DECISION

 

Floor Covering Associates, Inc. v. Daisy Lopez

Claim Number: FA2311002071027

 

PARTIES

Complainant is Floor Covering Associates, Inc. ("Complainant"), represented by Jennifer M. Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is Daisy Lopez ("Respondent"), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <efloorsus.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 14, 2023; Forum received payment on November 14, 2023.

 

On November 15, 2023, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <efloorsus.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 November 15, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@efloorsus.com. Also on November 15, 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 December 6, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant markets, at retail and wholesale, products and services featuring floor coverings and floor covering maintenance and repairs.

 

Complainant has used the domain name <efloors.com> in the operation of its business continuously since 1999.

 

Complainant holds a registration for the service mark EFLOORS.COM, on file with the United States Patent and Trademark Office ("USPTO") as Registry No. 4,450,878, registered December 17, 2013.

 

Respondent registered the domain name <efloorsus.com> on October 12, 2023.  

 

The domain name is confusingly similar to Complainant's EFLOORS.COM service mark.

 

Respondent has not been commonly known by the domain name.

 

Complainant has not licensed or otherwise authorized Respondent to use its EFLOORS.COM mark in any way.

 

Respondent is not using the domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.

 

Instead, the domain name merely resolves to an error message.

 

Respondent has neither any rights to nor any legitimate interests in the domain name.

 

The domain name can have no purpose but to disrupt Complainant's business.

 

Respondent has both registered and is now using the domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)       the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and

(2)       Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)       the same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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:

 

i.                      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.                      Respondent has no rights to or legitimate interests in respect of the domain name; and

iii.                      the domain name has been registered and is being used by Respondent in bad faith.

 

In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent's failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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

By virtue of its registration of the EFLOORS.COM service mark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding.  See, for example, Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017):

 

Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.

 

Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent's <efloorsus.com> domain name is confusingly similar to Complainant's EFLOORS.COM service mark. The domain name incorporates the mark in its entirety, with only the addition of the two-letter combination "us," the common country code abbreviation for "United States," where Complainant's business is based. This sole alteration of the mark, insertion of a geographic indicator, in creating the domain name, does not escape the realm of confusing similarity under the terms of the Policy. See, for example, Equinor ASA v. James Andrew, D2022-3846 (WIPO Nov. 29, 2022):

 

The Disputed Domain Name completely reproduces the Complainant's … Trademark in combination with the term "us",…. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether … geographical … or otherwise) would not prevent a finding of confusing similarity …. In this case, the addition of the term "us", which is a standard abbreviation for the United States …, to the … Trademark does not prevent a finding of confusing similarity.

 

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <efloorsus.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):

 

Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

 

Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent's failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent's failure to respond to a UDRP complaint allows a presumption that a complainant's allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.

 

We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the contested <efloorsus.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the EFLOORS.COM mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as "Daisy Lopez," which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as "Bhawana Chandel," and nothing in the record showed that that respondent was authorized to use a UDRP Complainant's mark in any manner).

                                                            

We next observe that Complainant asserts, without objection from Respondent, that Respondent is not using the <efloorsus.com> domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use, but that, instead, the domain name merely resolves to an error message. In the circumstances here presented, this inactive employment constitutes neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.  See, for example, Granite Gear, LLC v. Ray Henry, FA 2055121 (Forum Aug. 22, 2023):

 

The Domain Name is inactive and there is no other evidence of any intention to use the Domain Name for any purpose, be it a bona fide offering or legitimate non-commercial use. In the absence of any additional evidence …[,] inactive holding of a disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

                                                           

The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

We are persuaded by the evidence that Respondent's inactive use of the domain name, often referred to as "passive holding," is a use of the challenged <efloorsus.com> domain name which, in circumstances such as are described in the Complaint, constitutes both registration and use of the domain name in bad faith. This is particularly true where, as here, Respondent has not provided any evidence of a legitimate use, or even of an intention to make a legitimate use, of the domain name, and, as well, where it is inconceivable that Respondent could make any active use of the domain name which would not be highly likely to be disruptive of Complainant's business. See, for example, Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).

 

The Panel thus finds that Complainant has met its obligations of proof under Policy¶4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the <efloorsus.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

Terry F. Peppard, Panelist

Dated: December 11, 2023