nor Anna Marie Fanelli owns any registered trademark for ‘Floor & Decor’. Nor is there any such New Jersey registered company or trade name. The Complainant has never agreed to the Respondent reflecting its registered trademark in a domain name.
The disputed domain name is identical to the Complainant’s registered trademark. The ampersand instead of the word ‘and’ does not detract from the identical nature.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has passively held the disputed domain name for 10 years and that fact indicates that there is neither a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy nor a legitimate non-commercial or fair use under paragraph 4(c)(iii) of the Policy.
The Respondent has been using the disputed domain name misleadingly to divert internet users to her own personal website for commercial gain. Although the ‘Coming Soon’ page is passively held, it contains enough material to cause confusion with the Complainant’s trademark. The products referred to in the Respondent’s website are the same as those sold by the Complainant. Such passive holding demonstrates bad faith registration and use. The Respondent’s conduct also indicates bad faith by her appropriating the goodwill in the Complainant’s mark to her own brand. The Respondent comes within Paragraph 4(b)(iv) of the Policy under which bad faith may be shown by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of her personal website.
The Respondent should have known of the Complainant’s rights when she began redirecting internet traffic to her own website in 2006. The Complainant’s trademarks were both registered in 2006. The transfer of the domain name registration to the Respondent in 2010 constitutes a new registration and bad faith should be assessed as at that date.
The Respondent must have had knowledge of the Complainant’s rights in 2008 because of the Complainant’s substantial internet presence.
B. Respondent
The Respondent and her husband, John Fanelli, are the owners of J.G.M.D. Inc. (JGMD), a “high-end” stone and tile design store which has done since 1990 and still does business in Tenafly, New Jersey under the trade name, ‘Floor & Decor’.
The store was opened in 1990 and the windows and canopy outside the store have always borne the legend ‘Floor & Decor’. All invoices and purchase orders are clearly branded thus. The Respondent has advertised the business as ‘Floor & Decor’ and it has been showcased as such in the ‘New York Times’, in certain trade publications and on television. Over the last 22 years, the turnover of the business has been $22 million, with sales of $3 million approximately. per year.
The trade name ‘Floor & Decor’ was registered as such with Bergen County, New Jersey on January 16, 1990 but no ‘d/b/a’ had been filed. Recently, JGMD’s long-standing use of the trade name has been regularized by registration.
In 2005, the Respondent decided to brand herself as the face of a lifestyle brand for tile and design. She paid $64,900 to a designer to create an online brand and media presence for <tilestyles.tv> and <flooranddecor.com>. The Respondent paid $25,000 for additional hosting and maintenance fees. The Respondent was not happy with the designer’s work and received a refund of half the development fee. In June 2008, because there was no website, the Respondent forwarded visitors to the disputed domain name to her own domain.
The Respondent’s business has been known by the name ‘Floor & Decor’ for 22 years. As such, it has made widespread use of the mark in New Jersey, New York, Florida and California, starting some 11 years before the Complainant’s claimed first use of its trademark in commerce.
The fact that the disputed domain name was originally registered to the Respondent’s husband is irrelevant given that they are co-owners of the Floor & Decor business.
Nothing can be made out of any ‘passive’ holding of the disputed domain since the Respondent took demonstrable steps to develop a website.
The Respondent did not misleadingly divert customers from the Complainant. The disputed domain name was registered with the intent to develop a website in support of an active business in which the Respondent and her husband (through JGMD) had operated for 22 years under the same name.
The Respondent and/or her predecessor registrant and/or their company, JGMD owned a common-law mark in ‘Floor & Decor’ since 1990. The corresponding domain name was registered 11 years before the Complainant’s trademark was first used in commerce.
The ‘Coming Soon’ page was placed on the website in good faith and the Respondent commissioned a bona fide web developer to develop the website.
There is no bad faith registration proved in that there is no proof that the Respondent’s husband in 2002 or the Respondent in 2010 intended to profit from the disputed domain name at the Complainant’s expense. Had the Complainant made inappropriate enquiries when it filed for trademark registration, it would have found out about the Respondent’s common law marks.
The Respondent filed a declaration supporting her case. This was said to have been made “under penalty of perjury”. The Panel finds such a declaration wanting in that:
(a) it does not state where it is made;
(b) in what jurisdiction a penalty for perjury could be imposed; and
(c) it is not witnessed by some person (e.g. notary, public official, etc.) authorised by the jurisdiction where the declaration was made to witness such documents.
Although the Panel is not able to make credibility findings, it is entitled to expect that such declarations, if put forward in support of a party’s position and a party’s credibility, should receive proper formality.
C. Complainant’s Additional Submissions
The Complainant’s additional submission repeats many of its earlier arguments but in greater detail.
Some time after the Complaint had been filed, the Respondent stopped redirecting visitors to her personal website. This was done to avoid the appearance of bad faith.
The present ‘Coming Soon’ page at the disputed domain name is a passive holding of a domain name and the page has been unchanged for 8 ½ years. The page does not promote services but promotes products similar to the Complainant’s. The page does not identify the Respondent by name or location and, so, visitors might think they have arrived at the Complainant’s website.
The Complainant’s website under its ‘Floor & Decor’ mark went live in August 2003. The primary metatag on the Respondent’s website is ‘Floor & Decor’. It is likely that the Respondent learned of the Complainant’s use of its marks from misdirected visitors to the disputed domain name, from at least May 2008 onwards. The Respondent may also have learned of the Complainant’s trademark because she consulted a trademark attorney in February 2006 about an application to trademark ‘Tilestyles’.
The Respondent’s declaration is light on specifics and the documents produced are not authenticated. Her evidence is unreliable and unsubstantiated.
The Respondent’s claim to have used ‘Floor & Decor’ since 1990 is in doubt because there had been no d/b/a registration until recently. Under New Jersey law, persons using a trade name must register the name, otherwise, the use of a trade name is illegal. The 1990 registration is in the name of the Respondent’s husband.
The Respondent’s evidence of preparations, even taken at face value, does not represent a reasonable effort to achieve the end of a designed website. Rather, it demonstrates excessive delay in developing a website. No reason was offered for allowing the website to stay fallow for 10 years or so and to have a redirection to the Respondent’s website of visitors to the disputed domain name.
D. Respondent’s Additional Submission
The Respondent, too, reinforces her earlier submissions in her additional submission. The Respondent denies bad faith registration and use. The Complainant is a ‘big box’ retailer which is trying to bully the Respondent into giving up the disputed domain name in disregard of the Respondent’s existing trademark rights.
The Respondent seeks a declaration of reverse domain name hijacking.
(a) The disputed domain name is identical to a trademark in which the Complainant has rights.
(b) The Complainant has not established that the Respondent has no rights or legitimate interests in the disputed domain name.
(c) This is not an appropriate case to make a declaration of reverse domain name hijacking.
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."
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.
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."
The disputed domain name is identical to the Complainant’s registered trademark. Alternatively, if one differentiates between the ampersand and the word “and”, it is confusingly similar.
It does not matter, if one takes 2002 as the year of registration of the disputed domain name, that the disputed domain name was registered before the trademark was registered. For authority, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions (2nd edition) (“WIPO Overview”) at paragraph 1.4 and the cases there noted.
The Complainant has therefore established Paragraph 4(a)(i) of the Policy.
Although the Complainant gave the Respondent no rights to reflect its trademark in a domain name, the Respondent claims rights or legitimate interests in the disputed domain name under paragraph 4(c)(i) of the Policy. This provides that a respondent can demonstrate rights or a legitimate interest in a domain name if it can be shown that “before any notice to the [respondent] of the dispute, the [respondent made] use of or demonstrable preparations for the use of the domain name . . . in connection with a bona fide offering of goods and services.”
In the Panel’s view, the Respondent and the co-owner of the business, her husband, have been operating through their company a business in New Jersey under the name and style of ‘Floor & Decor’ since 1990. Although, if compared with the Complainant’s business, this enterprise is fairly modest in scope, it appears to have attracted some favourable attention in the media.
There is evidence from the Respondent that she arranged to develop a website at the disputed domain name and instructed and paid a website creator. This development did not occur. The Panel finds it curious that the Respondent then decided to direct enquirers at the disputed domain name to her own website rather than make efforts to achieve a specific website at the disputed domain name. Her explanation is not particularly convincing.
Put another way, the Respondent’s failure actively to use the disputed domain name for such a long periods is troubling. Most of the cases involving passive holding do not, however, have their origins in an existing business as is the case here. Usually, it is impossible to conceive of a reason for the registration of the disputed domain name other than opportunistic cybersquatting. Often there are false contact details or other indicia of bad faith. Furthermore, in the case of a trademark which includes a design or logo, there really needs to be some real evidence of confusion. Such is lacking here.
The above concerns about the Respondent’s case do not trump the fact that the Respondent (or her co-owner) have been operating a business under the name of ‘Floor & Decor’ for 22 years and did so at the time the domain name was originally registered in 2002.
From the Panel’s review of the parties’ submissions, this does not appear to be a dispute within the contemplation of the Policy which is intended principally to address instances of “cybersquatting”. Many of the issues here would need to be tested in a court with the benefit of full due process and cross-examination. This is not the kind of case with clear facts indicating bad faith for which the Policy was designed. See comments in Grupo Andrea S.A. de c.v. v Andrea Shoes (NAF – FA1002001307588 – April 19, 2010) and the other authorities there noted.
Considerations under Paragraph 4(a)(ii) of the Policy often merge with those under Paragraph 4(a)(iii). That is the situation in this case. Because the Respondent was doing business as "Floor & Decor" at the date when the disputed domain name was registered by the Respondent's husband and co-owner of the business, it is not possible to infer bad faith registration. Whatever the subsequent position with bad faith use, the Complainant has not satisfied paragraph 4(a)(iii) of the Policy and the Complaint must be denied.
In the Panel’s view, this is not an appropriate instance for a finding against the Complainant of reverse domain name hijacking. The Complainant has had registered trademarks for several years and may not have known of the Respondent’s history of use of the name in dispute.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Hon. Sir Ian Barker QC, Panelist
Dated: April 4, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page