Steelcase Inc. v. Justin Wills / Vipra Inc
Claim Number: FA1402001545345
Complainant is Steelcase Inc. (“Complainant”), represented by Lisa R. Harris, Michigan, USA. Respondent is Justin Wills / Vipra Inc (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <steelcaseleapchair.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2014; the National Arbitration Forum received payment on February 25, 2014.
On February 25, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <steelcaseleapchair.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 February 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 2014 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@steelcaseleapchair.com. Also on February 26, 2014, 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 March 24, 2014, 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
a) Complainant is a global leader in the office furniture industry. Complainant has been in business since 1912 and has nearly 10,000 employees worldwide, with revenues of $2.75 billion in 2012.
b) Complainant has rights in the STEELCASE mark, used in connection with office furniture. Complainant owns trademark registrations for the STEELCASE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 534,526 registered December 12, 1950)
c) Respondent’s <steelcaseleapchair.com> domain name is confusingly similar to Complainant’s STEELCASE mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “chair,” Complainant’s “LEAP” mark (USPTO Reg. No. 2,365,290 registered July 4, 2000), and the generic top-level domain (“gTLD”) “.com.”
d) Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its STEELCASE mark in any way. Further, the WHOIS information identifies Respondent as “Justin Willis, Vipra Inc.”
e) The <steelcaseleapchair.com> domain name resolves to a website featuring third-party links to Complainant’s competitors.
f) Respondent is attempting to pass itself off as Complainant by prominently displaying a “Steelcase Leap Chair” banner across the top of the webpage and selling Complainant’s products through third-party suppliers.
g) Respondent registered and is using the <steelcaseleapchair.com> domain name in bad faith.
h) Respondent uses the <steelcaseleapchair.com> domain name to resolve to a website featuring third-party hyperlinks, which resolve to Complainant’s competitors. Respondent’s use of the disputed domain name disrupts Complainant’s business.
i) Respondent is profiting through a likelihood of confusion. Respondent had knowledge of Complainant’s mark prior to registering the <steelcaseleapchair.com> domain name because Respondent provided links to Complainant’s competitors on the resolving website thereby indicating Respondent’s familiarity with Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the STEELCASE mark. Respondent’s domain name is confusingly similar to Complainant’s STEELCASE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <steelcaseleapchair.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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 it has rights in the STEELCASE mark, used in connection with office furniture. Complainant owns trademark registrations for the STEELCASE mark with the USPTO (e.g., Reg. No. 534,526 registered December 12, 1950). Therefore, the Panel finds that Complainant has rights in the STEELCASE mark within the meaning of Policy ¶ 4(a)(i) because Complainant owns a valid trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s <steelcaseleapchair.com> domain name is confusingly similar to Complainant’s STEELCASE mark. Complainant observes that the disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “chair,” Complainant’s “LEAP” mark (USPTO Reg. No. 2,365,290 registered July 4, 2000), and the gTLD “.com.” First, addition of a generic term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Next, combining two trademarks in a disputed domain name does not sufficiently differentiate either trademark from the disputed domain name. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name). Finally, the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <steelcaseleapchair.com> domain name is confusingly similar to Complainant’s STEELCASE mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent does not have any rights or legitimate interests in the <steelcaseleapchair.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its STEELCASE mark in any way. Further, Complainant notes that the WHOIS information identifies Respondent as “Justin Willis, Vipra Inc.” It is proper to consider the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence in the record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent has not been authorized by Complainant to use the STEELCASE mark, and neither the WHOIS information nor the other evidence in the record indicates otherwise, the Panel finds that Respondent is not commonly known by the <steelcaseleapchair.com> domain name under Policy ¶ 4(c)(ii).
Complainant claims that the <steelcaseleapchair.com> domain name resolves to a website featuring third-party links to Complainant’s competitors. The links on the resolving website include “Living Room Furniture,” “Chairs,” and “Miscellaneous Office Furniture.” Using a confusingly similar domain name to promote links of a complainant’s competitor does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii) because the <steelcaseleapchair.com> domain name resolves to a website featuring third-party links to Complainant’s competitors.
Complainant alleges that Respondent is attempting to pass itself off as Complainant by prominently displaying a “Steelcase Leap Chair” banner across the top of the webpage and selling Complainant’s products through third-party suppliers. In H-D v. Private Whois Service, FA 1328876 (Nat. Arb. Forum July 12, 2010), the panel found that use of the complainant’s Harley Davidson logo, mark, and a similar color scheme to the one used by the complainant was sufficient to find that the respondent was attempting to pass itself off as the complainant. Further, passing off is evidence of a respondent’s lack of rights and legitimate interest in the disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Therefore, because the Panel finds that Respondent is attempting to pass itself off as Complainant based on sufficient evidence of Respondent’s use of Complainant’s logo, mark, and color scheme on the website connected to the <steelcaseleapchair.com> domain name, the Panel holds that this finding provides further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and is using the <steelcaseleapchair.com> domain name in bad faith. Complainant observes that Respondent uses the <steelcaseleapchair.com> domain name to resolve to a website featuring third-party hyperlinks, which resolve to Complainant’s competitors. Complainant states that Respondent’s use of the disputed domain name disrupts Complainant’s business. Using a confusingly similar domain name to provide links to a complainant’s competitors demonstrates bad faith under Policy ¶ 4(a)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent registered and is using the <steelcaseleapchair.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent is using the disputed domain name to promote Complainant’s competitors.
Complainant claims that Respondent is profiting through a likelihood that Internet users will mistakenly believe that Complainant is behind the goods offered for sale through the domain name’s resolving website. The evidence demonstrates Respondent’s use of the domain name to sell competing goods; accordingly, there is sufficient evidence for a finding of Policy ¶ 4(b)(iv) bad faith. See, e.g., Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”)
Complainant claims Respondent had knowledge of Complainant’s mark prior to registering the <steelcaseleapchair.com> domain name because Respondent provided links to Complainant’s competitors on the resolving website thereby indicating Respondent’s familiarity with Complainant’s business. The Panel agrees that it is apparent that Respondent had knowledge of Complainant’s mark at the time Respondent registered the disputed domain name and therefore concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds 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 <steelcaseleapchair.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 7, 2014
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