DECISION

 

Steelcase Development Corporation v. Dave Wright

Claim Number: FA0504000451183

 

PARTIES

Complainant is Steelcase Development Corporation (“Complainant”), represented by Lars E. Gulbrandsen of Quarles & Brady LLP, 411 E. Wisconsin Ave., Suite 2040, Milwaukee, WI 53202.  Respondent is Dave Wright (“Respondent”), 11821 Buckner Rd., Austin, TX 78726.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <steelcase.us>, registered with Blue Razor Domains, Inc.

 

PANEL

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.

 

Hon. Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 5, 2005; the Forum received a hard copy of the Complaint on April 6, 2005.

 

On April 7, 2005, Blue Razor Domains, Inc. confirmed by e-mail to the Forum that the domain name <steelcase.us> is registered with Blue Razor Domains, Inc. and that Respondent is the current registrant of the name.  Blue Razor Domains, Inc. has verified that Respondent is bound by the Blue Razor Domains, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On April 11, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 2, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On May 11, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant

 

1. The domain name registered by Respondent, <steelcase.us>, is identical to

Complainant’s STEELCASE mark.

 

2.  Respondent has no rights to or legitimate interests in the <steelcase.us> domain name.

 

3.  Respondent registered and used the <steelcase.us> domain name in bad faith.

 

 

B. Respondent failed to submit a response in this proceeding.

 

 

FINDINGS

Complainant, Steelcase Development Corporation, is a wholly owned subsidiary of Steelcase Inc. (collectively “Complainant”).  Complainant was formed in 1999 for the specific purpose of owning, managing, licensing and enforcing the intellectual property rights of Steelcase Inc. and its companies. 

 

Complainant is a global leader in the office furniture industry, providing a wide variety of architecture, furniture and technology products.  Complainant was founded in 1912 and serves its customers through a network of independent dealers throughout the world, including 900 locations and manufacturing facilities.  Complainant’s 2004 revenue was approximately $2.3 billion and Complainant’s stock is traded on the New York Stock Exchange.  Additionally, Complainant owns the domain name registration for the <steelcase.com> domain name at which Complainant operates a website.

 

Complainant holds numerous registrations with the United States Patent and Trademark Office for the STEELCASE mark (including Reg. No. 534,526 issued December 12, 1950; Reg. No. 1,003,738 issued February 4, 1975; and Reg. No. 1,081,048 issued January 3, 1978) and with other foreign trademark authorities throughout the world. 

 

Respondent registered the <steelcase.us> domain name on June 10, 2004, long after Complainant’s first use and registration of its STEELCASE mark.  The domain name resolves to a website that displays a generic search engine, links to various categories of products and services, and advertisments.  Additionally, the website states that the domain name registration is for sale and requests offers from visitors of the website. 

 

DISCUSSION

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.”

 

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the 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.

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant has established presumptive rights in the STEELCASE mark through registration with the United States Patent and Trademark Office.  Since Respondent has not disputed Complainant’s prima facie case of rights, the Panel finds that Complainant has rights in the STEELCASE mark for purposes of Policy ¶ 4(a)(i).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

 

The <steelcase.us> domain name registered by Respondent is identical to Complainant’s STEELCASE mark, as the domain name fully incorporates Complainant’s mark and merely adds the country-code “.us.”  It is established precedent under the Policy and the UDRP that the addition of a country-code is of no legal significance in making a finding under Policy ¶ 4(a)(i).  See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Ferrari S.p.A. v. Parts Exchange.com, Inc., FA 271108 (Nat. Arb. Forum July 5, 2004) (finding the <ferrari.us> domain name to be identical to the complainant’s FERRARI mark).

 

Accordingly, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Respondent’s failure in this instance to submit a response to the allegations of the Complaint entitles the Panel to accept all reasonable allegations and inferences in the Complaint as true unless clearly contradicted by the evidence.  See 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.”); see also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a response a panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

 

Complainant asserts that Respondent has no rights or legitimate interests in the <steelcase.us> domain name that contains Complainant’s STEELCASE mark in its entirety.  Complainant has made a prima facie case in support of its allegations, which shifts the burden to Respondent to make a showing that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  However, Respondent has failed to respond to Complainant’s allegations and to provide evidence of rights or legitimate interests.  Respondent has, therefore, failed to meet its burden and the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that, once a complainant asserts that a respondent has no rights or legitimate interests with respect to the domain, the burden shifts to that respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by a complainant that a respondent has no rights or legitimate interests is sufficient to shift the burden of proof to that respondent to demonstrate that such rights or legitimate interests do exist); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise).

 

The <steelcase.us> domain name resolves to a website that features a generic search engine, advertisements and links to various products and services.  In addition, the website states that the <steelcase.us> domain name is for sale and invites Internet users to make an offer to purchase the domain name.  Respondent’s use of a domain name identical to Complainant’s registered mark to divert Internet users to a website featuring a search engine and advertisements is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).  Furthermore, Respondent’s willingness to sell the domain name registration suggests that Respondent lacks rights and legitimate interests in the disputed domain name.  See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).

 

Furthermore, Complainant claims that there is nothing to suggest that Respondent is the owner or beneficiary of a trade or service mark that is identical to the <steelcase.us> domain name or that Respondent is commonly know by the domain name.  Without any response from Respondent, the Panel is left with no evidence to rebut Complainant’s assertions.  Thus, the Panel determines that Respondent has failed to establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Thus, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The <steelcase.us> domain name resolves to a website that offers the domain name registration for sale and solicits offers from Internet users.  The Panel determines that Respondent’s registration of an domain name identical to Complainant’s STEELCASE mark and subsequent use of the domain name to offer the domain name registration for sale and to request offers from Internet users who access the website is evidence of bad faith registration under Policy ¶ 4(b)(i).  See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (“[G]eneral offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith.”); see also General Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the respondent registered and used the domain name in bad faith by using the domain name to direct users to a general site offering the domain name for sale); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).

 

Respondent’s registration of a domain name that is identical to Complainant’s STEELCASE mark suggests that Respondent knew of Complainant’s rights in the STEELCASE mark.  Furthermore, Complainant’s registration of its mark with the United States Patent and Trademark Office bestows upon Respondent constructive knowledge of Complainant’s mark.  Registration of a domain name identical to Complainant’s mark with actual or constructive knowledge of Complainant’s rights in the mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when the respondent reasonably should have been aware of the complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <steelcase.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: May 18, 2005