Superior Value Products, Inc. v. Reza Javan / Charsoo Corp.
Claim Number: FA1612001708537
Complainant is Superior Value Products, Inc. (“Complainant”), represented by Sarah E Bro of McDermott Will & Emery LLP, California, USA. Respondent is Reza Javan / Charsoo Corp. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <efloorsusa.com>, <efloorsca.com>, and <efloorsoc.com>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 19, 2016; the Forum received payment on December 19, 2016.
On December 21, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <efloorsusa.com>, <efloorsca.com>, and <efloorsoc.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 December 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2017 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@efloorsusa.com, postmaster@efloorsca.com, postmaster@efloorsoc.com. Also on December 21, 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 January 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant, Superior Value Products, Inc. and its affiliated company Floor Covering Associates, Inc., together run EFLOORS.COM, an online retailer of flooring products and services. Complainant has rights in the EFLOORS.COM mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,965,863, registered July 12, 2005). See Compl., at Attached Ex. D. The disputed domain names are confusingly similar to Complainant’s mark, as they contain the mark in its entirety, merely adding the geographic terms “usa,” “ca,” or “oc.”
Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the EFLOORS.COM mark for any reason. Respondent’s use of the disputed domain does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to advertise and provide information about floor coverings, in direct competition with Complainant’s business. See Compl., at Attached Ex’s B & F.
Respondent’s registration and use of the disputed domain is in bad faith under the Policy. Respondent is using the disputed domain names to confuse and attract Internet users in order to promote and advertise services that are directly competitive with Complainant’s business, evidence of Policy ¶¶ 4(b)(iii) and 4(b)(iv) bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent has had email communications with the Forum which are referred to later in this decision.
1. Complainant is a United States company and an online retailer of flooring products and services.
2. Complainant has established its trademark rights in the EFLOORS.COM mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,965,863, registered July 12, 2005).
3. Respondent registered the disputed domain names on February 20, 2006.
4. Respondent is using the disputed domain names to confuse and attract Internet users in order to promote and advertise services that are directly competitive with Complainant’s business.
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(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 (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.”).
During the conduct of the proceeding, Respondent engaged in some email communications with the Forum and those communications have been considered by the Panel. They discussed the transfer of the domain names but, in the opinion of the Panel, they did not express an unequivocal agreement by Respondent to transfer the domain names to Complainant. The Panel will therefore proceed in the usual manner and deliver a decision on all three elements that must be proved by Complainant.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the EFLOORS.COM mark based upon registration of the mark with the USPTO (e.g. Reg. No. 2,965,863, registered July 12, 2005). See Compl., at Attached Ex. D. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel therefore holds that Complainant’s registration of the EFLOORS.COM mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s EFLOORS.COM mark. Complainant submits that the <efloorsusa.com>, <efloorsca.com> and <efloorsoc.com> domain names are confusingly similar to Complainant’s mark, as they contain the mark in its entirety, merely adding the geographic identifier “usa,” “ca,” or “oc.” Addition of a geographic term to a mark in order to form a domain name does not distinguish that domain name for purposes of a Policy ¶ 4(a)(i) analysis. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”). Accordingly, the Panel finds the disputed domain names are confusingly similar to Complainant’s EFLOORS.COM mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s EFLOORS.COM mark and to use it in its domain names, simply adding the geographic identifiers “usa,” “ca,” or “oc” respectively;
(b) Respondent registered the disputed domain names on February 20, 2006;
(c) Respondent is using the disputed domain names to confuse and attract Internet users in order to promote and advertise services that are directly competitive with Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <efloorsusa.com>, <efloorsca.com> or <efloorsoc.com> domain names as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the ELFOORS.COM mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Reza Javan” with “Charsoo Corp.” See Compl., at Attached Ex. A. Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by any of the disputed domain names;
(f) Complainant further submits that Respondent’s lack of rights or legitimate interests in the disputed domain names is evinced by its failure to use the domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent’s <efloorsusa.com> and <efloorsoc.com> domain names resolve to websites that advertise floor covering products that compete directly with Complainant’s goods and services. See Compl. at Attached Ex. B. Use of a domain name to offer products directly competing with those of a complainant is not a use which constitutes a Policy ¶¶ 4(c)(i) or 4(c)(iii) permissible use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”);
(g) the <efloorsca.com> domain name resolves to a blog advertising and providing information on floor covering products which compete with Complainant. See Compl., at Attached Ex. B. Use of a domain name to advertise goods or services that compete with Complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel therefore finds Respondent lacks Policy ¶¶ 4(c)(i) and 4(c)(iii) rights or legitimate interests in any of the disputed domain names.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain names. Respondent engaged in some email communications with the Forum, but they did not disclose a right or legitimate interest in the domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and is using the disputed domain names in bad faith because Respondent is using the confusing similarity of the disputed domain names with Complainant’s mark to confuse and attract Internet users and divert them to competing websites. Use of a domain name to divert potential customers of a complainant to a competing business by redirecting or linking them is considered bad faith per Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Likewise, when a respondent uses a confusingly similar domain name to attract users to its own website where it sells competing goods, such use is considered bad faith pursuant to Policy ¶ 4(b)(iv). The Panel notes that all three of the disputed domain names resolve or redirect to websites featuring competing products and/or services. See Compl., at Attached Ex. B. Complainant presumes Respondent gains commercially from this behavior. The Panel agrees that this behavior evinces bad faith and finds Respondent’s registration and use of all of the disputed domain names was in bad faith pursuant to Policy ¶¶ 4(b)(iii) and 4(b)(iv).
Secondly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain names using the EFLOORS.COM mark and in view of the conduct that Respondent has
engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <efloorsusa.com>, <efloorsca.com>, and <efloorsoc.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 24, 2017
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