Consolidated Property Holdings, Inc. v. Maddisyn Fernandes / Fernandes Privacy Holdings
Claim Number: FA1701001713632
Complainant is Consolidated Property Holdings, Inc. (“Complainant”), represented by John M. Mueller of Baker & Hostetler LLP, Ohio, USA. Respondent is Maddisyn Fernandes / Fernandes Privacy Holdings
(“Respondent”), Bolivia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <biglotsfurniture.com>, (the Domain Name)registered with Internet Domain Service BS Corp.
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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 20, 2017; the Forum received payment on January 20, 2017.
On January 26, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <biglotsfurniture.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 February 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 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@biglotsfurniture.com. Also on February 1, 2017, 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 March 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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’s submissions can be summarized as follows:
Complainant is the owner of a US registered trade mark for BIG LOTS! FURNITURE and various other US registrations containing BIG LOTS registered for, inter alia retail store services. Complainant’s exclusive licensee Big Lots Stores Inc. operates under the name BIG LOTS and has done so since at least September 1985.
Respondent operates a web site located at the Domain Name that redirects users to other web sites including those that sell furniture and are Complainant’s direct competitors. Customers may be confused by this and may believe they are associated with Complainant. Given that Respondent’s second level domain is identical to Complainant’s common law rights in BIG LOTS FURNITURE and differs only from Complainant’s US trademark registration BIG LOTS! FURNITURE by the omission of the ‘!’ which could not be reproduced in a domain name the commercial impression of the Domain Name and Complainant’s BIG LOTS! FURNITURE trade mark are identical. The Domain Name is confusingly similar to Complainant’s trade mark.
Respondent owns no rights, whether trademarks or otherwise in the Domain Name.
Respondent has made no legitimate use or bona fide use of the Domain Name, the only use being to link to Complainant’s competitors. Respondent is not known by the Domain Name
Domain Name has been registered to disrupt the business of Complainant and attempt to divert confused customers to Respondent’s web site.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of a US registered trade mark for BIG LOTS! FURNITURE and various other US trade mark registrations containing BIG LOTS registered for, inter alia, retail store services with first use in commerce recorded as 1985.
The Domain Name has been pointed to third party commercial links including those of Complainant’s competitors.
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.”).
Identical or Confusingly Similar
The Domain Name consists of Complainant's BIG LOTS! FURNITURE mark (which is registered in USA for retail services and has been used since at least 1985) without the exclamation mark which cannot be rendered properly in a domain name and the gTLD .com. Elimination of punctuation does not sufficiently distinguish a domain name from a trademark. See US News & World Report, Inc. v Zhongqi, FA 917070 (Forum Apr 9, 2007).
The gTLD .com does not serve to distinguish the Domain Name from the BIG LOTS! FURNITURE mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Respondent is using the Domain Name for links that point to third party web sites site in competition with those of Complainant. It does not make it clear that there is no commercial connection with Complainant., The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See McGuireWoods LLP v Mykhailo Loginov/Loginov Enterprises doo FA 1412001594837 (Forum Jan 22, 2015) (‘respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with complainant’s products is not a bona fide offering of goods and services pursuit to Policy 4 ( c) (i) and is not a legitimate noncommercial or fair use pursuant to Policy 4 ( c) (iii).)
As such, the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Complainant also alleges that Respondent's use of the site attached to the Domain Name is commercial and it is using it to make a profit by competing with Complainant in a confusing and disruptive manner. In the opinion of the Panel the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by Complainant as it offers competing goods and services without any explanation. The use on Respondent's web site relating to competing furniture goods and services suggests that Respondent is aware of Complainant. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of Complainant. (See Asbury Auto Group Inc. v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use). See also Adorama Inc. v Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (‘Use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith registration and use under Policy 4 (b) (iii).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <biglotsfurniture.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
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