Stanley Furniture Company, Inc. v. Cellular Gadget
Claim Number: FA1211001471350
Complainant is Stanley Furniture Company, Inc. (“Complainant”), represented by William N. Federspiel of McGuire Woods LLP, Virginia, USA. Respondent is Cellular Gadget (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youngamericacribs.org>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2012; the National Arbitration Forum received payment on November 14, 2012.
On November 16, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <youngamericacribs.org> 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 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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@youngamericacribs.org. Also on November 16, 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 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Complainant contends that it owns the YOUNG AMERICA mark and uses the name in relation to its well-known line of children’s and youth furniture, which includes cribs and other children’s bedroom furniture. Complainant further asserts that it has sold furniture under its YOUNG AMERICA mark for more than thirty years, and has established an excellent reputation for its mark. Complainant also asserts that it registered the YOUNG AMERICA mark with the United States Patent and Trademark Office (USPTO) (Reg. No. 2,500,012 registered October 23, 2001). Complainant argues that Respondent wrongfully registered the <youngamericacribs.org> domain name on April 15, 2012 and improperly uses the domain name to link to a website that displays information about Complainant’s YOUNG AMERICA cribs. The resolving website also includes pay-per-click advertisements, some of which lead to competitors of Complainant. Respondent is not affiliated with Complainant in any way and does not have authorization to use the YOUNG AMERICA mark. Complainant states that the <youngamericacribs.org> domain name is confusingly similar to Complainant’s mark, that the Respondent does not possess rights or legitimate interests in the disputed domain name and is not commonly known by the disputed domain name. Complainant also contends that the Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Complainant argues that the Respondent intentionally attempted to attract Internet users for Respondent’s commercial gain and registered the <youngamericacribs.org> domain name in bad faith. Complainant asserts that the Respondent disrupts Complainant’s business by attracting customers to its website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant Stanley Furniture Company, Inc. is a USA corporation with its place of business in Stanleytown, VA, USA. Complainant was founded in 1924 and is one of the largest, most respected case manufacturers in the USA. Complainant was the first entity to introduce youth branded furniture in the USA and has invested considerable resources in developing substantial consumer goodwill over the past several decades. Stanley promotes its YOUNG AMERICA brand through sales and advertising in real space as well as online through its website at <youngamerica.com>.
Respondent Cellular Gadget list its contact information as Sugar Land, TX, USA. The Respondent registered the domain name with a registrar located in Scottsdale, AZ, USA on April 15, 2012.
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 asserts rights in its YOUNG AMERICA mark due its extensive use of the mark for more than 30 years and the registration of the mark with the USPTO (Reg. No. 2,500,012 registered October 23, 2001). The Panel finds that Complainant’s rights in its YOUNG AMERICA mark are secured through its USPTO registration for the purposes of Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (complainant demonstrated rights in its mark through its trademark registration with the USPTO.).
Complainant alleges that the <youngamericacribs.org> domain name is confusingly similar to its YOUNG AMERICA mark, citing the use of the entire YOUNG AMERICA mark in the domain name with the addition of the generic word “crib” and the generic top-level domain (“gTLD”) “.org.” The Panel notes that the word “crib” is actually descriptive of Complainant’s business, and the domain name also does not include the space between the mark’s words. The Panel finds that by using Complainant’s mark without the spaces, and with the addition of a descriptive word and a gTLD, the <youngamericacribs.org> domain name is confusingly similar to Complainant’s YOUNG AMERICA mark pursuant to Policy ¶ 4(a)(i). See Bausch & Lomb Inc. v. Yatoyama, FA 1340435 (Nat. Arb. Forum Sept. 23, 2010) (stating that the addition of the gTLD “.org” to the complainant’s mark creates a confusingly similar domain name); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant alleges that Respondent is not commonly known by the <youngamericacribs.org> domain name, as demonstrated by the WHOIS information, which does not show that Respondent is known by the YOUNG AMERICA mark. The Panel notes that the WHOIS information identifies “Cellular Gadget” as the registrant, and concludes that Respondent is not commonly known by the <youngamericacribs.org> domain name under Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Complainant contends that Respondent fails to make a bona fide offering of goods or services under the <youngamericacribs.org> domain name and does not use the domain in a legitimate noncommercial or fair manner. Complainant argues that Respondent uses the domain name to host a website that displays information related to the YOUNG AMERICA brand crib, and Respondent receives a profit by posting pay-per-click hyperlinks at the site, some of which resolve to Complainant’s competitors websites. The Panel finds that because Respondent uses the <youngamericacribs.org> domain name to offer competing hyperlinks to website visitors, Respondent does not make 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (concluding that the respondent’s use of the complainant’s mark to redirect Internet users to a website that featured a series of links, some of which resolved to the complainant’s competitors’ websites was not a bona fide offering of goods or services.).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights of legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent attempts to disrupt its business by using the <youngamericacribs.org> domain name to attract visitors to its website by using Complainant’s YOUNG AMERICA mark and displaying hyperlinks to competitors’ products. The Panel concludes that Respondent’s disruptive use of the domain name demonstrates bad faith registration and use under Policy ¶ 4(b)(iii) due to the competing hyperlinks displayed at the resolving website. 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).”).
Complainant further contends that Respondent uses the confusingly similar disputed domain name to lure visitors to the resolving website in order to generate pay-per-click revenue by redirecting those visitors to Complainant’s competitors. The Panel finds that Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv) is demonstrated by Respondent’s efforts to attract Internet consumers to its own website in order to make a commercial profit by offering hyperlinks to business in competition with Complainant. 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).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <youngamericacribs.org> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 31, 2012
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