Smooth Corporation v. Cambridge Capital, Ltd
Claim Number: FA0606000731652
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 Cambridge Capital, Ltd (“Respondent”), The Bahamas Financial Center, Shirley & Charlotte Streets, Nassau, Island of New Provid Bahamas.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <i-flooring.com>, registered with Dstr Acquisition Vii, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 14, 2006.
On June 15, 2006, Dstr Acquisition Vii, Llc confirmed by e-mail to the National Arbitration Forum that the <i-flooring.com> domain name is registered with Dstr Acquisition Vii, Llc and that Respondent is the current registrant of the name. Dstr Acquisition Vii, Llc has verified that Respondent is bound by the Dstr Acquisition Vii, Llc 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 June 16, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 6, 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-flooring.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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-flooring.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-flooring.com> domain name.
3. Respondent registered and used the <i-flooring.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Smooth Corporation, is a leading retailer of flooring on the Internet. Since 1998, Complainant has continuously used the IFLOOR.COM mark in connection with the marketing and distribution of its flooring products through its website, located at the <ifloor.com> domain name. Moreover, Complainant has prominently used the IFLOOR.COM mark in its retail stores throughout the United States that serve as both pick-up points for Internet sales and locations for walk-in customers to shop. Complainant’s business has grown extensively since its inception, and its IFLOOR.COM mark has been featured in several publications, as well as in popular home design and renovation television shows. Furthermore, Complainant has allocated $10 million towards marketing and advertising the IFLOOR.COM mark for the current year. Additionally, Complainant holds a trademark registration on the Supplemental Registration of the United States Patent and Trademark Office (“USPTO”) for the IFLOOR.COM mark (Reg. No. 2,733,575 issued July 1, 2003).
Respondent, Cambridge Capital, Ltd, registered the <i-flooring.com> domain name registration on December 23, 2003. Respondent’s disputed domain name resolves to a website containing links to several third-party websites offering flooring products and services that directly compete with Complainant.
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 is not required to hold a registered trademark or service mark in the IFLOOR.COM mark in order to demonstrate rights pursuant to Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy). Moreover, while Policy ¶ 4(a)(i) requires Complainant to demonstrate rights in a mark in order pursue a UDRP claim, Complainant is not required to establish exclusive rights in the mark. See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require the complainant to demonstrate ‘exclusive rights,’ but only that the complainant has a bona fide basis for making the complaint in the first place).
The Panel finds that Complainant has established rights in the IFLOOR.COM mark pursuant to Policy ¶ 4(a)(i), as Complainant has demonstrated common law rights through use that sufficiently creates secondary meaning in the mark. Specifically, Complainant’s prominent use of the IFLOOR.COM mark in the marketing and advertising of its products and services, as well as the media coverage of the mark in several publications and television shows, created the necessary secondary meaning in the mark. See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Furthermore, the Panel finds that Respondent’s <i-flooring.com> domain name is confusingly similar to Complainant’s IFLOOR.COM mark under Policy ¶ 4(a)(i). Respondent’s disputed domain name is composed of Complainant’s IFLOOR.COM mark, with the addition of a hyphen and the suffix “ing.” In Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003), the panel found that the addition of punctuation marks such as hyphens was irrelevant in determining confusing similarity under Policy ¶ 4(a)(i). Moreover, in CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000), the panel concluded that the addition of a hyphen between words of the complainant’s mark did not decrease the confusing similarity between the disputed domain name and the mark. Additionally, in Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000), the panel found that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON. Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In accord with Policy ¶ 4(a)(ii), Complainant initially bears the burden of establishing that Respondent lacks rights or legitimate interests in connection with the disputed domain name. However, once Complainant sufficiently demonstrates a prima facie case, the burden then shifts, and Respondent must establish that it has rights or legitimate interests with respect to the disputed domain name under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that 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.”). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to resolve whether Respondent has any rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶ 4(c).
The evidence on record does not suggest that Respondent is commonly known by the <i-flooring.com> domain name pursuant to Policy ¶ 4(c)(ii). Respondent’s WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Moreover, the evidence on record fails to demonstrate that Respondent is affiliated with Complainant, or is licensed or otherwise authorized by Complainant to use the IFLOOR.COM mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Furthermore, Respondent’s <i-flooring.com>
domain name resolves to a website featuring links to third-party websites that
offer flooring products and services in direct competition with Complainant’s
business. As a result, the Panel finds
that Respondent’s use of the disputed domain name constitutes neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Gardens Alive, Inc. v.
D&S Linx, FA 203126 (Nat. Arb. Forum
Nov. 20, 2003) (finding that the respondent used a domain name for commercial
benefit by diverting Internet users to a website that sold goods and services
similar to those offered by the complainant and thus, was not using the name in
connection with a bona fide offering of goods or services nor a
legitimate noncommercial or fair use); see also TM Acquisition
Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding
that the respondent’s diversionary use of the complainant’s marks to send
Internet users to a website which displayed a series of links, some of which
linked to the complainant’s competitors, was not a bona fide offering of
goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
According to the evidence on record, Respondent is using the
<i-flooring.com> domain name, which is confusingly similar to
Complainant’s IFLOOR.COM mark, to operate a website containing links to the
competitors of Complainant’s Internet retail flooring business. Consequently, the Panel finds that
Respondent’s registration and use of the <i-flooring.com> domain
name evinces registration and use in bad faith pursuant to Policy ¶
4(b)(iv). In State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum
Sept. 12, 2000), the respondent registered the <bigtex.net> domain name
in order to infringe on the complainant’s goodwill and attract Internet users
to the respondent’s website.
Consequently, the panel found that the respondent registered and used
the disputed domain name in bad faith under Policy ¶ 4(b)(iv). Moreover, in Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb.
Forum Oct. 30, 2000), the panel found that the respondent engaged in bad faith
registration and use by using domain names that were identical or confusingly
similar to the complainant’s mark to redirect users to a website that offered
services similar to those offered by the complainant. Therefore, in the instant
case, the Panel finds that Respondent registered and used the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(iv).
Additionally, taking
into consideration Respondent’s use of the <i-flooring.com>
domain name to divert Internet users to the
websites of Complainant’s competitors, the Panel finds that Respondent
registered and used the disputed domain name in bad faith under Policy ¶
4(b)(iii). The panel in Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000), found that a respondent violates Policy ¶
4(b)(iii) when the respondent has diverted business from the complainant to a
competitor’s website. See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites). Thus, the Panel finds that Respondent
registered and used the <i-flooring.com> domain name primarily for the purpose of disrupting
the business of Complainant, thereby demonstrating bad faith registration and
use pursuant to Policy ¶ 4(b)(iii).
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-flooring.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson Jr., Panelist
Dated: July 27, 2006
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