Smooth Corporation v. Netpoint Systems, Ltd.
Claim Number: FA0605000697820
Complainant is Smooth Corporation (“Complainant”), represented by Karl S. Kronenberger, of Kronenberger Hanley, LLP, 220 Montgomery Street, Suite 1920, San Francisco, CA 94104. Respondent is Netpoint Systems, Ltd. (“Respondent”), Ehte 5-79, Tallinn, HM 10318, Estonia.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <i-floor.com>, registered with Go Daddy Software, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 28, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 2, 2006.
On May 2, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <i-floor.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 30, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@i-floor.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 2, 2006 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <i-floor.com> domain name is confusingly similar to Complainant’s IFLOOR.COM mark.
2. Respondent does not have any rights or legitimate interests in the <i-floor.com> domain name.
3. Respondent registered and used the <i-floor.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Smooth Corporation, is a leading flooring retailer on the Internet. Complainant started doing business in 1998, and on December 15, 1998, Complainant began to use the IFLOOR.COM mark, under which it currently sells its products and services. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the IFLOOR.COM mark (Reg. No. 2,733,575 issued July 1, 2003).
Respondent registered the <i-floor.com> domain name on August 2, 2003. Respondent is using the disputed domain name to redirect Internet users to Respondent’s commercial website that features links to competing third-party websites.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 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 (Nat. Arb. 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.”).
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 has submitted evidence of its registration of
the IFLOOR.COM mark with the USPTO. The
Panel finds that such evidence establishes Complainant’s rights in the mark
pursuant to Policy ¶ 4(a)(i). See
Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <i-floor.com>
domain name is confusingly similar to Complainant’s IFLOOR.COM
mark because Respondent’s domain name
incorporates Complainant’s mark in its entirety and merely adds a hyphen
between “i” and “floor.” The addition
of a hyphen does not negate the confusing similarity between the disputed
domain name and Complainant’s mark.
Thus, the Panel finds that the disputed domain name is confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen
S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of
punctuation marks such as hyphens is irrelevant in the determination of
confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(finding that hyphens and top-level domains are irrelevant for purposes of the
Policy).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), the burden is on Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent is using the <i-floor.com> domain
name to redirect Internet users to Respondent’s commercial website that
features links to competing third-party flooring websites. Respondent’s use of a domain name that is
confusingly similar to Complainant’s IFLOOR.COM mark to redirect Internet users
interested in Complainant’s products and services to a website that offers
links to services in competition with Complainant is not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant
to Policy ¶ 4(c)(iii). See 24
Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale,
FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the
<24hrsfitness.com>, <24-hourfitness.com> and
<24hoursfitness.com> domain names to redirect Internet users to a website
featuring advertisements and links to Complainant’s competitors could not be
considered a bona fide offering of goods or services or a legitimate
noncommercial or fair use); see also DLJ Long Term
Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed
domain name in connection with a bona fide offering of goods and services
because Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are
advertised.”).
Moreover, Complainant asserts, without contradiction from Respondent, that Respondent is neither commonly known by the <i-floor.com> domain name nor authorized to use a domain name featuring Complainant’s mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) complainant’s prior rights in the domain name precede that respondent’s domain name registration; (3) that respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark and never applied for a license or permission from a complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleged that Respondent acted in bad faith by registering and using a domain name that contains Complainant’s registered mark in its entirety. Respondent is using the <i-floor.com> domain name to redirect Internet users to Respondent’s commercial website that features links to competing third-party websites. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use under to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Based on the uncontested evidence presented by Complainant, the Panel infers that Respondent receives click-through fees for diverting Internet users to a website offering links to competing flooring products and services. Respondent’s domain name incorporating Complainant’s mark is capable of creating confusion as to Complainant’s affiliation with the disputed domain name and resulting website. Thus, Respondent’s use of the <i-floor.com> domain name amounts to bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant’s mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <i-floor.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 15, 2006
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