DECISION

 

Floor Covering Associates, Inc. v. Jay Jones / The Floor Store

Claim Number: FA2012001926869

 

PARTIES

Complainant is Floor Covering Associates, Inc. (“Complainant”), represented by Jennifer Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is Jay Jones / The Floor Store (“Respondent”), North Carolina, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <efloorstores.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 30, 2020; the Forum received payment on December 30, 2020.

 

On December 31, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <efloorstores.com> 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 January 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2021 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@efloorstores.com.  Also on January 4, 2021, 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 29, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

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

 

PRELIMINARY ISSUE: OTHER CORRESPONDENCE

Respondent has provided the Forum with additional correspondence. The Forum has determined that this correspondence is not considered a Response. Based upon the allegations in the Complaint, there is sufficient information to render a decision and the Panel chooses to do so without additional information, and shall disregard Respondent’s correspondence.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant, Floor Covering Associates, Inc., is in the business of providing carpeting, flooring, rugs, and related accessories and services. Complainant has rights in the EFLOORS.COM mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 4,450,878, registered Dec. 17, 2013). See Compl. Ex. F. Respondent’s <efloorstores.com> domain name is identical or confusingly similar to Complainant’s EFLOORS.COM mark as it merely adds the descriptive term “stores” to the mark.

 

Respondent lacks rights and legitimate interests in the <efloorstores.com> domain name as it is not commonly known by the disputed domain name and has not been licensed or otherwise permitted to use the EFLOORS.COM mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent advertizes goods and services in direct competition with Complainant.

 

Respondent registered and uses the <efloorstores.com> domain name in bad faith. Respondent uses the disputed domain name to promote and advertise services that are directly competitive with Complainant. Additionally, Respondent’s registration of the domain name is an act of typosquatting. Finally, Respondent registered the disputed domain name with actual or constructive notice of Complainant’s rights in the EFLOORS.COM mark.

 

B.   Respondent

Respondent did not submit a response to this proceeding.

 

FINDINGS

1.    Respondent’s <efloorstores.com> domain name is confusingly similar to Complainant’s EFLOORS.COM mark.

 

2.    Respondent does not have any rights or legitimate interests in the <efloorstores.com> domain name.

 

3.    Respondent registered or used the <efloorstores.com> domain 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.

 

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 set forth in a complaint.

 

Identical and/or Confusingly Similar

Complainant asserts rights in the EFLOORS.COM mark through its registration with the USPTO. Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant provides evidence of registration with the USPTO (e.g. Reg. 4,450,878, registered Dec. 17, 2013). See Compl. Ex. F. Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <efloorstores.com> domain name is nearly identical to Complainant’s EFLOORS.COM mark as it merely adds the descriptive term “stores” to the mark. Addition of a generic and/or descriptive term to a mark does not necessarily negate confusing similarity between a domain name and the mark under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore, the Panel finds the disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 argues that Respondent lacks rights and legitimate interests in the <efloorstores.com> domain name as it is not commonly known by the disputed domain name and has not been licensed or otherwise permitted to use the EFLOORS.COM mark. When no response is submitted, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Additionally, lack of authorization to use a mark further evidences that a respondent lacks rights and legitimate interests in the mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the WHOIS information of record identifies the registrant as “Jay Jones / The Floor Stores” and nothing in the record rebuts Complainant’s assertion that it never authorized Respondent to use the EFLOORS.COM mark in the disputed domain name. See Compl. Ex. A. Complainant notes that Respondent’s business is called “The Floor Store,” but asserts that this differs from <efloorstores.com> and therefore Respondent is not commonly known by the domain name. The Panel agrees and finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Additionally, Complainant claims that Respondent does not use the <efloorstores.com> domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use but instead advertises goods and services in direct competition with Complainant. Use of a disputed domain name to divert Internet users to a competing webpage is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provides screenshots of Respondent’s resolving website and notes that it advertises and purports to offer services in the same area as Complainant’s business. See Compl. Exs. B & C. Thus, the Panel agrees that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <efloorstores.com> domain name in bad faith because Respondent uses the disputed domain name to promote and advertise services that are directly competitive with Complainant. Use of a confusingly similar domain name in competition with a complainant is considered bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). As previously noted, Complainant provides screenshots of Respondent’s resolving website and notes that it advertises and purports to offer services in the same area as Complainant’s business. See Compl. Exs. B & C. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).

 

Complainant also argues that Respondent’s registration of the <efloorstores.com> domain name is an act of typosquatting in bad faith. Typosquatting may act as independent evidence of bad faith per Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Complainant claims that Respondent’s registration of a domain name incorporating its mark with only minor alterations is an act of typosquatting. The Panel agrees that Respondent’s actions constitute typosquatting, and the Panel finds bad faith per Policy ¶ 4(a)(iii).

 

Finally, Complainant claims that Respondent registered the <efloorstores.com> domain name with actual or constructive notice of Complainant’s rights in the EFLOORS.COM mark. While constructive notice is insufficient, evidence that a respondent had actual knowledge of a complainant’s rights in a mark at the time of domain name registration may support a finding of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent’s knowledge is clear from the well-known status of Complainant’s mark as well as Respondent’s use of the domain name to trade off Complainant’s reputation. The Panel agrees that actual knowledge is present, and it finds bad faith pursuant to Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <efloorstores.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

February 12, 2021