URS DEFAULT DETERMINATION


Benjamin Moore & Co. v. REDACTED PRIVACY et al.
Claim Number: FA2105001944766


DOMAIN NAME

<benjaminmoore.nyc>


PARTIES


   Complainant: Benjamin Moore & Co. of Montvale, NJ, United States of America
  
Complainant Representative: DLA Piper LLP (US) Thomas E. Zutic of Washington, DC, United States of America

   Respondent: edward lennon of New York, NY, US
  

REGISTRIES and REGISTRARS


   Registries: The City of New York by and through the New York City Department of Information Technology & Telecommunications
   Registrars: GoDaddy.com, LLC

EXAMINER


   The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
   Saravanan Dhandapani, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: May 12, 2021
   Commencement: May 12, 2021
   Default Date: May 27, 2021
   Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION


   Procedural Findings:  
      Multiple Complainants: Multiple Complainants: No multiple Complainants are involved in this proceeding. This Complaint and findings relate to the domain name <benjaminmoore.nyc>. No domain name is dismissed from this Complaint.
      Multiple Respondents: Multiple Respondents: No multiple Respondents are involved in this proceeding. This Complaint and findings relate to the domain name <benjaminmoore.nyc>. No domain name is dismissed from this Complaint.

   Findings of Fact: The case of the Complainant is as follows: Founded in 1883, Complainant, Benjamin Moore & Co., is based in Montvale, New Jersey and provides premium paints and stains that have become well known for their superior performance, application properties and selection of colors. As evidenced by the success of its worldwide business, Complainant has established and maintains high standards of quality for the goods and services offered under the BENJAMIN MOORE marks (“Marks”). The Marks havebeen promoted among the purchasing public throughout the United States and around the world on an extensive and frequent basis through a variety of media, including audio, video, printed publications, worldwide campaigns, event sponsorships, and the like. As such, the Marks have become well and favorably known, and the goods and services offered under the Marks are easily globally recognizable to the trade and public as originating from Complainant. Thus, the Marks and the goodwill associated therewith are of inestimable value to Complainant. Complainant operates its official Internet web site at (“Complainant’s Site”). Consumers can access information about Complainant’s offerings, products, retail locations, including its New York locations, design ideas, and many other details, all via Complainant’ Site. Thus, Complainant’s Site is a vital and integral part of Complaint’s business. Complainant has established worldwide rights in its well-known BENJAMIN MOORE name and the Marks. The domain name (the “Domain Name”) is entirely comprised of Complainant’s registered BENJAMIN MOORE mark followed by the top-level domain .nyc thereby further aggravating the likelihood of confusion and deception given this geographically descriptive term would be the logical location for Complainant’s New York City website. Complainant has no business relationship whatsoever with Respondent. Complainant has not licensed or otherwise permitted Respondent to use the Marks or to apply for any Domain Name incorporating the Marks. Complainant owns exclusive rights in the Marks, and has numerous trademark registrations therefor, so Respondent cannot establish legitimate rights in the Domain Name. Moreover, Complainant’s BENJAMIN MOORE mark has been in use for over a century and therefore Respondent’s registration of the Domain Name wholly incorporating it could not have been a coincidence or done for any legitimate purpose as Complainant has not authorized it. By creating confusion through its registration and use of a domain name wholly comprised of the Marks, Respondent is attempting to disrupt the business of a competitor, which is evidence of bad faith registration. Specifically, Respondent has registered a domain name that could conceivably serve no other purpose but as the location of Complainant’s website.

  

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.


[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 


The Complainant has proved by documentary evidences that they are the registered owner of trademark “BENJAMIN MOORE” under various classifications, such as, Clause 02, 16, 35. Complainant owns the BENJAMIN MOORE trademark registration and such BENJAMIN MOORE mark has achieved a well-known status. As noted, the disputed domain name <benjaminmoore.nyc> composes “benjaminmoore” and “.nyc”. Thus the word “benjaminmoore” in disputed domain name is identical to Complainant’s registered trademark “BENJAMIN MOORE”. The “.nyc” in disputed domain name is a generic code top-level domain name (gTLD) suffix. It is non-distinctive and is incapable of differentiating the disputed domain name from the Complainant’s registered trademark. Based on the “BENJAMIN MOORE” being a registered trademark of the Complainant, the Examiner determines that URS 1.2.6.1(i) covers the domain name at issue in this Complaint.


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


The Complainant owns trademark “BENJAMIN MOORE” under various classifications. The Complainant’s adoption and first use of the registered trademark is for decades together. In such case, the burden lies on the Respondent to prove that he/she has legitimate rights and/or interests in the disputed domain name. The Respondent is in default and has not filed any response. Although, the Complainant is not entitled to relief simply by default of the Respondent to submit a Response, the Examiner can however and does draw evidentiary inferences from the failure of the Respondent to respond. In view of the above, the Complainant has established a prima facie case of lack of rights and legitimate interest. Based on the record, the Respondent does not have rights or legitimate interests in the disputed domain name. Hence, the Examiner determines that URS 1.2.6.2 covers the domain name at issue in this Complaint and that the Respondent has no legitimate right or interest to the domain name.


[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or 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 documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant'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 Registrant's web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 


The Respondent is not affiliated with Complainant in any manner and never authorized the Respondent to register or use any domain name incorporating “BENJAMIN MOORE”. The Respondent has not responded in spite of the notice of complaint and notice of default under this URS determination process. It is well established that the registration and use of the disputed domain name must involve malafides where the registration and use of it was continues to be made in full knowledge of the Complainant’s prior rights in the “BENJAMIN MOORE” registered trademark and in circumstances where the registrant did not seek permission from the Complainant, as the owner of trademark, for such registration and use. Thus the Panel Examiner comes to irresistible determination that (i) the disputed domain name is identical to the Complainant’s “BENJAMIN MOORE ” trademark; (ii) the Respondent’s name does not correspond to the disputed domain name; (iii) the Respondent was aware of the Complainant and its trademark when it registered the disputed the domain name; (iv) there is no indication of any authorization to use the Complainant’s mark. Hence, it is lawful to conclude that the disputed domain name was registered in bad faith. Thus the Examiner determines that URS 1.2.6.3 (a) and (d) covers the domain name at issue in this Complaint and the domain name was registered and is being used in bad faith.


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

DETERMINATION


After reviewing the parties submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. benjaminmoore.nyc

 

Saravanan Dhandapani
Examiner
Dated: May 27, 2021

 

 

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