Griot’s Garage, Inc. v. Taufik Mohamed
Claim Number: FA1206001447709
Complainant is Griot’s Garage, Inc. (“Complainant”), represented by Stuart Dunwoody of Davis Wright Tremaine LLP, Washington, USA. Respondent is Taufik Mohamed (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <griotgarage.net>, registered with GoDaddy.com, LLC.
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.
Honorable Richard DiSalle (Ret.) as Chair and Honorable Karl V. Fink (Ret.) and Robert A. Fashler as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2012; the National Arbitration Forum received payment on June 11, 2012.
On June 8, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <griotgarage.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 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@griotgarage.net. Also on June 11, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 23, 2012, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Richard DiSalle (Ret.) as Chair and Honorable Karl V. Fink (Ret.) and Robert A. Fashler 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. 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
a) Complainant has rights in the GRIOT’S GARAGE mark, which it uses in connection with the sale of high-quality car care products;
b) Complainant is the owner of a United States Patent and Trademark Office (“USPTO”) trademark registration for the GRIOT’S GARAGE and Design mark (Reg. No. 1,829,151 registered April 5, 1994);
c) The <griotgarage.net> domain name is confusingly similar to the GRIOT’S GARAGE mark;
d) Respondent is not commonly known by the <griotgarage.net> domain name;
e) The <griotgarage.net> domain name resolves to a website that features links to car cleaning products and other commercial products;
f) The <griotgarage.net> domain name is meant to allow Respondent to profit from confusion by Internet users;
g) Respondent had constructive and/or actual knowledge of the GRIOT’S GARAGE mark and Complainant’s rights in the mark prior to the registration and use of the <griotgarage.net> domain name.
B. Respondent
Respondent did not submit a Response.
The Panel finds as follows:
(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."
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.
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.”).
Complainant contends that it has rights in the GRIOT’S GARAGE mark. Complainant states that it uses its mark in connection with the sale of high-quality car care products. Additionally, Complainant provides the Panel with evidence of its USPTO trademark registration for the GRIOT’S GARAGE and Design mark (Reg. No. 1,829,151 registered April 5, 1994). Registration of a mark, regardless of the location of the parties, is evidence of rights in that mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also 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). Therefore, the Panel finds that Complainant has rights in the GRIOT’S GARAGE mark under Policy ¶ 4(a)(i).
Complainant contends that the <griotgarage.net> domain name is confusingly similar to the GRIOT’S GARAGE mark. The Panel finds that Respondent’s deletion of the apostrophe in Complainant’s mark fails to create any distinction between the disputed domain name and the GRIOT’S GARAGE mark. See Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark). The Panel also finds that Respondent’s deletion of the letter “s” in Complainant’s mark fails to differentiate the <griotgarage.net> domain name from Complainant’s mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). Finally, the Panel finds that Respondent’s deletion of the space in the GRIOT’S GARAGE mark and the addition of the generic top-level domain (“gTLD”) “.net” do not negate a finding of confusing similarity. See 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 <griotgarage.net> domain name is confusingly similar to the GRIOT’S GARAGE mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <griotgarage.net> domain name. Complainant provides the Panel with the WHOIS record for the <griotgarage.net> domain name, which lists “Taufik Mohamed” as the domain name registrant. The panels in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), held that the WHOIS record is a convincing indicator of whether or not a respondent is commonly known by a disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <griotgarage.net> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant makes the allegation that Respondent’s use of the <griotgarage.net> domain name does not provide Respondent with rights or legitimate interests in the disputed domain name. The <griotgarage.net> domain name resolves to a website that displays links, some of which are competitive, to car cleaning products and other commercial products. Therefore, the Panel finds that Respondent’s <griotgarage.net> domain name is used for neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant has proven this element.
Complainant asserts that Respondent registered and is using the <griotgarage.net> domain name in bad faith. Respondent attempted, claims Complainant, to attract Internet users to the <griotgarage.net> domain name by creating a likelihood of confusion regarding the source of the disputed domain name so that Respondent could profit from the Internet users’ mistakes. The <griotgarage.net> domain name resolves to a website that displays links to car cleaning products and other commercial products, many of which Complainant contends directly compete with the business of Complainant done in connection with the GRIOT’S GARAGE mark. Therefore, the Panel finds that, in bad faith, Respondent registered and is using the <griotgarage.net> domain name in order to take commercial advantage of Internet users’ mistakes under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Complainant also contends that, in light of the long-standing registration of Complainant's GRIOT’S GARAGE mark, it is inconceivable that Respondent could have registered the <griotgarage.net> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, the Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <griotgarage.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Richard DiSalle (Ret.), Chair
Honorable Karl V. Fink (Ret.), Panelist
Robert A. Fashler, Panelist
Dated: July 18, 2012
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