DECISION

 

Room & Board, Inc. v. Cain Richard

Claim Number: FA2401002079368

PARTIES

Complainant is Room & Board, Inc. ("Complainant"), represented by Molly T. Eichten of Larkin Hoffman Daly & Lindgren Ltd., Minnesota, USA. Respondent is Cain Richard ("Respondent"), Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <roomandboardus.com>, registered with Gname.com Pte. Ltd..

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 16, 2024; Forum received payment on January 16, 2024.

 

On January 17, 2024, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <roomandboardus.com> domain name is registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the name. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. Ltd. 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 January 18, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2024 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@roomandboardus.com. Also on January 18, 2024, 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 February 8, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that, in the course of operating its business, and since at least as early as 1977, it has continuously used the trademark ROOM & BOARD in connection with retail furniture goods and services, the manufacturing and selling of furniture and accessories, and providing design services. Complainant has operated its commercial website at <roomandboard.com> since at least 1996. Complainant asserts rights in the ROOM & BOARD mark through its registration in the United States in 1978. The mark is registered elsewhere around the world.

 

Complainant alleges that the disputed domain name is confusingly similar to its ROOM & BOARD mark as it incorporates the mark in its entirety (replacing the symbol "&" with the word "and"), merely adding the geographic term "US" and the ".com" generic top-level domain ("gTLD").

 

According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed respondent to use its mark in any way. Respondent does not use the disputed domain name for a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Instead, the resolving website is an exact copy of Complainant's legitimate website. It displays Complainant's trademarks, copyrighted images and content without authorization from Complainant. Moreover, Respondent uses the resolving website to purport to sell Complainant's products. The resolving website has a checkout function where website users can enter their personal and payment information: thus, Respondent is attempting to fraudulently extract such information from users by copying Claimant's website design and by purporting to offer Complainant's products for sale.

 

According to Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent is impersonating Complainant and creating a false sense of affiliation, creating initial interest confusion, and taking advantage of goodwill to offer competing products. Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the ROOM & BOARD mark. Respondent engages in phishing.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns the mark ROOM & BOARD and uses it to provide furniture and related services.

 

Complainant's rights in its mark date back to 1978.

 

The disputed domain name was registered in 2023.

 

Complainant has not licensed or otherwise authorized Respondent to use its mark.

 

The resolving website is an exact copy of Complainant's legitimate website; it displays Complainant's mark and logo and trades off Complainant's goodwill to offer unauthorized versions of Complainant's products.

 

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:

 

(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

The disputed domain name incorporates Complainant's ROOM & BOARD mark in its entirety (replacing the symbol "&" with the word "and"), merely adding the geographic term "US" and the ".com" generic top-level domain ("gTLD"). This is not sufficient to distinguish the domain name from the mark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word "advisors" and the gTLD ".com" did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where "the WHOIS of record identifies the Respondent as "Bhawana Chandel," and no information in the record shows that Respondent was authorized to use Complainant's mark in any way."). Here, the WHOIS record identifies Respondent as "Cain Richard". Therefore the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).

 

Complainant presents evidence showing that Respondent uses the disputed domain name to pass off as Complainant (the resolving website is identical to Complainant's legitimate website) and take advantage of Complainant's goodwill to offer unauthorized versions of Complainant's products. Under Policy ¶¶ 4(c)(i) and (iii), this does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) ("In effect, Respondent attempted to pass itself off as Complainant online. Such blatant unauthorized use of Complainant's mark is evidence that Respondent has no rights or legitimate interests in the disputed domain name"); see also Choice Hotels International, Inc. v. Hotel Partners a/k/a eGO Inc., FA 190506 (Forum Oct. 6, 2003) ("Respondent's attempt to pass itself off as Complainant at the disputed domain name, without authorization or license by Complainant . . . is evidence that Respondent lacks rights or legitimate interests in the disputed domain name"); see also Bloomberg L.P v. Bloomberg Realty (India) Private Limited, Forum Decision FA 1204001439263. ("Use of a domain name which intentionally trades on the fame of another cannot constitute a bona fide offering of goods and services"); see also Fossil Group, Inc. v. wuwuima wu FA 1544486 (Forum Mar. 21, 2014)(finding the use of the Fossil mark and images of what appear to be genuine Fossil products including watches, wallets and purses established that Respondent had no rights or legitimate interests in the disputed domain name). Therefore the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

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 pass off as Complainant to offer unauthorized versions of Complainant's products. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant's business is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Crocs, Inc. v. jing dian, FA1410001587214 (Forum Dec. 12, 2014) (finding bad faith where the respondent used the disputed domain name to display the complainant's marks to sell unauthorized goods); see also Swarovski Aktiengesellschaft v. ailong c ailong xiong, FA1407001571172 (Forum Sept. 5, 2014) (finding bad faith where respondent used the disputed domain name in connection with a website purportedly offering unauthorized goods of Complainant and stating that the respondent's bad faith was "apparent in that [r]espondent is profiting from the likelihood Internet users will mistakenly believe the goods sold through the domain name's website are legitimate…"); see also Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that "duplicated Complainant's mark and logo, giving every appearance of being associated or affiliated with Complainant's business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark"); see also Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant's products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant). The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).

 

Further, Respondent registered the disputed domain name with actual knowledge of Complainant's mark: the resolving website is identical to Complainant's legitimate website, displaying Complainant's mark and logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant's rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it."); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to Respondent's registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

 

 

Richard Hill, Panelist

Dated: February 9, 2024