Steelcase Inc. v. Davies Rowan
Claim Number: FA1509001637727
Complainant is Steelcase Inc. (“Complainant”), represented by Lisa R. Harris, Michigan, USA. Respondent is Davies Rowan (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <steelcase-usa.com>, registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA.
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 Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 15, 2015; the Forum received payment on September 15, 2015.
On September 16, 2015, Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA confirmed by e-mail to the Forum that the <steelcase-usa.com> domain name is registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA and that Respondent is the current registrant of the name. Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA has verified that Respondent is bound by the Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA 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 September 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 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-usa.com. Also on September 16, 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 October 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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
Complainant operates in the furniture industry. Complainant has rights in the STEELCASE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 534,526, registered on December 12, 1950). Respondent’s <steelcase-usa.com> domain name is confusingly similar to the STEELCASE mark because it contains the entire mark and is only altered by the additions of the geographical qualifier, “usa,” a hyphen, and the generic top-level domain (“gTLD”) “.com.”
Respondent is not commonly known by the <steelcase-usa.com> domain name because Complainant has not authorized it to use the STEELCASE mark and because Respondent purports to be an employee of Complainant, named “Davies Rowan,” while Complainant has no such employee. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses the <steelcase-usa.com> domain name and an e-mail address hosted there in order to pass itself off as Complainant.
Respondent has demonstrated a pattern of registering and using domain names in bad faith through a previously decided case against it. Respondent uses the <steelcase-usa.com> domain name in bad faith because it uses the resolving website, as well as an e-mail address hosted there, to pass itself off as Complainant, in order to attract Internet users for commercial gain. Respondent registered the <steelcase-usa.com> domain name in bad faith because it did so with constructive or actual knowledge of Complainant’s rights in the STEELCASE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The <steelcase-usa.com> domain name was created on September 2, 2015.
As the Respondent has failed to file a response in this matter, the Panel shall make its determination based on the reasonable and undisputed allegations of the Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, that the Respondent has no right or legitimate interests in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration of the disputed domain name.
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.”).
The disputed domain name is confusingly similar to the Complainant’s registered trademark. Complainant has rights in the STEELCASE mark through its registration with the USPTO (e.g., Reg. No. 534,526, registered on December 12, 1950).
Respondent’s <steelcase-usa.com> domain name is confusingly similar to the STEELCASE mark because it contains the entire mark and is only altered by the irrelevant additions of the term, “usa,” a hyphen, and the gTLD “.com.” Also, the term “usa” is apparently a geographic qualifier that denotes Complainant’s business operations in the United States of America. As such, it is also not effective in distinguishing the disputed domain name from the Complainant’s registered trademark.
As such, the Panel finds that Respondent’s <steelcase-usa.com> domain name is confusingly similar to Complainant’s STEELCASE mark pursuant to Policy ¶ 4(a)(i).
Respondent is apparently not commonly known by the <steelcase-usa.com> domain name because Complainant has not authorized it to use the STEELCASE mark. Respondent purports to be an employee of Complainant, named “Davies Rowan;” however, this is apparently not accurate. Exhibit 5. When a complainant has not authorized a respondent to use its mark and there is no relationship between the parties, a lack of other evidence in the record is enough to show that the respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Accordingly, the Panel finds that Respondent is not commonly known by the <steelcase-usa.com> domain name under Policy ¶ 4(c)(ii).
Respondent apparently fails to use the <steelcase-usa.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to pass itself off as that of Complainant. Complainant has provided screenshots of the resolving website in Exhibit 4, as well as screenshots of its own website in Exhibit 3 for comparison. Complainant has provided further evidence of Respondent using the domain to pass itself off as an agent of Complainant in Exhibit 5, showing a series of e-mails, in which one party is using an e-mail address hosted at the <steelcase-usa.com> domain name in order to make a business deal with a third party.
By using fraudulent emails and/or a resolving website via the disputed domain to pass itself off as a complainant, Respondent evidences its lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
As the Panel finds Complainant’s evidence sufficient to show Respondent attempts to pass itself off as Complainant, the Panel finds Respondent fails to provide bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) and therefore has no rights or legitimate interests in or to the disputed domain name.
Respondent has demonstrated a pattern of bad faith registration and use of domain names. Complainant has provided in Exhibit 6 a prior UDRP case, Steelcase Inc. v. david golker/steelcase-us, FA 1626655 (Nat. Arb. Forum Aug. 24, 2015), in which it was the complainant and a “David Golker” was the respondent. In that case, the domain name in dispute was <steelcase-us.com>, and Complainant was awarded the domain name. Complainant argues that Respondent here is the same respondent as in that case because both use the dgolker@steelcase-us.com e-mail address, as shown in the available WHOIS information. Prior decisions decided against a respondent is sufficient to show a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). As such, the Panel finds that Respondent has demonstrated a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Respondent uses the <steelcase-usa.com> domain name in bad faith because it uses the resolving website, as well as an e-mail address hosted there, to pass itself off as Complainant, in order to attract Internet users for commercial gain. Complainant has provided screenshots of the resolving website, in Exhibit 4, as well as screenshots of its own website, in Exhibit 3, for comparison. Complainant has also provided evidence, in Exhibit 5, showing a series of e-mails, in which one party is using an e-mail address hosted at the <steelcase-usa.com> domain name in order to make a fraudulent business deal with a third party. The use of a domain name to pass oneself off as a complainant constitutes bad faith use pursuant to Policy ¶ 4(b)(iv).
As such, the Panel finds that Respondent uses the <steelcase-usa.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also alleges that Respondent registered the <steelcase-usa.com> domain name in bad faith because it did so with constructive or actual knowledge of Complainant’s rights in the STEELCASE mark. Complainant argues that because of its USPTO registrations, Respondent had constructive knowledge of Complainant’s right. Past panels, however, have determined that constructive knowledge does not suffice to support a finding of bad faith. See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration). Complainant also argues that Respondent had actual knowledge of Complainant’s rights in the mark because of the degree of similarity between the STEELCASE mark and the <steelcase-usa.com> domain.
Given the totality of the circumstances, the Panel finds that the Respondent had actual knowledge of the Complainant’s rights in and to its registered trademark and, therefore, engaged in bad faith use and registration of the disputed domain name.
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-usa.com> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: October 14, 2015
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