Boca Signworks, LLC v. Diane Prescott
Claim Number: FA1509001637739
Complainant is Boca Signworks, LLC (“Complainant”), represented by Joshua S. Widlansky, Florida, USA. Respondent is Diane Prescott (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bocasignworks.com>, registered with GoDaddy.com, LLC.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 15, 2015; the Forum received payment on September 15, 2015.
On September 15, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bocasignworks.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 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@bocasignworks.com. Also on September 21, 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.
A timely Response was received and determined to be complete on October 8, 2015.
On October 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mark McCormick 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has common law rights in the BOCA SIGNWORKS mark based on use of the mark in commerce since beginning business under the name in Boca Raton, Florida in 2010. Respondent’s disputed <bocasignworks.com> domain name is confusingly similar to the BOCA SIGNWORKS mark because the domain name includes the mark in its entirety and only differs from the mark through the removal of spacing and the addition of the generic top-level domain (“gTLD”) “.com.”
Respondent’s WHOIS information indicates that the disputed domain name was registered under the name “Diane Prescott,” which does not resemble the disputed domain name. Respondent uses Complainant’s company name as a means to direct traffic to its own website.
Respondent’s <bocasignworks.com> is guaranteed to cause confusion among consumers who attempt to go visit the website for Complainant’s business and are instead directed to Respondent’s website which offers competing services.
Complainant contends that Respondent, before service of the Complaint, used the disputed domain name to redirect users to Respondent’s own website at signsations.com.
B. Respondent
Diane Prescott has owned the disputed domain name <bocasignworks.com> since 2008, two years prior to the establishment of Complainant’s business. Respondent owns several other domain names and uses all of them, including the disputed name, as a means of attracting website traffic in connection with its business in fabricating, building and installing signs. Respondent contends that the disputed domain name is comprised of generic terms and cannot be the subject of trademark rights. Respondent is willing to redirect traffic from its domain name to a blank site and is willing to sell it to Complainant.
Complainant has done business in Palm Beach County, Florida using the mark Boca Signworks since 2010. Respondent is a competitor of Complainant in the sign business and is located about three miles from Complainant’s business. Respondent acknowledges that it uses the <bocasignworks.com> domain name to divert web traffic to the Respondent’s website for the purpose of attracting business. Respondent is not known by the name Boca Signworks, does not market itself as Boca Signworks, and is not affiliated with Complainant.
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.
Complainant has used its mark in its sign business since 2010. Its mark appears on customer invoices and correspondence, recognition received under the Boca Signworks name, and advertising including the mark. This use is sufficient to give the mark secondary meaning through which Complainant has established common law rights in the Boca Signworks mark. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011). The disputed <bocasignworks.com> domain name is confusingly similar to the Boca Signworks mark within the meaning of Policy ¶4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007).
The disputed domain name was registered and is owned by Diane Prescott. Neither she nor Respondent is commonly known by the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006). Because Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, the burden shifted to Respondent to show it had rights or legitimate interests in the name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Respondent admits that it uses the disputed domain name to redirect users to Respondent’s own website at signations.com in order to attract business. Respondent’s purpose in using the disputed domain name to redirect internet users to its website is not a bona fide offering of goods or services within the meaning of Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002).
Respondent acknowledges that it uses the disputed domain name in an effort to attract internet users to its website for commercial gain. By doing so it creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product or service on its website. This is bad faith use within the meaning of Policy ¶4(b)(iv). MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006).
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bocasignworks.com> domain name be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: October 28, 2015
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