Grohe AG v. Domain Name Proxy, LLC
Claim Number: FA1101001368304
Complainant is Grohe AG (“Complainant”), represented by Kourtney Mulcahy of Hinshaw & Culbertson LLP, Illinois, USA. Respondent is Domain Name Proxy, LLC (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <groheproducts.com>, registered with Basic Fusion, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 18, 2011; the National Arbitration Forum received payment on January 19, 2011.
On January 21, 2011, Basic Fusion, Inc. confirmed by e-mail to the National Arbitration Forum that the <groheproducts.com> domain name is registered with Basic Fusion, Inc. and that Respondent is the current registrant of the name. Basic Fusion, Inc. has verified that Respondent is bound by the Basic Fusion, Inc. 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 January 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2011 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@groheproducts.com. Also on January 27, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 February 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <groheproducts.com> domain name is confusingly similar to Complainant’s GROHE mark.
2. Respondent does not have any rights or legitimate interests in the <groheproducts.com> domain name.
3. Respondent registered and used the <groheproducts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Grohe AG, is a leading manufacturer of faucets, kitchen and bath products. Complainant, located in Germany, owns the GROHE mark and uses the mark to promote and distribute its kitchen and bath plumbing fixtures globally. Complainant holds a trademark registration for the GROHE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,151,616 issued April 21, 1981).
Respondent, Domain Name Proxy, LLC, registered the <groheproducts.com> domain name on June 13, 2008. The disputed domain name resolves to a directory website featuring links to Complainant’s products and links to commercial sites in direct competition with Complainant’s business of selling faucets and other plumbing fixtures.
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."
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.”).
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.
Complainant correctly states that a complainant can establish rights in a mark through federal trademark registration. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Here, Complainant holds trademark registration for its GROHE mark with the USPTO (e.g. Reg. No. 1,151,616 issued April 21, 1981). The Panel therefore concludes that Complainant has demonstrated its rights in the GROHE mark through its federal trademark registration pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <groheproducts.com> domain name is confusingly similar to its GROHE mark. The disputed domain name uses Complainant’s mark in its entirety and merely adds the generic term “products” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a generic term does not distinguish the disputed domain name enough to prevent a finding of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The Panel also finds that the affixation of a gTLD does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”) The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s GROHE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant maintains that Respondent has no rights or legitimate interests in the <groheproducts.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel found that “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.” Here, Complainant has made a prima facie showing in support of its allegations against Respondent. Due to Respondent’s failure to submit a response to the Complaint, the Panel is allowed to assume that Respondent has no rights and legitimate interests under Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will first examine the record to determine whether Respondent has rights and legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <groheproducts.com> domain name. The WHOIS information identifies Respondent as “Domain Name Proxy, LLC,” which is not similar to the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii), as there is nothing in the record to indicate otherwise. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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 uses the <groheproducts.com> domain name to host a directory website featuring links for plumbing fixtures under Complainant’s GROHE mark and third-party links to Complainant’s competitors in the kitchen and bath plumbing industry. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to a website purportedly selling Complainant’s products but in reality linking users to Complainant’s competitors in the plumbing fixture industry 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
The Panel finds the Policy ¶ 4(a)(ii) has been met.
Complainant asserts that Respondent’s use of the <groheproducts.com> domain name disrupts its business. Respondent uses the disputed domain name to operate a website featuring commercial links to Complainant’s own products as well as Complainant’s competitors in the business of kitchen and bath plumbing fixtures. Internet users intending to purchase Complainant’s products may find Respondent’s website as result of the confusingly similar disputed domain name and end up purchasing similar products from one of Complainant’s competitors instead. The fact that some of these third-party links are displayed under Complainant’s mark makes this even more likely. The Panel finds that Respondent’s use of the disputed domain name does disrupt Complainant’s business which is evidence of bad faith use and registration under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Internet users searching for Complainant website who find Respondent’s website instead may become confused as to Complainant’s sponsorship of, or association with, the disputed domain name, resolving site, and featured links. The Panel infers that Respondent receives click-through fees from these commercial links. Respondent therefore attempts to profit from the confusion of Internet users through the receipt of click-through fees. The Panel finds that Respondent’s use of a confusingly similar disputed domain name to commercially gain constitutes bad faith use and registration under Policy ¶ 4(b)(iv). 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); Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <groheproducts.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 28, 2011
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