Steelcase Inc. v. Microsite RMC
Claim Number: FA1601001656209
Complainant is Steelcase Inc. (“Complainant”), represented by Lisa R. Harris, Michigan, USA. Respondent is Microsite RMC (“Respondent”), California, USA.
REGISTRAR AND <STEEL-CASEINC.COM> AND <STEEL-CASEINC.NET> DOMAIN NAMES
The domain names at issue are <steel-caseinc.com> and <steel-caseinc.net>, registered with GoDaddy.com, LLC.
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 January 13, 2016; the Forum received payment on January 13, 2016.
On January 13, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <steel-caseinc.com> and <steel-caseinc.net> domain names are 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 January 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2016 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@steel-caseinc.com, postmaster@steel-caseinc.net. Also on January 13, 2016, 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 February 5, 2016, 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 names be transferred from Respondent to Complainant.
A. Complainant
1. 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 <steel-caseinc.com> and <steel-caseinc.net> domain names are confusingly similar to the STEELCASE mark because they each contain the mark, along with the descriptive term “inc,” a hyphen, and a generic top-level domain (“gTLD”).
2. Respondent is not commonly known by the <steel-caseinc.com> and <steel-caseinc.net> domain names Respondent has no permission to use the STEELCASE mark.
3. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because each domain name resolves to a website used in an attempt to pass off as Complainant.
4. Respondent has demonstrated a pattern of bad faith registration of domain names because there are two domains at issue here.
5. Respondent registered and uses the <steel-caseinc.com> and <steel-caseinc.net> domain names in bad faith. Respondent registered the domains with constructive or actual knowledge of Complainant’s rights in the STEELCASE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the STEELCASE mark. Respondent’s domain names are confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <steel-caseinc.com> and <steel-caseinc.net> domain names, and that Respondent registered and uses the domain names 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 <steel-caseinc.com> and <steel-caseinc.net> representations pursuant to paragraphs 5(f), 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 rights in the STEELCASE mark through its registration with the USPTO (e.g., Reg. No. 534,526, registered on December 12, 1950). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <steel-caseinc.com> and <steel-caseinc.net> domain names are confusingly similar to the STEELCASE mark because they each contain the mark, along with the term “inc,” a hyphen, and a gTLD. Complainant argues that the term “inc” is descriptive because Complainant does business under the name “Steelcase Inc.” The Panel agrees that the <steel-caseinc.com> and <steel-caseinc.net> domain names are confusingly similar to the STEELCASE mark pursuant to Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).
Complainant alleges that Respondent holds no rights or legitimate interests in the domain names at issue in this proceeding. 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 contends that Respondent is not commonly known by the <steel-caseinc.com> and <steel-caseinc.net> domain names because there is no evidence to suggest as such and because Respondent has no permission to use the STEELCASE mark. The available WHOIS information lists “Microsite RMC” as Registrant. Accordingly, the Panel finds that Respondent is not commonly known by the <steel-caseinc.com> and <steel-caseinc.net> domain names according to 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).
Complainant claims that Respondent fails to use the <steel-caseinc.com> and <steel-caseinc.net> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because they each resolve to a website used to pass off the Respondent as the Complainant. Complainant urges that each resolving website shows the STEELCASE mark being displayed along with information about Complainant, and a copyright notice naming Complainant. The Panel finds Respondent has failed to provide 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). 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 a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent’s conduct described above also has been found to constitute bad faith use under Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).
Complainant alleges that Respondent registered the <steel-caseinc.com> and <steel-caseinc.net> domain names in bad faith because it did so with actual knowledge of Complainant’s rights in the STEELCASE mark. Respondent’s actual knowledge can be inferred from the specific domain names chosen by Respondent which incorporate exactly Complaint’s mark. The Panel agrees. 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <steel-caseinc.com> and <steel-caseinc.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 12, 2016
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