B&M Noble Co. d.b.a. Noble Hardwoods, Inc. v. Max Ertem
Claim Number: FA1211001469572
Complainant is B&M Noble Co. d.b.a. Noble Hardwoods, Inc. (“Complainant”), represented by Travis M. Bray of Navigato & Battin, LLP, California, USA. Respondent is Max Ertem (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <duchateaufloor.com>, registered with GoDaddy.com, 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, 2012; the National Arbitration Forum received payment on November 1, 2012.
On November 5, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <duchateaufloor.com> 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 November 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 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@duchateaufloor.com. Also on November 5, 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 December 10, 2012, 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 <duchateaufloor.com> domain name, the domain name at issue, is confusingly similar to Complainant’s DUCHATEAU mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, B&M Noble Co. d.b.a. Noble Hardwoods, Inc., is a manufacturer and distributor of certain brands of flooring, including engineered wood flooring sold under the trademarked brand name DUCHATEAU. Complainant has manufactured and distributed DUCHATEAU wood flooring throughout the United States and internationally for several years. Complainant operates the website <duchateaufloors.com> to assist in marketing the DUCHATEAU brand and flooring, to provide potential distributors and end-users with an idea of exactly what DUCHATEAU Flooring looks like and to encourage and promote the sale of DUCHATEAU Flooring. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the DUCHATEAU mark (Reg. No. 3,616,735, registered May 5, 2009). Respondent’s <duchateaufloor.com> is confusingly similar to Complainant’s DUCHATEAU mark as it incorporates the mark in its entirety and merely adds the descriptive term “floor” and the generic top-level domain (“gTLD”) “.com.” Respondent is not commonly known by the disputed domain name pursuant to Respondent’s WHOIS information because the phrase “Duchateau” appears nowhere in Respondent’s “Max Ertem” name. Respondent does not have permission, license, authority, assignment or any other right to use Complainant’s DUCHATEAU mark in the disputed domain name. Respondent is using the disputed domain name to divert Internet users to a website that offers goods or services that compete with those offered by Complainant under its marks. Respondent’s disputed domain name automatically redirects Internet users to <cheaperfloors.com>, which then causes users to be redirected to third party sites for “price quotes” and additional information on the products being offered. Presumably, Respondent profits from “click-through” fees or direct business from customers expecting to find Complainant’s DUCHATEAU flooring. When Complainant asked Respondent to stop using the disputed domain name, Respondent offered to sell Complainant the disputed domain name for $25,000, which is greatly in excess of any actual “out-of-pocket” costs of Respondent and is a completely unreasonable price. Further, when one performs a “Google” search for Respondent’s website itself, a note comes up offering to sell the website for $4,000. Respondent’s disputed domain name disrupts Complainant’s business as consumers who reach Respondent’s website are immediately and unwittingly redirected to a site which is completely unaffiliated with Complainant and which advertises and promotes other competing brands and products in direct competition with Complainant.
Respondent registered the <duchateaufloor.com> domain name on March 16, 2011.
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, B&M Noble Co. d.b.a. Noble Hardwoods, Inc., is a manufacturer and distributor of certain brands of flooring, including engineered wood flooring sold under the trademarked brand name DUCHATEAU. Complainant has manufactured and distributed DUCHATEAU wood flooring throughout the United States and internationally for several years and operates the website <duchateaufloors.com> to assist in marketing the DUCHATEAU brand and flooring. Complainant owns a trademark registration with the USPTO for the DUCHATEAU mark (Reg. No. 3,616,735, registered May 5, 2009). Complainant’s trademark registration with the USPTO is sufficient to establish rights in the DUCHATEAU mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <duchateaufloor.com> is confusingly similar to Complainant’s DUCHATEAU mark as it incorporates the mark in its entirety and merely adds the descriptive term “floor.” The term “floor” is related to Complainant’s product offerings under the DUCHATEAU mark. The addition of a descriptive term does not distinguish Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Respondent has added the gTLD “.com” to the end of the disputed domain name. The addition of a gTLD is irrelevant under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Therefore, the Panel finds confusing similarity between Respondent’s <duchateaufloor.com> and Complainant’s DUCHATEAU mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the disputed domain name pursuant to the Respondent’s WHOIS information in connection with the disputed domain name. The WHOIS information identifies “Max Ertem” as the registrant of the disputed domain name, which does not contain the phrase “Duchateau” anywhere. Respondent does not have permission, license, authority, assignment or any other right to use Complainant’s DUCHATEAU mark in the disputed domain name. Respondent has not provided any evidence showing that it is commonly known by the disputed domain name. Therefore, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is using the disputed domain name to divert Internet users to a website that offers goods or services that compete with those offered by Complainant under its marks. Respondent’s disputed domain name automatically redirects Internet users to <cheaperfloors.com>, Respondent’s website. After Internet users are directed to <cheaperfloors.com>, they are then redirected to third party sites for “price quotes” and additional information on the products being offered via links displayed on Respondent’s resolving website. Respondent’s third party site includes links to “Provenza,” “Olde Savannah Flooring,” “Provence Series,” “Navarre Timeless Wood Floors,” and others. Respondent’s use of the disputed domain name to redirect Internet users to Complainant’s competitors is 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 H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant asserts that when it asked Respondent to stop using the disputed domain name, Respondent offered to sell Complainant the disputed domain name for $25,000, which is greatly in excess of any actual “out-of-pocket” costs of Respondent and is a completely unreasonable price. When one performs a “Google” search for Respondent’s website itself, a note comes up offering to sell the website for $4,000. Respondent intended to use the disputed domain name to attract Complainant’s attention and attempt to extort an unreasonable price for the domain name. Respondent’s attempt to sell the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Respondent’s disputed domain name disrupts Complainant’s business as consumers who reach Respondent’s website are immediately and unwittingly redirected to a site which is completely unaffiliated with Complainant and which advertises and promotes other competing brands and products in direct competition with Complainant. Respondent is disrupting Complainant’s business by facilitating competition, showing bad faith registration and use under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Respondent’s use of the disputed domain name to attract Internet users to its commercial own website, from which it commercially benefits, evidences bad faith use and registration under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <duchateaufloor.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 17, 2012
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