Tower IPCO Company Limited v. Wesley Karr
Claim Number: FA2204001993031
Complainant is Tower IPCO Company Limited (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, USA. Respondent is Wesley Karr (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allureflooring.com>, registered with Sea Wasp, 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2022. The Forum received payment on April 20, 2022.
On April 20, 2022, Sea Wasp, LLC confirmed by e-mail to the Forum that the <allureflooring.com> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, 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 April 21, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 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@allureflooring.com. Also on April 21, 2022, 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 May 17, 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.
A. Complainant
Complainant, Tower IPCO Company Limited, is a leading manufacturer of vinyl flooring. Complainant has rights in the ALLURE mark through registrations of the mark including with the United States Patent and Trademark Office (“USPTO”). Respondent’s <allureflooring.com> domain name is virtually identical and confusingly similar to Complainant’s mark.
Respondent has no legitimate interests in the <allureflooring.com> domain name. Respondent is not commonly known by the domain name and Complainant has not authorized or licensed to Respondent any rights in the ALLURE mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the domain name resolves to a third-party website that contains viruses or malware. Upon reaching that website, Internet users are presented with a false “Apple-Security” image that appears to promote security, identity protection, computer performance, and firewall services. A moment after this is displayed, a message appears stating that “Your McAfee Security subscription have expired. After the expiration date, your computer will become susceptible to many different virus threats.” Unwitting users who click on this false expiration message will have malware deposited on their computer that can be used for the purposes of hacking, identity theft and other harms.
Respondent registered the <allureflooring.com> domain name in bad faith with actual knowledge of Complainant’s rights in the ALLURE mark and did so in order to disrupt Complainant’s business and divert customers for commercial gain. There is an open question of precisely when Respondent acquired the domain name. Although it was originally created in 2007 and has been shielded by Whois privacy services throughout its life, the archived Whois records show that it has been moved between a number of different registrars, often a sign of changing ownership. Thus, Respondent may have acquired the domain name more recently (perhaps in 2009, 2017, or 2020) and one of these dates, rather than 2007, should be used by the Panel when considering bad faith registration.
Further, Respondent is an experienced cybersquatter and has lost at least two prior UDRP cases involving other well-known trademarks. See, AB Electrolux v. Wesley Karr, Power Click, D2021-0870 (WIPO May 10, 2021) (<elctrolux.com> ordered transferred where it resolved to a pay-per-click page in bad faith and was confusingly similar to Complainant’s ELECTROLUX trademark); Star Stable Entertainment AB v. Power Click, Wesley Karr, 103512 (CAC Feb. 19, 2021) (<starsstable.com> ordered transferred where it redirects to the Complainant’s official website).
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 has shown that it has rights in the ALLURE mark through several registrations of the mark in various countries, the earliest of which being with the USPTO in relation to resilient vinyl plank flooring, Reg. No. 3,338,252, registered in the name of Vertex Services Ltd. on November 20, 2007 upon application filed on January 3, 2007, claiming first use in commerce on June 20, 2006. The mark was assigned to Complainant on January 30, 2011.
The Panel finds Respondent’s <allureflooring.com> domain name to be confusingly similar to Complainant’s mark because it incorporates the ALLURE mark in its entirety and adds the generic term “flooring”, which does not distinguish the domain name from the mark, and the inconsequential “.com” generic top-level domain (“gTLD”), which 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 burden is on Complainant to make out a prima facie case that Respondent lacks rights and legitimate interests in respect of the domain name. The evidentiary burden then shifts to Respondent to show that it has rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014).
The <allureflooring.com> domain name was registered on January 15, 2007, a few days after the filing of the application by Vertex Services Ltd. to register the ALLURE mark with the USPTO in relation to flooring. Complainant contends that is not unheard of for cybersquatters to monitor the USPTO website and opportunistically swoop in with a domain name registration before the trademark applicant has done so, citing Adobe Inc. v. DOMAIN IS FOR SALE AT WWW.DAN.COM ---- / DOMAIN ADMINISTRATOR, FA 1979236 (Forum Feb. 8, 2022) (“The timing of the registration of the Domain Name three days after the Complainant filed to register its CREATIVE CLOUD EXPRESS trade mark in the USA demonstrates opportunistic bad faith.”)
As to the open question of precisely when Respondent acquired the domain name, it is true that a change in ownership often involves a change in Registrar. However, the Panel is not persuaded that a mere change in Registrar makes it more likely than not that there has been a change in ownership. Accordingly, the Panel considers the 2007 date as the date on which Respondent registered the domain name.
Although the words “allure” and “flooring” are common descriptive words, in combination they are not descriptive. Complainant has shown that its ALLURE mark is distinctive and has become very well-known. The <allureflooring.com> domain name resolves to a website displaying a false security expiration message containing malware.
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 <allureflooring.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:
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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 is clearly using the <allureflooring.com> domain name in bad faith intentionally to attempt 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 or services promoted on that website. This is evidence of both registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Such evidence is not conclusive, however. The critical issue in this case is whether the domain name was registered in bad faith on January 15, 2007.
Under the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”):
3.8.1: where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent...
3.8.2: As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: … (iv) following the complainant’s filing of a trademark application.”
Given the unusual combination in the <allureflooring.com> domain name of the words “allure” and “flooring” and the timing of the domain name registration, a few days after Complainant’s predecessor in interest filed its first application to register the ALLURE mark in relation to resilient vinyl plank flooring, the Panel finds it more likely than not that Respondent was aware of that trademark registration application when registering the <allureflooring.com> domain name and did so in order to take advantage of the reputation and goodwill that he expected the ALLURE mark would develop. Hence the Panel finds that the domain name was registered in bad faith under Policy ¶ 4(b)(iii) primarily for the purpose of disrupting the business of a competitor.
Respondent’s recent history of cybersquatting supports this conclusion.
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 <allureflooring.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: May 23, 2022
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