Miami Awning Company, Inc. v. Domain Name Subject to ICANN UDRP
Claim Number: FA2307002054053
Complainant is Miami Awning Company, Inc. (“Complainant”), represented by Meredith Frank Mendez of Malloy & Malloy, P.L., Florida, USA. Respondent is Domain Name Subject to ICANN UDRP, Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <floridamiamiawnings.com>, registered with FastDomain Inc.
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 Forum electronically on July 20, 2023. Forum received payment on July 20, 2023.
On July 22, 2023, FastDomain Inc. confirmed by e-mail to Forum that the <floridamiamiawnings.com> domain name is registered with FastDomain Inc. and that Abel Arias was the current registrant of the name. FastDomain Inc. verified that Abel Arias is bound by the FastDomain Inc. 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”).
FastDomain Inc. verified that the <floridamiamiawnings.com> domain name expired on May 27, 2023 and had been deleted. FastDomain Inc. noted that, pursuant to paragraph 3.7.5.7 of ICANN’s Expired Domain Deletion Policy, the domain must be restored and renewed to proceed.
On August 2, 2023, FastDomain Inc. confirmed by e-mail to Forum that the <floridamiamiawnings.com> domain name had been renewed by Complainant and that FastDomain Inc. had updated the Registrant domain contact information from Abel Arias to Domain Name Subject to ICANN UDRP (“Respondent”).
On August 4, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 2023 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@floridamiamiawnings.com. Also on August 4, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On August 25, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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, Miami Awning Company, Inc., is a Florida for-profit corporation involved in the manufacture, design, and installation of awnings and related structures. Complainant has rights in the MIAMI AWNING mark through registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <floridamiamiawnings.com> domain name is confusingly similar to Complainant’s mark.
Respondent became the respondent in this administrative proceeding after this Complaint was filed, as Complainant moved to renew the domain name at issue under the ICANN Expired Domain Deletion Policy.
According to FastDomain Inc., there are two prior registrants associated with this administrative proceeding. The first is Abel Arias, an individual residing in the State of Texas. On information and belief, Mr. Arias was the owner of the <floridamiamiawnings.com> domain name at the outset of this administrative proceeding, wherein such domain was operated by the second prior registrant, Florida Miami Awnings Inc, a corporation having a principal place of business in Miami, Florida.
The prior registrants possess no rights or legitimate interests in the <floridamiamiawnings.com> domain name since they have not used the domain name or otherwise made demonstrable preparation to use the same, in connection with a bona fide offering of goods and/or services before Complainant used its mark or otherwise provided notice to the prior registrants of this dispute.
Additionally, the domain name, the website associated therewith, social media pages and other third-party sources have been used by the prior registrants solely for the purpose of misdirecting and confusing consumers into believing the website was affiliated with or sponsored by Complainant. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name.
The prior registrants registered the <floridamiamiawnings.com> domain name in bad faith and, following cease-and-desist letters from Complainant’s counsel dated June 28, 2021, August 12, 2021 and February 23, 2022, continued to use the domain name in bad faith despite full knowledge of Complainant’s well-known and famous MIAMI AWNING mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
As to Complainant’s contention that, according to FastDomain Inc., there are two prior registrants associated with this administrative proceeding, the evidence before the Panel is that FastDomain Inc. identified Abel Arias as the sole registrant of the domain name prior to its expiry.
Because the name of the registrant of the domain name has been changed from Abel Arias to Domain Name Subject to ICANN UDRP pursuant to the renewal of the domain name in accordance with paragraph 3.7.5.7 of ICANN’s Expired Domain Deletion Policy, the Panel regards the name of Respondent, Domain Name Subject to ICANN UDRP, as a pseudonym for Abel Arias. Accordingly, although Complainant submits, on information and belief, that Florida Miami Awnings Inc may be operating the domain name, the Panel finds that Florida Miami Awnings Inc is not a party to these proceedings.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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”).
Identical and/or Confusingly Similar
Complainant has shown that it has rights in the MIAMI AWNING mark through registration with the USPTO (Reg. No. 3,425,206, registered on May 13, 2008). The Panel finds Respondent’s <floridamiamiawnings.com> domain name to be confusingly similar to Complainant’s mark, only differing by the addition of the geographic term “Florida” and the letter “s”, which are insufficient to 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.
Rights or Legitimate Interests
(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 <floridamiamiawnings.com> domain name was registered on May 27, 2021, many years after Complainant has shown that its MIAMI AWNING mark had become well-known. As at June 21, 2023, it resolved to a website with pay-per-click links promoting awnings and similar products. There is no evidence that Abel Arias is commonly known by the domain name.
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 <floridamiamiawnings.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA 1849706 (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 was fully aware of Complainant’s well-known MIAMI AWNING mark when Respondent registered the <floridamiamiawnings.com> domain name and did so primarily for the purpose of disrupting the business of a competitor. Further, that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website to which the domain name resolves, by creating a likelihood of confusion with Complainant’s mark as to the source of that website and of the goods promoted on that website. This demonstrates registration and use in bad faith under Policy ¶ 4(b)(iii) and (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 <floridamiamiawnings.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: August 25, 2023
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