Steelcase Inc. v. david golker / steelcase-us
Claim Number: FA1506001626655
Complainant is Steelcase Inc. (“Complainant”), represented by Lisa R. Harris, Michigan, USA. Respondent is david golker / steelcase-us (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <steelcase-us.com>, registered with Melbourne IT Ltd.
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 June 30, 2015; the Forum received payment on June 30, 2015.
On June 30, 2015, Melbourne IT Ltd confirmed by e-mail to the Forum that the <steelcase-us.com> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT 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 July 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 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@steelcase-us.com. Also on July 1, 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 July 28, 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 has longstanding rights in the STEELCASE mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 534,526, registered December 12, 1950).
2. Respondent’s <steelcase-us.com> domain name is identical or confusingly similar to the STEELCASE mark. Respondent’s domain merely adds a hyphen, the geographic term “us,” and the generic top-level domain “.com.” These differences do not prevent a finding of confusing similarity.
3. Respondent has no rights or legitimate interests in the disputed domain name. WHOIS information indicates that Respondent is not commonly known by the disputed domain name or affiliated with Complainant in anyway. Further, Respondent’s use of the disputed domain name to pass itself off as Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
4. Respondent has demonstrated bad faith registration and use of the <steelcase-us.com> domain name. Respondent uses the domain to intentionally attract and confuse internet users who are seeking Complainant’s legitimate website. Further, Respondent had actual or constructive knowledge of Complainant’s rights in the STEELCASE mark at the time of registration.
5. The domain name was registered on May 23, 2015.
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 <steelcase-us.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 has established rights in the STEELCASE mark through registration of the mark with the USPTO (Reg. No. 534,526, registered December 12, 1950). Registration of a mark with a national trademark agency such as the USPTO is sufficient to demonstrate a complainant’s rights in a mark. See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark).
Complainant also argues that Respondent’s <steelcase-us.com> domain name is confusingly similar to the STEELCASE mark in which Complainant has rights. Respondent’s domain name differs from the STEELCASE mark through the addition of a hyphen, the geographic term “us,” and the gTLD “.com.” Punctuation such as hyphens has been held not to affect the resemblance between a mark and a domain name. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Adding geographic terms has also not been found to prevent a finding of confusing similarity. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark). Finally, adding a gTLD to a domain has been held not to be relevant to an analysis of confusing similarity. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). The Panel therefore concludes that Respondent’s <steelcase-us.com> domain name is confusingly similar to the 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 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 argues that Respondent is not commonly known by the <steelcase-us.com> domain name, nor has Respondent been authorized to use the STEELCASE mark in anyway. The WHOIS information for the disputed domain name indicates that the registrant is listed as “David Golker” of the organization “steelcase-us.” A respondent is not commonly known by a domain name despite their listing in the WHOIS information, if there is no other evidence available in the record to support the finding that the respondent is commonly known by the domain name. 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).”). The Panel concludes that Respondent is not commonly known by the <steelcase-us.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant further claims that Respondent’s use of the <steelcase-us.com> domain name to pass itself off as Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s <steelcase-us.com> domain name redirects Internet users to a website that displays a copy of Complainant’s website. Using a confusingly similar domain name to pass itself off as a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel therefore finds that Respondent’s use of the <steelcase-us.com> domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is using the confusing similarity between the <steelcase-us.com> domain name and the STEELCASE mark to attract and confuse internet users who believe that Respondent and Respondent’s domain name are affiliated with Complainant. Respondent’s resolving website closely mirrors Complainant’s website. See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). The Panel therefore finds that Respondent’s use of the <steelcase-us.com> domain name demonstrates bad faith use and registration under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the STEELCASE mark prior to registration of the domain names because of Complainant's widespread use of the mark, its trademark registrations with the USPTO, and similarity of the disputed domain and the STEELCASE mark. The Panel 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 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 <steelcase-us.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 24, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page