Mr. Foamer, Inc. v. Mike Ross
Claim Number: FA1509001637469
Complainant is Mr. Foamer, Inc. (“Complainant”), represented by Isabelle Jung of CRGO Law, Florida, United States. Respondent is Mike Ross (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mrfoamer.org>, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 11, 2015; the Forum received payment on September 11, 2015.
On September 14, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mrfoamer.org> 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 September 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 2015 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@mrfoamer.org. Also on September 16, 2015, 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.
On October 7, 2015, the Forum received email correspondence from Respondent, which was not a timely or formal response to the complaint.
Having received no proper response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 19, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant uses the MR. FOAMER mark in connection with its online retail store services featuring car wash equipment and parts thereof. Additionally, Complainant uses the MR. FOAMER mark in connection with its installation and maintenance services. Complainant has filed the MR. FOAMER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 86,108,666, filed November 2, 2013); Complainant is awaiting approval of the mark. Complainant also has common law rights in the mark that predate Respondent’s registration of the disputed domain name. The <mrfoamer.org> domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Additionally, Respondent does not make a bona fide offering of goods or services through the disputed domain name or provide a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to redirect Internet users to a direct competitor of Complainant, New Wave.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s use of the disputed domain name is to disrupt and compete with Complainant’s business. Respondent is using the disputed domain name in an effort to commercially gain by creating a likelihood of confusion between Complainant’s mark and the products and services of Respondent’s company, New Wave. Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.
Respondent
Respondent did not submit a proper response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <mrfoamer.org> 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(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.”).
Complainant uses the MR. FOAMER mark in connection with its online retail store services featuring car wash equipment and parts, and in connection with its installation and maintenance services. Complainant states that it has filed the MR. FOAMER mark with the USPTO and is awaiting its approval (Reg. No. 86,108,666, filed November 2, 2013).
Where a valid and subsisting trademark registration does not exist for a complainant, panels have seen rights that may exist under the common law. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Complainant argues that because the MR. FOAMER mark has been continuously used by Complainant in connection with its retail, installation, and maintenance services since at least July 2012, it has demonstrated common law rights in the mark for the purposes of Policy ¶ 4(a)(i). Complainant asserts that it started using the MR. FOAMER mark in connection with its online retail store in August 2012, and that it started using the MR. FOAMER mark in connection with the advertising of its services, namely, the installation and maintenance of car wash equipment, in November 2013. Complainant’s website shows the use of the MR. FOAMER mark in connection with Complainant’s online retail store and the advertising of its services. Past panels have found that continued use of a mark and advertising done to promote a mark can establish a complainant’s common law rights. See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); see also AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning). Complainant’s contentions are uncontested, and therefore the Panel finds that Complainant has demonstrated common law rights in the MR. FOAMER mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <mrfoamer.org> domain name is confusingly similar to the MR. FOAMER mark as it incorporates Complainant’s mark in its entirety. Past panels have found confusing similarity pursuant to Policy ¶ 4(a)(i) where a respondent’s disputed domain name wholly incorporates a complainant’s registered mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). The domain name differs from the mark by the elimination of punctuation (“.”) and spacing between words, and the addition of the generic top-level domain (“gTLD”) “.org”. Past panels have seen such alterations as insignificant in distinguishing a disputed domain name from a mark. See Dawson v. Doctor, FA 521036 (Nat. Arb. Forum Sept. 1, 2005) (finding that the <drgem.com> domain name was identical to Complainant’s DR. GEM mark because “…the domain name fully incorporates the mark and merely removes the period after the abbreviation “DR.”); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, the Panel finds that Respondent’s <mrfoamer.org> domain name is confusingly similar to the Mr. FOAMER mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of the MR. FOAMER mark, and that Respondent has no license or authorization to use Complainant’s mark. The WHOIS information lists “Mike Ross” as registrant and Respondent has not submitted any evidence that it has rights or legitimate interests in the domain name. Therefore, the Panel finds there is no basis in the record to find Respondent 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 [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Specifically, Complainant argues that Respondent uses the disputed domain name to redirect Internet users to the website of a direct competitor of Complainant, New Wave. Past panels have found that a respondent’s use of a disputed domain name to sell products and services in competition with the complainant does not constitute a bona fide offering of goods or service or a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Accordingly, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant has proved this element.
Complainant argues that Respondent is using the disputed domain name to disrupt Complainant’s business and to divert Complainant’s customers from Complainant to Respondent’s company. Past panels have found bad faith pursuant to Policy ¶ 4(b)(iii) where a respondent uses a disputed domain name to divert a complainant’s customers to the respondent’s competing business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Accordingly, the Panel finds that Respondent engaged in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant contends that Respondent is using the disputed domain name in an effort to commercially gain by creating a likelihood of confusion between Complainant’s mark and the products and services of Respondent’s competing company, New Wave. Specifically, Complainant argues that Respondent seeks to confuse customers as to the source of the products or services sold by Respondent’s company and make customers believe that they are accessing Complainant’s website. Past panels have found bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent used the disputed domain name to sell products and services that were in direct competition with the complainant. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s existence and mark. In so arguing, Complainant alleges that representatives of Complainant’s and Respondent’s companies met on several occasions between July 2012 and December 2013 and that Complainant’s president even purchased products from Respondent’s company between November 2011 and March 2012. Complainant also asserts that it was involved in federal litigation with Respondent in October 2013. Complainant states that Respondent was well-aware of Complainant’s mark at the time Respondent registered the disputed domain name, and that Respondent’s registration of the disputed domain name was a retaliatory act. Past panels have found bad faith registration pursuant to Policy ¶ 4(a)(iii) where a respondent was well-aware of a complainant’s mark at the time respondent registered the disputed domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Accordingly, the Panel finds that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <mrfoamer.org> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: October 23, 2015
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