Florida Tile, Inc. v. Siesta Pebble Pool Interiors
Claim Number: FA1206001448792
Complainant is Florida Tile, Inc. (“Complainant”), represented by Tiffany D. Gehrke of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Siesta Pebble Pool Interiors (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <floridapooltile.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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2012; the National Arbitration Forum received payment on June 14, 2012.
On Jun 15, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <floridapooltile.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 June 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 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@floridapooltile.com. Also on June 18, 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 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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’s Allegations
Complainant manufactures and distributes porcelain and ceramic tiles, as well as tiles made of stone, glass, and metal. Complainant operates under the FLORIDA TILE mark, which it registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,023,180 on December 17, 1996). Complainant does business in the United States and globally, and spends a substantial sum on advertising and product promotion. Complainant uses the domain name <floridatile.com> to host a website for its business, where it uses the FLORIDA TILE mark prominently. Complainant is continuously recognized by environmental organizations for its commitment to environmental sustainability.
Respondent registered the <floridapooltile.com> domain name on August 22, 2011. The <floridapooltile.com> domain name resolves to a website that advertises products similar to those sold by Complainant. Respondent’s disputed domain name is confusingly similar to Complainant’s mark and misdirects Internet users who seek Complainant’s products to Respondent’s website for Respondent’s commercial profit. Respondent is not commonly known by the <floridapooltile.com> domain name and does not use the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Respondent’s knowledge of Complainant’s rights in the mark demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name. Respondent registered and uses the <floridapooltile.com> domain name in bad faith by intentionally attempting to disrupt Complainant’s business and selling competing goods at the resolving website. Respondent attempts to attract consumers to its webpage for commercial gain and had knowledge of Complainant’s rights in the FLORIDA TIILE mark and its <floridatile.com> domain. Respondent attempts to disrupt Complainant’s business through its use of the disputed domain name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 owns trademark rights for its FLORIDA TILE mark through its registration of the mark with the USPTO (Reg. No. 2,023,180 on December 17, 1996). Complainant’s trademark registration with the USPTO demonstrates Complainant’s rights in the FLORIDA TILE mark pursuant to Policy ¶ 4(a)(i). See 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.”).
Complainant alleges that the <floridapooltile.com> domain name is confusingly similar to its FLORIDA TILE mark. Complainant argues that the disputed domain name includes the descriptive term “pool,” which describes an aspect of Complainant’s business. While Complainant does not provide specifics as to how the term “pool” describes an aspect of its business, this Panel will accept that representation, since it has not been refuted by Respondent, which has submitted no response to the complaint. The Panel thus determines that the addition of the word “pool” in the <floridapooltile.com> domain name is not sufficient to prevent its confusing similarity to Complainant’s FLORIDA TILE mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark did not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent is not commonly known by the <floridapooltile.com> domain name, as evidenced by the WHOIS information for the disputed domain name, which identifies “Siesta Pebble Pool Interiors” as the registrant. Complainant argues that the name “Siesta Pebble Pool Interiors” does not bear a resemblance to the <floridapooltile.com> domain name. The Panel finds that Respondent’s WHOIS information does not provide evidence that Respondent is commonly known by the <floridapooltile.com> domain name and therefore determines that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant argues that Respondent operates a website at the <floridapooltile.com> domain name that sells goods in direct competition with Complainant’s goods, and Respondent attempts to divert users from Complainant’s website in order to market its own competing goods. This Panel finds that by selling products in competition with Complainant, Respondent does not use the disputed domain name for 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 Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant further alleges that Respondent must have had actual knowledge of Complainant’s prior use of the FLORIDA TILE mark because Respondent is in the tile industry with Complainant. Since Complainant and Respondent operate in the same industry, this Panel infers that Respondent had actual knowledge of Complainant’s rights, and registered the <floridapooltile.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See, e.g., SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001)(“Given the competitive relationship between complainant and respondent, the Panel finds that respondent was aware of complainant’s mark before registering the domain names”).
Complainant alleges that Respondent’s use of the disputed domain name causes disruption to Complainant’s business because Respondent sells competing products at the resolving website. The Panel finds that by selling tile products similar to those that Complainant sells, Respondent’s use of the <floridapooltile.com> domain name disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant claims that Respondent makes a commercial profit by using a confusingly similar domain name to market its competing goods. Complainant alleges that Respondent intentionally attracts customers to its website for commercial gain by creating confusion as to Complainant’s sponsorship of the webpage. The Panel finds that pursuant to Policy ¶ 4(b)(iv), Respondent registered and uses the <floridapooltile.com> domain name in bad faith by attracting Internet users with a confusingly similar domain name and profiting from the confusion by selling competing goods.
Thus, Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <floridapooltile.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: July 31, 2012
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