Griffin Technology, Inc. v. Griffin Technology
Claim Number: FA1502001605999
Complainant is Griffin Technology, Inc. (“Complainant”), represented by Martha B. Allard of Bass, Berry & Sims PLC, Tennessee, USA. Respondent is Griffin Technology (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <griffinsale.com>, registered with 1API GmbH.
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 Forum electronically on February 20, 2015; the Forum received payment on February 20, 2015.
On February 23, 2015, 1API GmbH confirmed by e-mail to the Forum that the <griffinsale.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 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@griffinsale.com. Also on February 23, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 24, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Complainant uses the GRIFFIN mark to distinguish itself as a designer, manufacturer, and seller of consumer electronics and accessories for computers, smart-phones, tablets, mobile devices and wearable technology. Complainant has registered the GRIFFIN mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,556,144, registered January 6, 2009), which establishes rights in the mark.
2. Complainant contends that the <griffinsale.com> domain name is confusingly similar to the GRIFFIN mark as it fully incorporates the mark and simply adds the descriptive term “sale.”
3. Complainant contends that Respondent is not commonly known by the <griffinsale.com> domain name or any variation of the GRIFFIN mark. Further, Respondent is not making a bona fide offering of goods or services through the disputed domain name, nor a legitimate noncommercial or fair use. Instead, Complainant asserts that Respondent is using the <griffinsale.com> domain name to sell possibly counterfeit goods but at least infringing goods under marks identical to those registered and used by Complainant. Additionally, Respondent has been given no authorization or license by Complainant to register or use the <griffinsale.com> domain name.
4. Respondent is using the disputed domain name to divert consumers from Complainant’s website to the disputed domain name for Respondent’s personal gain, by creating a likelihood of confusion as to the source, sponsorship, affiliation with, or endorsement by Complainant.
5. Respondent has also registered two other domain names that are currently the subject of complaints filed by Complainant through the National Arbitration Forum. Additionally, Respondent’s offering of at least infringing, and likely counterfeit, goods under the GRIFFIN mark through the <griffinsale.com> domain name evidences Respondent’s actual knowledge of the mark.
6. The <griffinsale.com> domain name was registered on January 5, 2015.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GRIFFIN mark. Respondent’s domain name is confusingly similar to Complainant’s GRIFFIN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <griffinsale.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 uses the GRIFFIN mark to distinguish itself as a designer, manufacturer, and seller of consumer electronics and accessories for computers, smart-phones, tablets, mobile devices and wearable technology. Complainant has registered the GRIFFIN mark with the USPTO (e.g., Reg. No. 3,556,144, registered January 6, 2009). Complainant’s registration of the GRIFFIN mark with the USPTO demonstrates rights in the mark for purposes of Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Complainant argues that the <griffinsale.com> domain name is confusingly similar to the GRIFFIN mark as the domain name incorporates the mark in its entirety and merely adds the descriptive term “sale.” The Respondent also adds the generic top-level domain (“gTLD”) “.com.” Such alterations to a mark are not sufficient to distinguish the mark under a Policy ¶ 4(a)(i) analysis. For example, in Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005), the panel held that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i). In this case, the additions of both the word “sale” and the gTLD “.com” do not sufficiently alter the disputed domain name to negate a finding of confusing similarity 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 names. 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 first asserts that Respondent is not commonly known by the <griffinsale.com> domain name. Further, Complainant states it has never given Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks. Although the WHOIS information lists “Griffin Technology” as registrant, the Respondent has not submitted any additional evidence for the Panel’s consideration. Even if the WHOIS information lists a respondent’s name as similar or identical to the complainant’s, a respondent cannot be deemed “commonly known by” the disputed domain name where there is no additional information in the record provided. See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”). Because Respondent has not submitted any affirmative evidence to substantiate that it has been commonly known by the <griffinsale.com> domain name, there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further alleges that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). Complainant has shown that Respondent is using the resolving website to sell at least infringing, and likely counterfeit, goods. Such use of a confusingly similar domain name is not a bona fide offering of goods or services, nor is it a legitimate noncommercial of fair use. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Therefore, the Panel agrees that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has not been making 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) because the resolving website purports to sell counterfeit goods.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges it has submitted two other complaints against the Respondent for similar behavior. A respondent involved in multiple UDRP cases with the same complainant shows a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”). The Panel agrees that Respondent’s registration of GRIFFINSURVIVOR.COM and GRIFFINSURVIVORSHOP.COM in addition to the <griffinsale.com> domain name at issue here is sufficient evidence of a bad faith pattern of registration per Policy ¶ 4(b)(ii).
Next, Complainant contends that Respondent is using the <griffinsale.com> domain name to commercially benefit from the goodwill associated with the GRIFFIN mark. Use of a domain name to confuse Internet users as to the source, sponsorship, affiliation with, or endorsement by Complainant in an attempt to commercially benefit from that confusion constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion). The Panel agrees that Respondent’s use of the <griffinsale.com> domain name to commercially benefit from the sale of counterfeit goods is an example of Policy ¶ 4(b)(iv) bad faith.
Finally, Complainant argues that Respondent had actual knowledge of the GRIFFIN mark when registering the disputed domain name. Evidence of bad faith exists where the respondent registered the disputed domain name with actual knowledge of the complainant and its trademark rights. The use of a domain name to sell counterfeit goods bearing the infringed mark provides sufficient basis to establish a respondent’s actual knowledge. See Mycoskie, LLC v. William Kelly, FA 1488105 (Nat. Arb. Forum Apr. 23, 2013) (“While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights.”). Thus, this Panel agrees that Respondent in this case had actual knowledge within the meaning of Policy ¶ 4(a)(iii) bad faith because of its attempt to sell counterfeit versions of Complainant’s products.
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 <griffinsale.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 26, 2015
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