Stageline Group Inc. v. Izzy Eli Rodriguez Inc.
Claim Number: FA1806001790797
Complainant is Stageline Group Inc. (“Complainant”), represented by John Berryhill, Pennsylvania, USA. Respondent is Izzy Eli Rodriguez Inc. (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stageline.rentals>, registered with GoDaddy.com, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 8, 2018; the Forum received payment on June 8, 2018.
On June 12, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <stageline.rentals> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 June 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 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@stageline.rentals. Also on June 13, 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 July 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Stageline Group Inc., enjoys a longstanding reputation as a leader in the field of designing, manufacturing, selling, and leasing mobile event stages and mobile event facilities. Complainant has been using the STAGELINE mark in connection with its’ business since 1991 and has rights in the mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,629,825, registered Jan. 1, 1991). See Compl. Ex. A. Respondent’s <stageline.rentals> domain name is identical and confusingly similar to Complainant’s mark because Respondent incorporates Complainant’s entire mark in the domain name as well as the “.rentals” generic top-level domain (“gTLD”) which describes Complainant’s business.
Respondent does not have rights or legitimate interests in the <stageline.rentals> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted Respondent permission or license to use the STAGELINE mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Respondent uses the disputed domain name to pass off as Complainant to offer unauthorized goods and services that directly compete with Complainant’s business.
Respondent registered and is using the <stageline.rentals> domain name in bad faith by passing off as Complainant to promote Respondent’s own competing business which offers counterfeit products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Canadian company engaged in the business of manufacturing, selling, and leasing mobile event stages and mobile event facilities.
2. Complainant has established its trademark rights in the STAGELINE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,629,825, registered Jan. 1, 1991).
3. Respondent registered the <stageline.rentals> domain name on May 25, 2014.
4. Respondent uses the disputed domain name to pass itself off as Complainant to offer unauthorized goods and services that directly compete with Complainant’s business.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant asserts rights in the STAGELINE mark based upon registration with the USPTO. Registration with the USPTO is sufficient to establish a complainant’s rights in a mark per Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides a screenshot of the resulting search for “STAGELINE on the Trademark Electronic Search System (“TESS”) (e.g., Reg. No. 1,629,825, registered Jan. 1, 1991). See Compl. Ex. A. Therefore, the Panel finds that the Complainant has rights in the STAGELINE mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s STAGELINE mark. Complainant argues that Respondent’s <stageline.rentals> domain name is confusingly similar to Complainant’s STAGELINE mark because Respondent wholly incorporates the mark in the domain name plus a descriptive gTLD. The addition of a gTLD is insufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Here, Respondent fully incorporates the STAGELINE mark in the disputed domain name and adds the “.rentals” gTLD. Accordingly, the Panel concludes that Respondent’s <stageline.rentals> domain name is identical to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s STAGELINE mark trademark and to use it in its domain name;
(b) Respondent registered the <stageline.rentals> domain name on May 25, 2014;
(c) Respondent uses the disputed domain name to pass itself off as Complainant to offer unauthorized goods and services that directly compete with Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in <stageline.rentals> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the STAGELINE mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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). Additionally, lack of evidence in the record to indicate a respondent is authorized to use complainant’s mark may support a finding that Respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii). 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). The WHOIS information of record identifies Respondent as “Izzy Eli Rodriguez Inc. Izzy Eli Rodriguez Inc.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name;
(f) Complainant argues that Respondent fails to use the <stageline.rentals> in connection with a bona fide offering of goods and services or for a legitimate noncommercial fair use by using the disputed domain name to pass itself off as Complainant. Use of a domain name to pass off as complainant may not be considered a bona fide offering nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii). See 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). Here, Complainant provides screenshots of the webpages associated with the disputed domain name showing Respondent displaying Complainant’s logos and Respondent’s placement on Google ads in an attempt to deceive Internet users into believing Respondent is Complainant or an authorized agent. See Compl. Ex. D. Accordingly, the Panel finds that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) and (iii);
(g) Complainant argues that Respondent fails to use the <stageline.rentals> in connection with a bona fide offering of goods and services or for a legitimate noncommercial fair use by using the disputed domain name to sell counterfeit versions of Complainant’s goods. Use of a disputed domain name to sell counterfeit goods may not equate to a bona fide offer per Policy ¶ 4(c)(i) or a noncommercial or otherwise fair use per Policy ¶ 4(c)(iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”); eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Complainant provides screenshots of the webpages associated with the disputed domain name showing Respondent offering counterfeit versions of Complainant’s products for sale. See Compl. Ex. D. The Panel agrees with Complainant and finds Respondent failed to use the disputed domain name in connection with a bona fide offer of goods and services or for a noncommercial or otherwise legitimate fair use per Policy ¶¶ 4(c)(i) & (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <stageline.rentals> domain name in bad faith by using the disputed domain name to pass itself off as complainant in order to sell counterfeit products. Use of a domain name to pass off as complainant to sell counterfeit products may be evidence of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Here, Complainant provides screenshots of the webpages associated with the disputed domain name showing Respondent displaying Complainant’s logos and counterfeit products for sale. See Compl. Ex. D. Therefore, the Panel finds that Respondent registered and uses the <stageline.rentals> domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the STAGELINE mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stageline.rentals> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 9, 2018
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