Tolix Steel Design v. Melissa Edelman / Melissa Edelman Antiquaire
Claim Number: FA1810001813345
Complainant is Tolix Steel Design (“Complainant”), represented by Emmanuel Bouttier, France. Respondent is Melissa Edelman / Melissa Edelman Antiquaire (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tolix.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on October 24, 2018; the Forum received payment on October 24, 2018.
On October 24, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tolix.us> domain name (the “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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of November 23, 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@tolix.us. Also on October 30, 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 November 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 usTLD 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 usTLD Policy, usTLD 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 has been in the business of selling steel furniture under its TOLIX mark since the 1930s. It has rights in the TOLIX mark through its trademark registrations with multiple trademark authorities around the world, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,398,830, registered Mar. 18, 2008). Respondent’s Domain Name is identical to Complainant’s TOLIX mark as it incorporates the mark verbtim and merely adds a “.us” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not authorized or licensed to use Complainant’s TOLIX mark and is not commonly known by the Domain Name. Additionally, Respondent does not use the Domain Name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses it to redirect users to its own web site where it sells Complainant’s furniture and products manufactured by others.
Respondent registered and uses the Domain Name in bad faith. Respondent attempts to attract, for commercial gain, users to the web site resolving from it, where Respondent creates confusion as to the source, sponsorship, affiliation, or endorsement of the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision except where differences in the two Policies require a different analysis.
In view of Respondent's failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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.”).
The Panel finds as follows with respect to the matters at issue in this proceeding.
Complainant registered its TOLIX mark with the USPTO (Reg. No. 3,398,830) on March 18, 2008. See, Complaint Exhibit 4. Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in that mark for the purposes of Policy ¶ 4(a)(i). Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s Domain Name is identical to the TOLIX mark, as it incorporates the mark in its entirety, merely adding a “.us” ccTLD. This change is not sufficient to distinguish it from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (“The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”).
For the reasons discussed above, the Panel finds that the Domain Name is identical or confusingly similar to the TOLIX mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to respondent of the dispute, respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(iii) Respondent (as an individual, business or other organization) have been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iv) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) it neither owns nor has any beneficial interest in a trademark or service mark that is identical to the Domain Name, (ii) it is not commonly known by the Domain Name, (iii) it does not have permission from Complainant to use the TOLIX mark, and (iii) it is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because using an identical domain name to redirect Internet traffic to one’s own web site that offers to sell goods produced by Complainant as well as its competitors, as Respondent is doing, cannot constitute a bona fide offering of goods and services. These allegations are supported by competent evidence.
According to the WHOIS report attached to the Complaint as Exhibit 6, the registrant is “Melissa Edelman,” and the registrant organization is “Melissa Edelman Antiquaire.” Neither of these names bears any resemblance to the Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant states that it has never licensed or authorized Respondent to use its TOLIX mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is 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. 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).
There is nothing in the available evidence to indicate that Respondent owns or has a beneficial interest in a trademark or service mark identical to the Domain Name which would satisfy Policy ¶ 4(c)(i). In Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002), the panel held that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i).
Complaint Exhibit 8 is a screenshot of the landing page for the web site resolving from the Domain Name. It welcomes the visitor and reads, “Please visit our main website at Antiquaireonline.com to view all of the Tolix© products available.” A “Contact” box appears immediately below to enable the visitor to do that. Complaint Exhibit 9 is a screenshot of pages of the web site resolving from <antiquiaireonline.com> that offer a line of Tolix products for sale. At the top of the first of these pages is a line reading “The entire Tolix product line is available at Antiquaire!” The fact that Respondent offers to sell Complainant’s goods and may use Complainant’s mark to advertise that does not confer upon Respondent the right to use Complainant’s mark in a Domain Name. Using a domain name that reflects a complainant’s mark to sell its goods, but without the complainant’s authorization, has often been held not to qualify as a bona fide offering of goods and services within the meaning Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iv). The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use), Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is 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).”).
At the end of Complaint Exhibit 9 are three pages that appear to advertise Respondent’s business as a whole in that they list all of the brands and items it offers for sale. There are many listed, and it is evident that Respondent is selling not only goods manufactured by Complainant but by many others as well. It is thus clear that Respondent is using the identical Domain Name to attract Internet traffic intended for Complainant to her web site, where she sells products manufactured by many of Complainant’s competitors. Using a confusingly similar domain name to sell competing goods or services does not qualify as a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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 made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s web site or location or of a product of service on respondent’s web site or location.
Respondent’s use of the Domain Name as demonstrated by the evidence discussed above in connection with the rights or legitimate interests analysis also demonstrates its bad faith. It is clear from that evidence that Respondent is using the Domain Name intentionally to attempt to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant's TOLIX mark as to the source, sponsorship, affiliation, or endorsement of Complainant. Respondent is obtaining commercial gain from its use of the Domain Name and the resolving web sites in that it profits from any sale of goods manufactured by Complainant. This fits squarely within the circumstances articulated by Policy ¶ 4(b)(iv). Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Stanley Logistics, Inc. v. Motherboards.com, FA 128068 (Forum Dec. 2, 2002) (finding that the respondent, through the use of the complainant’s mark to redirect Internet users to a website selling the complainant’s product, placed itself without the complainant’s consent in a preferred position with respect to other distributors, which caused consumer confusion and evidenced bad faith registration and use of the domain name).
Finally, it is obvious from the long-standing presence of Complainant in the steel furniture industry, and the close similarity between Complainant’s mark and the Domain Name, that Respondent had actual knowledge of Complainant’s TOLIX mark on October 3, 2010, when it registered the Domain Name. See, Complaint Exhibit 6 for registration date. The Policy acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <tolix.us> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Date: November 29, 2018
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