RH US, LLC v. jonathan wimmel
Claim Number: FA1702001719390
Complainant is RH US, LLC (“Complainant”), represented by Michael J. McCue, Nevada, USA. Respondent is jonathan wimmel (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <restorationhardware.furniture>, (the Domain Name) 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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 28, 2017; the Forum received payment on February 28, 2017.
On February 28, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <restorationhardware.furniture> domain name is 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 March 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 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@restorationhardware.furniture. Also on March 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 April 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 contentions can be summarised as follows
Restoration Hardware Holdings Inc. is an innovative and popular luxury home furnishings company. Complainant and its subsidiary owns the rights to the RESTORATION HARDWARE mark registered in the United States from 1997 for retail store services for, inter alia, furniture.
The Domain Name is comprised of the RESTORATION HARDWARE mark in its entirety merely adding the top level domain .furniture. While in most cases the presence of a top level domain is not relevant to an analysis of confusing similarity, the presence of a top level mark may be relevant when it is related to the mark and may enhance confusion. In this case, use with the top level domain .furniture enhances confusion. The Domain Name is confusingly similar to Complainant’s RESTORATION HARDWARE mark.
Respondent has not used the Domain Name in connection with any bona fide offering of goods or services. Respondent is not commonly known by the Domain Name. Complainant has not authorised Respondent to use its mark.
Respondent owns another domain name concordebuilders.com and seems to be the project manager for a luxury home builder. Given Respondent’s connection with the luxury home industry and given the extensive reputation of the RESTORATION HARDWARE mark, there is no plausible circumstance in which Respondent could legitimately use the Domain Name. Respondent has no rights or legitimate interests in the Domain Name.
Respondent must have actual knowledge of Complainant in the industry he is in and this is evidence of bad faith. Failure to make active use of a Domain Name is also evidence of bad faith. Invariably, the Domain Name will attract Internet traffic and cause at least initial interest confusion as to source of Respondent’s services or at to some affiliation, connection or relationship between Complainant and Respondent.
Further it is well settled that offering to sell a domain name in excess of out of pocket expenses is strong evidence of bad faith under the Policy. In response to Complainant’s cease and desist letter the apparent owner of the Domain Name offered to sell it to Complainant for $10,000 USD.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. On April 3, 2017, after this decision had been prepared in draft, he sent an email to the Centre confirming he relinquishes the Domain Name to Complainant and does not want to pursue the dispute further.
Complainant owns the rights to the RESTORATION HARDWARE mark registered in the United States for retail store services for, inter alia, furniture with first use in commerce recorded as 1980.
The Domain Name, registered in 2016, has been offered for sale to Complainant for $10,000 USD and has not been used.
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 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 and/or Confusingly Similar
The Domain Name consists of Complainant's RESTORATION HARDWARE mark and the new TLD .furniture.
gTLDs do not, in general serve to distinguish the Domain Name from a mark, which is the distinctive component of the Domain Names. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark). .furniture is a top level domain which has a specific meaning and, in the context of a mark known for furniture, not only does it not distinguish the Domain Name from Complainant’s RESTORATION HARDWARE mark, but, because Complainant sells furniture goods, the use of the .furniture TLD adds to likely confusion. .furniture does, however, have a descriptive meaning and is not distinctive in any sign used in the context of furniture. Under the Policy the distinctive part of the Domain Name is Complainant’s RESTORATION HARDWARE mark.
Accordingly, the Panel holds that the Domain Name is identical for the purposes of the Policy with a mark in which Complainant has rights.
Rights or Legitimate Interests
Respondent has not answered the substantive points in this Complaint and has not provided any legitimate reason why he should be able to use Complainant’s mark in the Domain Name. He does not appear to be commonly known by the Domain Name or authorised by Complainant. There is no evidence of any use by Respondent of the Domain Name. See Bloomberg LP v SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004)(‘The Panel finds that the failure to make an active use of a domain name that is identical to a Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy 4 ( c ) (i) and it is not a legitimate non commercial or fair use of the domain name pursuant to Policy 4( c ) (iii).) On April 3, 2017 Respondent confirmed by way of e mail to the Centre that he relinquishes the Domain Name and does not want to pursue the dispute further. As such the Panelist 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
Paragraph 4(b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
"circumstances indicating that [Respondent has] registered or [has] 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 [its] documented out-of-pocket costs directly related to the domain name;" (s4(b)(i))
No use has been made of the name, but the Respondent has offered to sell the Domain Name to Complainant for $10,000 USD which far exceeds costs of registration. See George Weston Bakeries Inc. v McBroom, FA 933276 (Forum Apr 25, 2007) (finding bad faith under Policy 4 (b)(i) where Respondent registered the disputed domain name and offered it for sale for far more that its estimated out of pocket costs initially incurred in registering it.)
As such, the Panel holds 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 paragraph 4 (b)(i) and there is no need to consider further allegations of bad faith made by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <restorationhardware.furniture> domain name be TRANSFERRED from Respondent to Complainant .
Dawn Osborne, Panelist
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