R and H Direct, LLC v. COMUNIKARE SRL Societa/Ditta COMUNIKARE SRL Societa/Ditta
Claim Number: FA1512001653019
Complainant is R and H Direct, LLC (“Complainant”), represented by Jessica Pfau of Phillips & Pfau, LLP, New York, USA. Respondent is COMUNIKARE SRL Societa/Ditta COMUNIKARE SRL Societa/Ditta (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <comfortwash360.com>, registered with Tucows Domains 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 18, 2015; the Forum received payment on December 18, 2015.
On December 20, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <comfortwash360.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 December 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2016 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@comfortwash360.com. Also on December 22, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in WOOF WASHER 360 and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the purposes of the decision which follows, the only pertinent factual finding is that Complainant owns United States Patent & Trademark Office (“USPTO”) Trademark Reg. No. 4,810,152, registered on September 8, 2015 for the trademark, WOOF WASHER 360.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – an investigation into whether a complainant has rights in a trademark and an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO registration for WOOF WASHER 360 the Panel is satisfied that it has trademark rights in that expression (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
Complainant alleges that that disputed domain name is confusingly similar to the trademark. Panel cannot agree. It is well accepted that for the purposes of comparison the gTLD can generally be disregarded. That is certainly the case here. The comparison therefore reduces to WOOF WASHER 360 with “comfortwash360”.
Panel accepts that in this case the lack of punctuation is not a distinguishing feature since both terms can easily be understood in terms of their constituent parts. Nonetheless, the only element common to the compared terms is “360”. The term WASHER has been truncated in the domain name to “wash” and the term WOOF replaced entirely with the quite different word “comfort”.
Inspected visually, the compared terms are not particularly similar. Compared aurally, they sound very different. Conceptually, they bear almost no similarity, the term WOOF alluding to some sort of washing facility for dogs, but the word “comfort” being of indeterminate meaning. The commonality of the number “360” is not, of itself, enough to bring the compared terms closer together since it is not an especially strong element, carrying suggestions of a complete, or “all round” washing process. Finally, taken as wholes, the compared terms do not convey the same overall idea so strongly that they can be considered to be confusingly similar.
Panel finds that the domain name is not confusingly similar to the trademark and so finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.
No findings required (see Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002).
No findings required (see Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002).
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <comfortwash360.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: January 29, 2016
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