Herman Miller, Inc. v. Michael Scotter
Claim Number: FA1504001616097
Complainant is Herman Miller, Inc. (“Complainant”), represented by Douglas H. Siegel of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Michael Scotter (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hermamniller.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically April 23, 2015; the Forum received payment April 23, 2015.
On April 29, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <hermamniller.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 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@hermamniller.com. Also on April 29, 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 May 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in this Proceeding:
1. Policy ¶ 4(a)(i)
a. The HERMAN MILLER mark is an internationally recognized brand that provides furniture and furniture-related services to some 100 countries throughout the world.
b. Complainant has rights in the HERMAN MILLER mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 733,770, registered July 3, 1962).
c. Respondent’s disputed <hermamniller.com> domain name is confusingly similar to Complainant’s HERMAN MILLER mark. Respondent’s disputed domain name is identical to Complainant’s mark except for the transposing of the letters “m” and “n.”
2. Policy ¶ 4(a)(ii)
a. Respondent’s use of the disputed domain name is illegitimate and does not constitute a bona fide offering of goods or service or a legitimate noncommercial or fair use of the domain name.
3. Policy ¶ 4(a)(iii)
a. Respondent’s use of the disputed domain name disrupts Complainant’s business.
b. Respondent’s disputed domain name <hermamniller.com> creates a likelihood of confusion in the minds of Internet users, which Respondent uses for financial gain.
c. Respondent’s bad faith is evident from the use of an email address associated with the disputed domain name to fraudulently obtain funds from Complainant’s clients.
B. Respondent’s Contentions in this Proceeding:
1. The Panel notes that Respondent registered the disputed domain April 2, 2015.
2. Respondent did not submit a Response in this proceeding.
Complainant established that it has rights and legitimate interests in the mark contained in misspelled form in the disputed domain name.
Respondent has no such rights or legitimate interests in the mark and domain
name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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:
Complainant claims that the HERMAN MILLER mark is an internationally recognized brand that provides furniture and furniture-related services to citizens of some 100 countries throughout the world. To support this assertion Complainant included a list of awards Complainant received that recognize Complainant’s prominence in its industry. Complainant contends that it has rights in the HERMAN MILLER mark through its registration of the mark and other related marks with the USPTO. (Reg. No. 733,770, registered July 3, 1962). Registration with the USPTO is sufficient to demonstrate a Complainant’s rights in a mark. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO established rights in the BLOOMBERG mark). The Panel holds similarly; Complainant established its rights in the HERMAN MILLER mark pursuant to Policy ¶ 4(a)(i).
After asserting its rights in the HERMAN MILLER mark, Complainant argues that Respondent’s disputed <hermamniller.com> domain name is confusingly similar to Complainant’s mark. The Panel notes that Respondent’s disputed domain name is identical to Complainant’s mark with the exception of the transposed letters “m” and “n.” The Panel notes that the disputed domain name also differs from Complainant’s mark by the addition of the generic top-level domain (“gTLD”) “.com.” Where a respondent registers a disputed domain name that is identical to a complainant’s mark, but for the transposing of letters, the disputed domain name is confusing similar with the mark. See Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark). Further, addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Thus, the Panel finds that Respondent’s disputed <hermamniller.com> domain name is confusingly similar to Complainant’s HERMAN MILLER mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a confusingly similar domain name containing Complainant’s protected mark in misspelled form; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
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), and then the burden of proof shifts to Respondent to show it does have such 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 respondent to show that it does have such rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Although Complainant does not argue it, no evidence suggests that Respondent has been, or is, commonly known by the disputed <hermamniller.com> domain name. The WHOIS information provided indicates that “Michael Scotter” registered the disputed domain name. Previous panels used the WHOIS information as well as information submitted to determine whether the evidence sufficiently supported a finding that Respondent is commonly known by the mark and the disputed domain name. It follows that the Panel may consider the absence of such evidence to determine that Respondent is not commonly known by the mark and domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel finds here that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant urges that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or service or a legitimate noncommercial or fair use of the disputed domain name. The only documented use of the disputed <hermamniller.com> domain name is a fraudulent email sent by someone using an “@hermamniller.com” email address pretending to be an employee of Complainant in order to receive funds illegitimately. See Complaint at p. 6. Where a respondent attempts to pass itself off as a complainant in furtherance of a fraudulent email scheme, that respondent is not engaged in a bona fide offering of goods or services or a noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Accordingly, the Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the dispute domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant also argues that Respondent failed to make any active use of the disputed domain name other than the use set out above. Complainant attached Exhibit K, which shows Respondent’s disputed domain name as it resolved on April 22, 2015. The website the disputed domain resolves to displays the words “index of” and under that a hyperlink labeled “cgi-bin/.” Clicking the “cgi-bin/” link leads to a 403 page declaration that the user lacks permission to access “cgi-bin/.” The Panel agrees with Complainant’s contention here and finds that Respondent’s failure to make an active use of the disputed domain name indicates a lack of rights and legitimate interests according to Policy ¶ 4(a)(ii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in Complainant’s protected mark or the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant first argues that Respondent’s use of the disputed domain name disrupts Complainant’s business. Again, Respondent’s disputed <hermamniller.com> domain name is identical to Complainant’s HERMAN MILLER mark except for the transposed letters “m” and “n.” When a respondent’s disputed domain name is a minor difference away from being identical to a complainant’s mark, which then diverts potential customers for a complainant away from its website and to the respondent’s website, Respondent’s use supports findings of bad faith. See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business). The Panel therefore finds that Respondent acted in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent acted in bad faith by exploiting the substantial goodwill associated with the HERMAN MILLER mark to profit from attracting Internet users to the confusingly similar <hermamniller.com> disputed domain name. Respondent acts in bad faith when it creates a domain name that is confusingly similar to a complainant’s mark in an effort to profit from such goodwill associated with the complainant’s mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). The Panel finds that Respondent acted in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant further argues that Respondent’s bad faith is shown by Respondent’s apparent use of an email address associated with the disputed domain name to fraudulently obtain funds from Complainant or Complainant’s clients. Complainant attached a copy of an email from a “brenda_formsma@hermamniller.com” to an employee of Jalapeno Trading, a client of Complainant. In the email someone pretending to be “Brenda Formsma,” an actual employee of Complainant, fraudulently communicates with Complainant’s client to receive payment intended for Complainant. A respondent passing itself off as Complainant presents evidence to support findings of bad faith under Policy ¶ 4(a)(iii). See Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). The Panel therefore finds that under Policy ¶ 4(a)(iii) Respondent acted in bad faith.
Complainant next argues that Respondent must have had actual and/or constructive knowledge of Complainant and its marks. Complainant believes that its fame and numerous trademark registrations signify that Respondent must have had actual and/or constructive knowledge. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here finds that based on the misspelled actual name of Complainant and Respondent’s specific use to target a client of Complainant, Respondent showed actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); 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)."
Lastly, the Panel notes that Respondent, having failed to defraud the client of Complainant, may now be passively holding the disputed domain name. Such passive holding also supports findings of bad faith and the Panel so finds.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered, used or attempted to use fraudently, and then passively held the disputed domain name, all if bad faith; Complainant satisfied the elements of ICANN 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 <hermamniller.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 9, 2015
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