Graco Children's Products Inc. v. WhoisGuard, Inc.
Claim Number: FA1604001672270
Complainant: Graco Children's Products Inc. of Atlanta, Georgia, United States of America.
Complainant Representative: Polsinelli PC of Chicago, Illinois, United States of America.
Respondent: WhoisGuard, Inc. of Panama, PA.
Respondent Representative:
REGISTRIES and REGISTRARS
Registries: .CLUB DOMAINS, LLC
Registrars: NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Petter Rindforth, as Examiner.
Complainant submitted: April 27, 2016
Commencement: April 28, 2016
Default Date: May 13, 2016
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Findings of Fact:
The Complainant is the owner of the trademark GRACO, registered in Canada, United Kingdom, and with the United States Patent and Trademark Office (“USPTO”), such as Reg. No. 2,871,521 GRACO, registered August 10, 2004, and renewed on August 23, 2014, covering goods in Intl Classes 9, 12, 18, 20, 21 and 28.
The Complainant has provided evidence of use of the trademark, by screenshot from the website www.gracobaby.com.
There is no information on the Respondent, other than provided by the Complainant, as the Respondent has not responded.
Legal Findings and Conclusion:
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
IDENTICAL OR CONFUSINGLY SIMILAR
The Complainant met the standard sets out in 1.2.6.1. of the URS Procedure since the Complainant has proved its right to the valid US Trademark registration No. 2,871,521 GRACO (word). Further, the Complainant has proved that the said trademark is in current use by presenting printouts from the Complainant’s website.
The relevant part of the disputed domain names are <gracobaby> and <graco-baby> as the added top-level domain – being a required element of every domain name – is generally irrelevant when assessing whether or not a mark is identical or confusingly similar and in this case does nothing to distinguish the disputed domain name from the Complainant’s trademark.
The disputed domain names thereby consists of the complainant’s trademark, combined (with and without a hyphen) the descripted word “baby”, related to the Complainant’s products.
The Examiner concludes that the disputed domain names are confusingly similar to the Complainant's trademark GRACO.
NO RIGHTS OR LEGITIMATE INTERESTS
The Respondent does not have any rights in <gracobaby.club> or <graco-baby.club>, as the Complainant has not authorized the Respondent to register a domain name containing its registered and used trademark GRACO, nor is the Respondent commonly known by any of the disputed domain names.
As GRACO is a distinctive and well known trademark, the Examiner also draw the conclusion that the Complainant has shown that the Respondent cannot have any legitimate interests in registering and using <gracobaby.club> or <graco-baby.club>.
To summarize, the Examiner find that the Complainant has established that the Respondent has no rights or legitimate interests in <gracobaby.club> or <graco-baby.club>.
BAD FAITH REGISTRATION AND USE
The According to the URS Procedure 1.2.6.3, examples of circumstances that demonstrate bad faith registration and use by the Registrant include:
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
In this case, the Complainant has shown that the Respondent has linked the disputed domain names to web sites, showing the Complainant’s goods and trademark, offering a “giveaway” of the Complainant’s car seats provided that customers submit their name and address, which information is then used for spam-mail.
Although the Respondent has not responded, the use as such strongly indicates that the Respondent has registered and is using <gracobaby.club> and <graco-baby.club> to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location. The use may as well indicate that the Respondents intention is to cause problems for the Complainant’s customers, thereby forcing the Complainant to buy the disputed domain names for valuable consideration in excess of documented out-of pocket costs directly related to the domain names.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<gracobaby.club>
<graco-baby.club>
Petter Rindforth, Examiner
Dated: May 15, 2016
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