Golden Manufacturing, Inc. v. Gianfranco Sancassano
Claim Number: FA2105001948995
Complainant is Golden Manufacturing, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Gianfranco Sancassano (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goldenboatlifts.net>, registered with GoDaddy.com, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 28, 2021; the Forum received payment on May 28, 2021.
On June 1, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <goldenboatlifts.net> 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 June 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@goldenboatlifts.net. Also on June 2, 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 June 24, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states that it manufactures boat lifts and other lift products. Complainant has more than 35 years’ experience in building custom, quality boat lifts; it also manufactures a wide range of lifts, including lifts for motor yachts and sailboats to powerboats, jet skis, and seaplanes. Complainant has sold over 94,000 lifts to customers in 146 countries; over 190 dealers and contractors sell Complainant’s lifts. Complainant has rights in the GOLDEN BOAT LIFTS mark based its registration of the mark in the United States in 2012.
Complainant alleges that the disputed domain name is confusingly similar to its GOLDEN BOAT LIFTS mark since it incorporates the mark in its entirety and merely adds the “.net” generic top level domain (“gTLD”).
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or permitted Respondent to use the GOLDEN BOAT LIFTS 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 uses the disputed domain name to pass off as Complainant’s official GOLDEN BOAT LIFTS website and divert users to Respondent’s website, where Respondent promotes one of Complainant’s competitors and phishes for consumers’ information.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent passes itself off as Complainant on the resolving website to attract Internet users and then directs them to Complainant’s competitor via a phone number forwarding scheme. Respondent’s bad faith is also evidenced by Respondent’s operation of a phishing scam. Furthermore, Respondent had actual knowledge of Complainant’s rights in the GOLDEN BOAT LIFTS mark based on Respondent’s creation of a website that mimics Complainant’s website and Respondent’s phone forwarding scheme which leads consumers to Complainant’s direct competitor. Respondent’s bad faith is evidenced by the use of false WHOIS information. Finally, Respondent has engaged in a pattern of bad faith registration and use of domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark GOLDEN BOAT LIFTS dating back to 2012 and uses it to market boat lifts and other lift products.
The disputed domain name was registered in 2020.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to resolve to a web site that promotes products that compete with those of Complainant.
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; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name fully incorporates Complainant’s GOLDEN BOAT LIFTS mark and merely adds the “.net” gTLD. Adding a gTLD to a mark does not distinguish the disputed domain name from the mark. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”); see also Textron Innovations Inc. v. Textron Sistemi di Fissaggio srl, Fa 1732602 (Forum July 6, 2017) (holding that “Respondent’s <textron.net> is identical to Complainant’s TEXTRON mark.”). Therefore, the Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: when no response is submitted, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name. See 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). Here, the WHOIS information identifies “Gianfranco Sancassano” as the registrant. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
The resolving website promotes one of Complainant’s competitors. This does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Forum Dec. 2, 2003) (finding that Respondent lacked rights and legitimate interests in the <jawsoflife.com> domain name where it was being used to divert Internet users to the website for Phoenix Rescue Tools, one of Complainant’s direct competitors); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “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)”). Thus, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant alleges that the WHOIS information is false, but it provides no evidence to support that allegation. Therefore, the Panel finds that Complainant has failed to satisfy its burden of proof for this allegation and it will not discuss it further.
Complainant also alleges that Respondent has engaged in a pattern of bad faith registration and use of domain names. In support, it cites one UDRP case. The Panel finds that this is not sufficient to sustain the allegation of a pattern, therefore, it will not discuss this allegation any further.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to promote competing products. This can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Amazon Technologies, Inc. v. Tammy Caffey, FA1408001576228 (Forum Sept. 22, 2014) (“Respondent’s promotion of Complainant’s competitors on the <kindlestore.com> website disrupts Complainant business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”); see also Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Thus, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goldenboatlifts.net> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: June 24, 2021
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