Steelcase Inc. v. DNS ADMIN / NOKTA INTERNET TECHNOLOGIES
Claim Number: FA1709001749849
Complainant is Steelcase Inc. (“Complainant”), represented by Lisa R. Harris, Michigan, USA. Respondent is DNS ADMIN / NOKTA INTERNET TECHNOLOGIES (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <steelcases.com>, registered with eNom, 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.
David S. Safran as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 20, 2017; the Forum received payment on September 20, 2017.
On September 20, 2017, eNom, LLC confirmed by e-mail to the Forum that the <steelcases.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 September 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@steelcases.com. Also on September 21, 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.
A timely Response was received and determined to be complete on September 26, 2017.
An Additional Submission was received from Complainant on September 27, 2017, and has been considered.
On September 26, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David S. Safran 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 is a global leader in the office furniture industry, delivering a better work experience to its customers by providing products, services and insights into the ways people work. Complainant registered the STEELCASE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 534,526, registered Dec. 12, 1950). See Compl., at Attached Ex. 2. Respondent’s <steelcases.com> domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s entire mark and appends the letter “s” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <steelcases.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to host a parked page with third-party furniture links. See Compl., at Attached Ex. 4. Further, Respondent uses the disputed domain name in connection with a fraudulent email posing as one of Complainant’s employees, it’s Chief Executive Officer (“CEO”) James Keane. See Compl., at Attached Ex. 5.
Respondent registered and uses the <steelcases.com> domain name in bad faith. Respondent uses the disputed domain name to disrupt Complainant’s business by transmitting emails falsely purporting to originate from Complainant’s CEO and requesting an immediate response from a Steelcase dealer. See Compl., at Attached Ex. 5. Further, Respondent uses the disputed domain name to commercially benefit via click-through fees by displaying competing links. See Compl., at Attached Ex. 4. Finally, Respondent must have had actual or constructive knowledge of Complainant’s STEELCASE mark due to Complainant’s registration of the mark and Respondent registering a domain name nearly identical to Complainant’s mark.
B. Respondent
Complainant has failed to prove that the STEELCASE mark has established a secondary meaning, as Complainant has provided no evidence of unsolicited media coverage, sales figures, or advertising or surveys showing consumers associate these terms exclusively (or primarily) with Complainant.
Complainant’s STEELCASE mark is a combination of two common English words, and thus Complainant cannot claim exclusive trademark protection. A search for the exact phrase “steel cases” returned just under 300,000 results, and Complainant does not appear on the first page for that phrase. Further, over 120 domain names have been registered containing the exact phrase “steel case.”
Respondent did not register the <steelcases.com> domain name in bad faith. Rather, Respondent registered the disputed domain name because it is a generic domain name. Respondent has not placed Complainant at a disadvantage by registering the domain name, as Complainant is free to purchase the domain name from Respondent at fair value. Further, the domain name is used in its generic sense to provide advertising and other content related to the subject matter of the domain name. The resolving webpage contains a legitimate parked page to earn click-per-view revenues, which does not infringe on Complainant’s rights. Finally, Respondent did not have knowledge of Complainant’s mark and had no reason to know of Complainant’s mark, as Complainant engages in business halfway around the world and Respondent had no obligation to conduct a trademark search for Complainant’s mark as constructive knowledge is inadequate proof of bad faith.
The Panel may note that Respondent registered the <steelcases.com> domain name on February 16, 2005. See Compl., at Attached Ex. 1.
C. Additional Submissions
In Complainant’s Additional Submission, Complainant pointed out that its make could not be descriptive and registered on the Principle Register of the USPTO for over 60 years. Additionally, Laches does not apply to these proceedings and even if it did, there was no delay from learning of Respondent’s actions and filing of the subject dispute.
The Panel finds that the domain name registered by Respondent is identical or confusingly similar to a trademark in which Complainant has rights; and Respondent has no rights or legitimate interests in respect of the domain name; and the domain name has been registered and is being used in bad faith.
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.
Complainant registered the STEELCASE mark with the USPTO (e.g. Reg. No. 534,526, registered Dec. 12, 1950). See Compl., at Attached Ex. 2. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the STEELCASE mark.
Complainant next argues that Respondent’s <steelcases.com> domain name is nearly identical to Complainant’s mark as it contains Complainant’s entire mark and appends the letter “s” and the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <steelcases.com> domain name is confusingly similar to the STEELHEAD mark under Policy ¶4(a)(i).
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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.”).
Complainant contends that Respondent has no rights or legitimate interests in the <steelcases.com> domain name. Relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “DNS Admin / Nokta Internet Technologies” as the registrant. See Compl., at Attached Ex. 1. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the STEELCASE mark. Panels views these assertions as evidence of lacking rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <steelcases.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as the domain name resolves in a parked webpage that contains links to services that directly compete with Complainant, presumably to commercially benefit from pay-per-click fees. Using a domain name to offer links to related or unrelated services generally fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the resolving webpage, which appears to offer links to various “desk,” “table,” and other furniture goods. See Compl., at Attached Ex. 4. As such, the Panel may find that Respondent offers competing links on the resolving webpage, failing to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant argues that Respondent attempts to pass off as an employee of Complainant to further a fraudulent email scheme. Complainants may use phishing attempts to evince a lack of any bona fide offering of goods or services or legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the alleged fraudulent email scheme, appearing to use the name “James Keane,” who Complainant claims is its company’s CEO. See Compl., at Attached Ex. 5. Accordingly, the Panel finds that Respondent’s passing off as Complainant via email does not serve as evidence of rights and legitimate interests under Policy ¶¶ 4(c)(i) or (iii).
Complainant claims that Respondent registered and uses the <steelcases.com> domain name in bad faith because the resolving webpage displays links to Complainant’s competitors. Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). As noted above, Complainant provides a screenshot of the links provided by Respondent, which displays links to various furniture sites. See Compl., at Attached Ex. 4. Consequently, the Panel may consider Complainant’s argument that Respondent’s displaying of competing links demonstrates bad faith when conducting its Policy ¶ 4(b)(iv) analysis.
Complainant argues that Respondent uses the disputed domain name to disrupt Complainant’s business by transmitting emails falsely purporting to originate from Complainant’s CEO and requesting an immediate response from a Steelcase dealer. Using a confusingly similar domain name to fraudulently impersonate an employee of a complainant may evince bad faith registration and use under Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant provides screenshot evidence of Respondent’s use of the disputed domain name in connection with an email address. See Compl., at Attached Ex. 5. The Panel considers Respondent’s alleged fraudulent actions as evidence of Respondent’s bad faith within the meaning of Policy ¶ 4(a)(iii).
The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge evinces bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the STEELCASE mark due to Complainant’s registration of the mark and Respondent registering a domain name nearly identical to Complainant’s mark. The Panel agrees that Respondent had actual knowledge of Complainant’s mark serves as evidence of bad faith under Policy ¶ 4(a)(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 <steelcases.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
David S. Safran, Panelist
Dated: October 6, 2017
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