Zaccaro Grimaldi, Inc. v. Doris Schroeder
Claim Number: FA1806001793338
Complainant is Zaccaro Grimaldi, Inc. (“Complainant”), represented by Sarah M. Stemer of Lerner Greenberg Stemer LLP, Florida, USA. Respondent is Doris Schroeder (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <karinagrimaldidress.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2018; the Forum received payment on June 22, 2018.
On June 26, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <karinagrimaldidress.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 July 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 2018 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@karinagrimaldidress.com. Also on July 9, 2018, 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 August 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Zaccaro Grimaldi, has used its KARINA GRIMALDI mark in connection with its clothing business since at least October 1, 2006. Complainant established rights in the KARINA GRIMALDI mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,802,478, June 15, 2010). See Amend. Compl. Annex 5. Respondent’s <karinagrimaldidress.com> domain name is confusingly similar to Complainant’s mark as it merely adds the generic term “dress” and the generic top-level domain (“gTLD”) “.com” to the mark.
ii) Respondent does not have rights or legitimate interests in the <karinagrimaldidress.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its KARINA GRIMALDI mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Doris Schroeder” as the registrant. See Compl. Annex 1. Further, Respondent is not using the <karinagrimaldidress.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to pass off as Complainant and sell clothing.
iii) Respondent registered and is using the disputed domain name in bad faith. Respondent is using the domain name to create confusion with Complainant’s mark and divert consumers for Respondent’s commercial gain.
B. Respondent
Respondent did not submit a Response.
1. Respondent registered the <karinagrimaldidress.com> domain name on May 8, 2015.
2. Complainant established rights in the KARINA GRIMALDI mark through registration with the USPTO (e.g., Reg. No. 3,802,478, June 15, 2010).
3. The <karinagrimaldidress.com> website offers clothing products that directly compete with Complainant’s clothing business.
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(f), 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 (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 established rights in the KARINA GRIMALDI mark through registration with the USPTO (e.g., Reg. No. 3,802,478, June 15, 2010). See Amend. Compl. Annex 5. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). As such, the Panel holds that Complainant established rights in the KARINA GRIMALDI mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <karinagrimaldidress.com> domain name is confusingly similar to Complainant’s mark as it merely adds the generic term “dress” and the gTLD “.com.” The addition of a generic term and a gTLD do not negate confusing similarity between a disputed domain name and a mark. Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Accordingly, the Panel concludes that Respondent’s <karinagrimaldidress.com> domain name is confusingly similar to Complainant’s mark.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its KARINA GRIMALDI mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <karinagrimaldidress.com> domain name lists “Doris Schroeder” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <karinagrimaldidress.com> domain name.
Further, Respondent uses the <karinagrimaldidress.com> domain name to pass off as Complainant and sell clothing. Use of a domain name to pass off as a complainant and sell competing goods may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Here, Complainant alleges that the <karinagrimaldidress.com> website offers clothing products that directly compete with Complainant’s clothing business. See Amend. Compl. Annex 3. Therefore, the Panel finds that Respondent failed to use the disputed domain name for a bona fide offering or fair use under the Policy.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant claims that Respondent is using the domain name to create confusion with Complainant’s mark for Respondent’s commercial gain. Use of a domain name to attract Internet users to Respondent’s domain name and create confusion as to the source, sponsorship, affiliation or endorsement of the content therein may evidence bad faith. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As mentioned previously, Complainant alleges that Respondent uses the <karinagrimaldidress.com> domain name to pass off as Complainant and sell competing products. See Amend. Compl. Annex 3. Therefore, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel determines that relief shall be GRANTED.
Accordingly, it is Ordered that the <karinagrimaldidress.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 3, 2018
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