Hurwitz Mintz Finest Furniture Store South, LLC v. Nguyễn Văn Lư
Claim Number: FA2204001991492
Complainant is Hurwitz Mintz Finest Furniture Store South, LLC (“Complainant”), represented by David A. Vinterella, Louisiana, USA. Respondent is Nguyễn Văn Lư (“Respondent”), Việt Nam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hurwitzmintzfurniture.com>, registered with April Sea Information Technology Company Limited.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 7, 2022; the Forum received payment on April 7, 2022. The Complaint was received in English.
On April 13, 2022, April Sea Information Technology Company Limited confirmed by e-mail to the Forum that the <hurwitzmintzfurniture.com> domain name is registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the name. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company Limited registration agreement, which is in Vietnamese, 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 April 18, 2022, the Forum served the English language Complaint and all Annexes, including an English and Vietnamese language Written Notice of the Complaint, setting a deadline of May 9, 2022 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@hurwitzmintzfurniture.com. Also on April 18, 2022, the English and Vietnamese language 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 May 15, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
Preliminary Issue: Language of Proceeding
As noted, according to the Registrar, April Sea Information Technology Company Limited, its registration agreement is in Vietnamese. Pursuant to Rule 11(a), the language of the proceeding in relation to the <hurwitzmintzfurniture.com> domain name shall be Vietnamese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Complainant requests that the proceeding be conducted in English, noting that the <hurwitzmintzfurniture.com> domain name is in English and resolves to an English language website. In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be proficient in English and that there would be no undue prejudice to Respondent if English were the language of the proceeding.
Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English and Vietnamese language Written Notice of the Complaint and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant, Hurwitz Mintz Finest Furniture Store South, LLC, offers home furniture, namely living room, dining room, bedroom, outdoor, and office accessories. Complainant has common law rights in the HURWITZ MINTZ mark based upon use of the mark in commerce since 1924. Since Complainant registered its <hurwitzmintz.com> domain name on December 6, 1996, the mark and domain name have become well recognized by consumers as designating Complainant as the source of the goods so marked. Respondent’s <hurwitzmintzfurniture.com> domain name is confusingly similar to Complainant’s mark.
Respondent does not have rights and legitimate interests in the <hurwitzmintzfurniture.com> domain name. Respondent is not commonly known by the domain name and Complainant has not authorized Respondent to use the HURWITZ MINTZ mark. Additionally, Respondent does not use the domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain name resolves to a parked page with hyperlinks to competing furniture providers.
Respondent registered and uses the <hurwitzmintzfurniture.com> domain name in bad faith. Respondent engages in a pattern of bad faith registration and use based on past UDRP proceedings. Additionally, Respondent uses the domain name to host hyperlinks to Complainant’s competitors. Finally, Respondent had actual knowledge of Complainant’s rights in the HURWITZ MINTZ mark based on the incorporation of the exact mark in the domain and the hosting of hyperlinks to competing furniture products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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”).
Complainant claims common law rights in the HURWITZ MINTZ mark based upon use of the mark in commerce since 1924.
The following are relevant extracts from the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), section 1.3:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning…
…The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.”
In this case Complainant provides no evidence of use of the HURWITZ MINTZ mark prior to Complainant’s registration of the <hurwitzmintz.com> domain name in 1996, other than recent screenshots of the website to which that domain name resolves, which prominently display the HURWITZ MINTZ mark.
The Panel has conducted a Wayback Machine search, which shows Complainant’s website continuously displaying the HURWITZ MINTZ mark in relation to furniture from February 10, 1998.
The Panel is satisfied that the HURWITZ MINTZ mark is inherently distinctive and that, despite the paucity of Complainant’s evidence, Respondent’s inclusion in the <hurwitzmintzfurniture.com> domain name of the word “furniture” establishes that the mark has achieved significance as a source identifier in relation to furniture. Accordingly, the Panel finds that Complainant has established that it has common law rights in the HURWITZ MINTZ mark.
Identical and/or Confusingly Similar
Respondent’s <hurwitzmintzfurniture.com> domain name is confusingly similar to Complainant’s mark since it incorporates the entire HURWITZ MINTZ mark and adds the descriptive term “furniture” which is insufficient to distinguish the domain name from the mark. The inconsequential gTLD “.com” may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent 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; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <hurwitzmintzfurniture.com> domain name was registered on August 2, 2004, several years after Complainant has shown that it had acquired common law rights in the HURWITZ MINTZ mark through its website “www.hurwitzmintz.com”. The <hurwitzmintzfurniture.com> domain name resolves to a website with hyperlinks to competing furniture providers.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <hurwitzmintzfurniture.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s HURWITZ MINTZ mark when Respondent registered the <hurwitzmintzfurniture.com> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website and of the goods promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
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 <hurwitzmintzfurniture.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: May 16, 2022
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