Herman Miller, Inc. v. Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1412001597830
Complainant is Herman Miller, Inc. (“Complainant”), represented by Brian D. Wassom of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hermanmiller.net> (‘the Domain Name’) , registered with FABULOUS.COM PTY LTD.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panellist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 31, 2014; the National Arbitration Forum received payment on December 31, 2014.
On January 4, 2015, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <hermanmiller.net> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. 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 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2015 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@hermanmiller.net. Also on January 6, 2015, 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 February 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne 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
Complainant's submissions can be summarized as follows:
Complainant is a well-known manufacturer of furniture sold in the United States and more than one hundred countries worldwide. The HERMAN MILLER name has been used since 1923. The company is often referred to in popular culture and has received a number of awards for excellence and achievement. It is famous and was famous before the Respondent registered the Domain Name in 2005.
The Complainant owns US trade mark registrations for HERMAN MILLER for furniture and related goods and services. The Domain Name is confusingly similar to this mark incorporating this mark in its entirety coupled with the gTLD .net which is of no consequence to the Policy.
For much of the nine years that the Respondent owned the Domain Name the web site linked to it has consisted of nothing more than a series of links to other commercial web sites, many of them furniture related and competitors of the Complainant. The Respondent must have had an awareness of the Complainant and its rights.
Since December 2014 the Domain Name now redirect visitors to a page owned by Trellian Software which in turns redirect to Sit4less.com, an authorised affiliate of the Complainant, although the Complainant has no information linking Sit4Less.com to the Domain Name. Respondent continues to monetise the Domain Name by redirecting Internet traffic to commercial destinations of its choosing. Respondent is using the Domain Name to intentionally divert, for commercial gain, Internet users to one or more competing sites by creating a likelihood of confusion with the Complainant and the HERMAN MILLER mark as to the source, sponsorship, affiliation and endorsement of the website attached to the Domain Name. The financial gain is achieved by selling sponsored advertising or from collective click through or referral revenues.
Respondent's only use of the Domain Name is in an infringing manner. Even if Respondent has a legitimate business in providing services for owners of HERMAN MILLER products, which does not appear to be the case, this would not legitimize Respondent’s selection of a domain name which is calculated to cause confusion and trade on Complainant’s goodwill.
Respondent's registration of the Domain Name constitutes bad faith under Sections 4(b) (iii) and (iv) of the Policy. HERMAN MILLER has no meaning other than the Complainant's strong and famous mark.
The Respondent has been the Respondent in at least 41 prior UDRP arbitrations before an NAF panel and 12 before WIPO that resulted in transfer. All of these involved variations on famous brand names owned by others.
Respondent has offered the Domain Name for sale.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns US trade mark registrations for HERMAN MILLER for furniture and related goods and services with first use recorded as 1923.
The web site linked to the Domain Name has been pointed to a series of links to other commercial web sites, many of them furniture related and competitors of the Complainant.
The Domain Name has been offered for sale.
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.”).
Identical or Confusingly Similar
The Domain Name consists of the Complainant's HERMAN MILLER mark and the gTLD .net. Since the gTLD .net does not serve to distinguish the Domain Name from the HERMAN MILLER mark the Panel holds that the Domain Name is identical for the purposes of the Policy with a mark in which the Complainant has rights. See Red Hat Inc v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant’s red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Respondent has not responded and given any reasons for its registration and use of the Domain Name which equates to the Complainant’s registered mark. There is no indication that the Respondent is commonly known by the Domain Name, is using it for a fair non-commercial purpose or is licensed to use the Complainant’s mark. Instead the Domain Name has been used to link to a pay-per-click website linking to other third party commercial web sites and competitors of the Complainant. The Panel notes Disney Enters. Inc. v Dot Stop FA 145227 (Nat Arb. Forum Mar 17 2003) where the Panel concluded that the respondent's diversionary use of the complainant's mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites was neither a bona fide offering of goods and services nor a legitimate non-commercial or fair use of the disputed domain names. The Panel thus concludes that there is no rights or legitimate interests in the Domain Name under para 4 (c) (i) or (iii) of the Policy.
Further, the Domain Name has been offered for sale for US$4950. There is no indication that the name HERMAN MILLER has any relevant meaning other than the trade mark of the Complainant. As such it appears that the Respondent has registered the Domain Name for the purpose of selling it for valuable consideration to the Complainant or its competitors in excess of its out of pockets costs amounting to bad faith registration and use under s4 (b) (i) of the Policy.
The Panellist also notes that the Respondent has been the subject of over 50 decisions in the UDRP where it has been found to be in bad faith and the domain names transferred. Given that the Domain Name is identical for the purposes of the Policy to the Domain Name it appears that the Respondent has registered the Domain Name to prevent the owner of the HERMAN MILLER trade mark from reflecting its mark in a corresponding domain name and there is a pattern of such conduct constituting bad faith under s4 (b) (ii) of the Policy.
In view of the above it is not necessary to consider the additional submission of the Complainant that the Domain Name has also been registered and used in bad faith under s4 (b) (iii) to disrupt the business of a competitor.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hermanmiller.net> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: February 10, 2015
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