Highmark Smart, Reliable Seating, Inc. v. Wozniak & Co.
Claim Number: FA1305001499223
Complainant is Highmark Smart, Reliable Seating, Inc. (“Complainant”), represented by Yuo-Fong C. Amato of Gordon & Rees, LLP, California, USA. Respondent is Wozniak & Co. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <highmarkofficechair.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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 10, 2013; the National Arbitration Forum received payment on May 10, 2013.
On May 17, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <highmarkofficechair.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 May 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2013 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@highmarkofficechair.com. Also on May 22, 2013, 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 June 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
i. Respondent has not by chance decided to use the term HIGHMARK independent of Complainant.
ii. Respondent is using the <highmarkofficechair.com> domain name to purportedly sell Complainant’s products, without Complainant’s permission. Respondent is posing as Complainant, claiming to sell Complainant’s products using Complainant’s photos of its own products.
i. Respondent is posing as Complainant, using Complainant’s trade name, address, phone number, facsimile number, descriptions, and photographs of products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 is a national manufacturer and seller of commercial seating products for corporate, educational, healthcare, and GSA environments. Complainant argues that it operates <highmarkergo.com> and has been offering seating products for sale through that website since June 2, 1998. The Panel notes that while Complainant does not own a registered trademark with the United States Patent and Trademark Office (“USPTO”) or another trademark agency, the Panel finds that Complainant’s registration of a trademark with a trademark agency is unnecessary under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant contends that its HIGHMARK trademark has been used in commerce in connection with seating products exclusively and continuously since November 1, 1982. The Panel notes that Complainant registered the HIGHMARK SMART, RELIABLE SEATING, INC. business name with the California Secretary of State on November 1, 1982. Complainant argues that throughout the decades, Complainant’s HIGHMARK trademark has garnered consumer goodwill and consumers have come to associate Complainant’s HIGHMARK trademark with intuitive, clean, affordable, green, simple, and ergonomic seating products, as well as the excellent customer service that Complainant provides in association with those seating products. Therefore, the Panel finds that Complainant has established common law rights in the HIGHMARK mark through its Secretary of State registration and continuous use of the HIGHMARK mark under Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant contends that the domain name is confusingly similar to a trademark in which Complainant has rights. Complainant argues that the only difference between the HIGHMARK trademark and the domain name <highmarkofficechair.com> are the terms “office” and “chair” and the “.com” gTLD. The Panel finds that Respondent’s addition of generic terms to a domain name does not differentiate Respondent’s domain name from Complainant’s HIGHMARK mark under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel holds that Respondent’s addition of a gTLD to the domain name is inconsequential to a Policy ¶ 4(a)(i) determination. 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). Accordingly, the Panel concludes that Respondent’s <highmarkofficechair.com> domain name is confusingly similar to Complainant’s HIGHMARK 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 has not by chance decided to use the term HIGHMARK independent of Complainant. Complainant asserts that it has not authorized Respondent to pose as Respondent nor to use the HIGHMARK trademark in this manner. The Panel notes that the WHOIS record indicates that “Wozniak & Co.” is the registrant of the disputed domain name. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name. Consequently, the Panel determines that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims that Respondent is using the <highmarkofficechair.com> domain name to purportedly sell Complainant’s products, without Complainant’s permission. Complainant asserts that Respondent is posing as Complainant, claiming to sell Complainant’s products using Complainant’s photos of its own products. Id. Complainant argues that this infringing site came to Complainant’s attention on or around April 9, when a customer called Complainant, asking for a status of an order she placed through <highmarkofficechair.com> but never received. Complainant asserts that Respondent was not only using the HIGHMARK trademark but posing as Complainant, taking orders from customers but failing to deliver them, thereby damaging Complainant’s hard-earned reputation and goodwill in its HIGHMARK mark. The Panel determines that Respondent’s use of the domain name to pass itself off as Complainant to sell Complainant’s products does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant has proven this element.
Complainant contends that Respondent is posing as Complainant, using Complainant’s trade name, address, phone number, facsimile number, descriptions, and photographs of products. Complainant argues that Respondent is posing as Complainant, claiming to sell Complainant’s products using Complainant’s photos of its own products. Complainant claims that Respondent is taking orders and money from consumers and then failing to deliver any products, leaving consumers to contact and blame Complainant for having failed to deliver the consumer’s orders. The Panel finds that Respondent’s attempt to pass itself off as Complainant to sell Complainant’s products demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
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 <highmarkofficechair.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 25, 2013
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