The Conard-Pyle Company v. Botany Shop Garden Center
Claim Number: FA1803001774449
Complainant is The Conard-Pyle Company (“Complainant”), represented by Laura K. Pitts of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Botany Shop Garden Center (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <knockoutroses.com>, registered with Network Solutions, 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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 2, 2018; the Forum received payment on March 2, 2018.
On March 5, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <knockoutroses.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2018 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@knockoutroses.com. Also on March 5, 2018, 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 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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, The Conard-Pyle Company, is a leading horticultural company which has specialized in roses and other proprietary plants for over 100 years. Complainant uses its KNOCK OUT mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,818,948, registered Mar. 2, 2004). See Compl. Ex. 5. Respondent’s <knockoutroses.com> domain name is confusingly similar to Complainant’s mark because it merely adds the descriptive term “roses” and the generic top-level domain name (“gTLD”) “.com” to the fully incorporated KNOCK OUT mark.
Respondent does not have rights or legitimate interests in the <knockoutroses.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its KNOCK OUT mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Botany Shop Garden Center” as the registrant. See Compl. Ex. 8. Further, Respondent offered to sell the disputed domain name to Complainant. In addition, Respondent is not using the <knockoutroses.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Currently, Respondent uses the domain name to resolve to a parked webpage that features pay-per-click hyperlinks. Respondent previously used the domain names to sell Complainant’s goods and other competing goods without Complainant’s permission and without disclosing Respondent’s relationship with the Complainant.
Respondent registered and is using the disputed domain name in bad faith. Respondent offered to sell the domain name to Complainant. Respondent also attempted to attract Internet users to its parked website by creating confusion with Complainant’s KNOCK OUT mark for Respondent’s commercial gain. Finally, Respondent registered the domain name with actual knowledge of Complainant’s rights in the KNOCK OUT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <knockoutroses.com> domain name on June 10, 2003. Complainant’s Exhibit 8, however, shows a screenshot of the domain name’s WHOIS information and lists September 18, 2003 as the registration date.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s common law trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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 Panel finds that the disputed domain name, <knockoutroses.com>, is confusingly similar to Complainant’s common law trademark, KNOCK OUT. Complainant has adequately plead its rights and interests in this common law mark. As Respondent registered the disputed domain name prior to the issuance of Complainant’s trademark registration for KNOCK OUT, the trademark registration is irrelevant to these proceedings. What is not irrelevant is Complainant’s long use of the mark and its popularity. Such use has established common law rights in and to this trademark. As such, Complainant has adequately established its rights and interests in and to this trademark.
Respondent arrives at the disputed domain name by merely adding the generic word “roses” and the gTLD to Complainant’s mark in its entirety, eliminating one space. This is insufficient to distinguish the disputed domain name from Complainant’s common law trademark
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s common law trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the dispute domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain.
Respondent is not using the <knockoutroses.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Currently, Respondent apparently uses the domain name to resolve to a parked webpage that features pay-per-click hyperlinks. Respondent previously used the domain name to sell Complainant’s goods and other competing goods without Complainant’s permission and without disclosing Respondent’s relationship with the Complainant.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent registered and is using the <knockoutroses.com> domain name in bad faith by offering to sell the domain name to Complainant. Offers to sell a domain name to a complainant may evidence bad faith per Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). The Panel notes that Complainant did not provide any evidence regarding Respondent’s alleged offer to sell the domain name to Complainant. Therefore, the Panel finds that Complainant has failed to prove bad faith under Policy ¶ 4(b)(i).
Next, Complainant alleges that Respondent also attempted to attract Internet users to its parked website by creating confusion with Complainant’s KNOCK OUT mark for Respondent’s commercial gain. Use of a domain name to cause confusion as to the source, sponsorship, affiliation or endorsement therein for a respondent’s commercial gain may evidence bad faith registration and use per Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). As previously mentioned, Complainant argues that Respondent used the domain name to resolve to a parked website that featured competing pay-per-click hyperlinks and that Respondent likely profits when Internet users click on the displayed hyperlinks. See Compl. Ex. 9. As such, the Panel finds that Respondent used the domain name to create confusion between Complainant’s mark and the <knockoutroses.com> domain name and finds that Respondent registered and used the domain name in bad faith under Policy ¶4(b)(iv).
Finally, Complainant contends that Respondent registered the domain name with actual knowledge of Complainant’s rights in the KNOCK OUT mark. Given the long-time and broad use of the trademark KNOCK OUT by Complainant and the totality of the circumstances, the Panel finds that Respondent has actual knowledge of Complainant’s prior rights and interests in and to the trademark KNOCK OUT.
As such, the Panel finds that Respondent engaged in bad faith use and registration of 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 <knockoutroses.com> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: March 30, 2018
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