DECISION

 

QUINCO & CIE INC. v. Ehren Schaiberger

Claim Number: FA2006001901282

 

PARTIES

Complainant is QUINCO & CIE INC. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Ehren Schaiberger (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <smarttiles.com>, registered with SNAPNAMES 49, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.

 

Diane Cabell, Clive Elliott, QC, and John J. Upchurch as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 22, 2020; the Forum received payment on June 22, 2020.

 

On June 23, 2020, SNAPNAMES 49, LLC confirmed by e-mail to the Forum that the <smarttiles.com> domain name is registered with SNAPNAMES 49, LLC and that Respondent is the current registrant of the name. SNAPNAMES 49, LLC has verified that Respondent is bound by the SNAPNAMES 49, 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 June 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2020 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@smarttiles.com.  Also on June 25, 2020, 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.

 

A timely Response was received and determined to be complete on July 20, 2020.

 

On July 29, 2020, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Diane Cabell, Clive Elliott, QC, and John J. Upchurch as Panelists.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Quinco & Cie Inc., offers products for kitchen and bathroom redesign. Complainant has rights in the SMART TILES mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,093,282, registered May 16, 2006). See Compl. Ex. 3. Respondent’s <smarttiles.com> domain name is confusingly similar to Complainant’s SMART TILES mark because it incorporates the entirety of the mark and merely adds the “.com” top-level domain (“TLD”).

 

2.    Respondent does not have rights or legitimate interests in the <smarttiles.com> domain name. Respondent is not authorized to use Complainant’s SMART TILES mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to suggest an affiliation with Complainant and divert Internet users.

 

3.    Respondent registered and uses the <smarttiles.com> domain name in bad faith. Respondent offered the disputed domain name for sale. Additionally, Respondent has engaged in a pattern of preventing companies from reflecting their trademarks in corresponding domain names. Further, Respondent had actual knowledge of Complainant’s rights in the SMART TILES mark when the disputed domain name was registered.

 

B.   Respondent

1.    Complainant does not have a monopoly over the term “smart tiles” as the term is being used commercially by numerous companies around the world in a wide variety of areas.

 

2.    Respondent uses the <smarttiles.com> domain name in connection with a bona fide offering of goods or services because Respondent is in the business of registering, holding, and selling domain names. Additionally, there are a wide variety of uses for the disputed domain name unrelated to Complainant and its business.

 

3.    Respondent registered the <smarttiles.com> domain name in good faith. Respondent’s offer for the sale of the domain name is reasonable. Additionally, Respondent’s business does not establish a pattern of bad faith domain name registration. Finally, Respondent had no knowledge of Complainant’s rights in the SMART TILES mark at the time it obtained the domain name.

 

FINDINGS

Respondent has rights or legitimate interests in the subject domain name pursuant to Policy ¶ 4(a)(ii); the Respondent did not register or use the subject name in bad faith.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Complainant asserts rights in the SMART TILES mark based upon the registration with the USPTO (e.g., Reg. No. 3,093,282, registered May 16, 2006). See Compl. Ex. 3. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of its registration of the SMART TILES mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <smarttiles.com> domain name is confusingly similar to Complainant’s SMART TILES mark because it incorporates the entirety of the mark and merely adds the “.com” TLD. Addition of a TLD to a mark is irrelevant to determining confusing similarity under Policy ¶ 4(a)(i). See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Thus, the Panel agrees with Complainant and finds that the disputed domain name is confusingly similar to Complainant’s SMART TILES mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).

 

Respondent argues that it uses the <smarttiles.com> domain name in connection with a bona fide offering of goods or services because Respondent is in the business of registering, holding, and selling domain names. Registration of a domain name for the purposes of resale may qualify as legitimate use of the domain name under Policy ¶ 4(a)(ii). See Platterz Inc. v. Andrew Melcher, FA 1729887 (Forum June 19, 2017) (holding that “investing in genuinely generic terms, for purpose of resale, is a legitimate business and that the acquisition of domain names consisting of common, dictionary terms for resale can confer rights and legitimate interests upon entrepreneurs who engage in this activity”). Respondent argues that it purchased the disputed domain name for resale because it had a variety of potential uses. Respondent provides examples of commercial uses of the term “smart tiles” to illustrate the wide scope of possible uses. See Resp. Annex B. The Panel finds that Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

As the Panel concluded that Respondent has rights or legitimate interests in the <smarttiles.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <smarttiles.com> domain name REMAIN WITH Respondent.

 

 

Diane Cabell, Clive Elliott, QC,

John J. Upchurch

Dated:  August 12, 2020

 

 

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