Steelcase Inc. v. Cimpress Schweiz GmbH
Claim Number: FA1706001737556
Complainant is Steelcase Inc. (“Complainant”), represented by Lisa R. Harris, Michigan, USA. Respondent is Cimpress Schweiz GmbH (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <steelcasee.com>, registered with Tucows Domains 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 Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 27, 2017; the Forum received payment on June 27, 2017.
On June 28, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <steelcasee.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 June 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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 email@example.com. Also on June 28, 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 July 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Complainant contends as follows:
Complainant uses the STEELCASE mark in connection with the creation and sale of office furniture and related products.
Complainant registered the STEELCASE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 534,526, registered Dec. 12, 1950), which demonstrates its rights in the mark.
Respondent’s <steelcasee.com> domain name is identical or confusingly similar to Complainant’s mark because it incorporates the STEELCASE mark in its entirety, adding only a second letter “e” and a generic top-level domain (“gTLD”) “.com,” neither of which meaningfully distinguish the domain name from Complainant’s registered mark.
Respondent has no rights or legitimate interests in <steelcasee.com>. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the STEELCASE mark for any purpose. Respondent also fails to use the disputed domain name in connection with any bona fide offering of goods or services, as the domain name resolves to a blank webpage solely containing an error message. Further, Respondent uses the domain name to impersonate Complainant via email, presumably to further some fraudulent scheme for personal profit. Neither use qualifies as a bona fide offering or legitimate noncommercial use of any kind.
Respondent registered and continues to use the <steelcasee.com> domain name in bad faith. Respondent’s uses the at-issue domain to host email pretending to come from one of Complainant’s officers. This disrupts Complainant’s business activities. Additionally, the domain name resolves to a blank webpage only containing an error message, and this failure to make an active use provides further evidence of Respondent’s bad faith behavior with regard to the <steelcasee.com> domain name. Finally, Respondent should have had constructive notice of Complainant’s rights in the STEELCASE mark because of its widespread trademark registrations, and must have had actual or constructive notice of these rights because of the mark’s widespread notoriety.
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO trademark registrations for its STEELCASE mark.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the STEELCASE mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses email originating from the at-issue domain name to impersonate Complainant.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the STEELCASE mark with the USPTO establishes its rights in a mark under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office).
Respondent’s <steelcasee.com> domain name contains Complainant’s STEELCASE mark in its entirety with an extra “e” added thereto. The top level domain name, “.com,” is appended to the “steelcasee” string to complete the domain name. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to differentiate one from the other for the purpose of the Policy. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s STEELCASE mark pursuant to Policy ¶ 4(a)(i). See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”); see also, e.g., AOL Inc. v. Morgan, FA 1349260 (Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Cimpress Schweiz GmbH.” The record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the at-issue domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent uses the domain name to support an email address originating from the <steelcasee.com> domain name. By sending email which appears to be from a domain name sponsored by Complainant, Respondent can only intend to perpetrate a fraud on the recipient. More specifically, Respondent attempts to impersonate Complainant’s Chief Financial Officer, David Sylvester, in communicating with an employee of Complainant via email originating from <steelcasee.com>. Respondent thus uses the at-issue domain name to engage in identity theft. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Monster Energy Co. v. Argo Wibowo, FA 1452773 (Forum Aug. 23, 2012) (“use of the disputed domain name for a fraudulent purpose, while posing as Complainant, is evidence that Respondent lacks right and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4 (b) circumstance are present as well as other circumstances which lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As discussed above regarding rights and interests, Respondent’s confusingly similar domain name was registered and used to help facilitate a scheme whereby Respondent sent email from the <steelcasee.com> domain name bearing the name of an officer in Complainant’s organization. Respondent thereby uses the domain name to engage in identity theft. Respondent’s use of the domain name in this manner is disruptive to Complainant’s business and demonstrates bad faith per Policy ¶ 4(b)(iii). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a fraudulent scheme is evidence of bad faith registration and use); see also, Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii)…).
Additionally, Respondent engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name hoping that internet users will inadvertently type the malformed string when searching for products or services associated with the target trademark, or –as in the instant case-- will otherwise confuse the malformed trademark laden domain name with its target trademark. Here, Respondent slightly modifies Complainant’s trademark by adding an “e” to the mark. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Complainant’s STEELCASE mark is well-known and well-regarded worldwide. In light of the mark’s notoriety and Respondent’s overt use of the domain name to impersonate an employee and officer of Complainant, there can be no doubt that Respondent was well aware of Complainant’s STEELCASE mark when it registered the confusingly similar <steelcasee.com> domain name. Registering a domain name with knowledge of another’s rights therein indicates bad faith under Policy ¶4(a)(iii). See also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <steelcasee.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 25, 2017
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