Steelcase Inc. v. mark silver / steelcaseoffice
Claim Number: FA1412001593148
Complainant is Steelcase Inc. (“Complainant”), represented by Lisa R. Harris, Michigan, USA. Respondent is mark silver / steelcaseoffice (“Respondent”), Michigan USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <steelcaseoffice.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 3, 2014; the National Arbitration Forum received payment on December 3, 2014.
On December 4, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <steelcaseoffice.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 December 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@steelcaseoffice.com. Also on December 4, 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 December 31, 2014, 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
i. Complainant owns the STEELCASE mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 534,526, registered December 12, 1950).
ii. Complainant uses the STEELCASE mark in connection with its business as a retailer of office furniture.
iii. Complainant operates online through the <steelcase.com> domain name, which was registered on February 14, 1995.
i. Policy ¶ 4(a)(i)
1. The <steelcaseoffice.com> domain name is confusingly similar to Complainant’s STEELCASE mark, because Respondent has simply added the descriptive word “office” to the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <steelcaseoffice.com> domain name. Complainant has not licensed or otherwise permitted Respondent to use the STEELCASE mark.
3. Respondent does not provide any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name.
4. The disputed domain name resolves to an error page, which means that Respondent is not making an active use of it.
iii. Policy ¶ 4(a)(iii)
1. The disputed domain name resolves to an error page, which disrupts Complainant’s business.
2. Respondent has failed to make an active use of the disputed domain name.
3. Due to Complainant’s trademark registrations and the registration of a nearly identical domain name, Respondent must have had constructive or actual knowledge of Complainant’s rights in the STEELCASE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Steelcase Inc. of Grand Rapids, MI, USA. Complainant is the owner of numerous domestic and foreign registrations for the mark STEELCASE which it has been using for nearly 100 years in connection with the provision of goods and services in the office furniture industry. Complainant operates in real space in over 15 international locations and in cyberspace at its site <steelcase.com> which it first registered approximately 20 years ago.
Respondent is identified as mark silver / steelcaseoffice, Grand Rapids, MI, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Respondent registered the disputed domain name on or about April 25, 2007.
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 uses the STEELCASE mark in connection with its business as a retailer of office furniture. Complainant claims to own the STEELCASE mark through its trademark registration with the USPTO (e.g., Reg. No. 534,526, registered December 12, 1950). Complainant argues that such registrations are sufficient to establish rights in the STEELCASE mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decision. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). The Panel here finds that Complainant’s trademark registrations the USPTO are sufficient to satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s STEELCASE mark, because Respondent has merely added the generic term “office” to the mark. The Panel notes that the disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com”. Prior panels have found that a domain name differing from a mark by only adding a single generic term does not escape the realm of confusing similarity and that the affixation of a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See Mead Johnson & Company, LLC v. Chau, FA 1497581 (Nat. Arb. Forum Jun. 18, 2013) (concluding that the addition of the generic term “coupons” and a gTLD did not remove the disputed domain name from the realm of confusing similarity). The Panel here finds that Respondent’s <steelcaseoffice.com> domain name is confusingly similar to Complainant’s STEELCASE mark pursuant 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), 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.
It is Complainant’s position that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the <steelcaseoffice.com> domain name. The Panel notes that the WHOIS information identifies “mark silver” of “steelcaseoffice” as the registrant of the disputed domain name. Further, Complainant states that Respondent is neither licensed nor authorized to use the STEELCASE mark. The Panel notes that Respondent has failed to submit any response to rebut Complainant’s contentions. the Panel finds that Respondent is not commonly known by the <steelcaseoffice.com> domain name pursuant to Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant claims that the disputed domain name currently resolves to an error page, which means that Respondent has failed to make an active use of it. Prior panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name where the respondent does not make an active use of the domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel here finds that Respondent’s failure to make an active use of the disputed domain name is evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
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 <steelcaseoffice.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 14, 2015
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