DECISION
COA, Inc. dba Coaster Co. of America v. ZhaoZiqun
Claim Number: FA2401002081688
PARTIES
Complainant is COA, Inc. dba Coaster Co. of America ("Complainant"), represented by C. Wook Pak of Cislo & Thomas LLP, California, USA. Respondent is ZhaoZiqun ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coasterfurnituresale.com>, registered with OwnRegistrar, 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.
The Honorable Neil Anthony Brown KC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on January 30, 2024; Forum received payment on January 30, 2024.
On February 1, 2024, OwnRegistrar, Inc. confirmed by e-mail to Forum that the <coasterfurnituresale.com> domain name is registered with OwnRegistrar, Inc. and that Respondent is the current registrant of the name. OwnRegistrar, Inc. has verified that Respondent is bound by the OwnRegistrar, 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").
On February 5, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 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@coasterfurnituresale.com. Also on February 5, 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 27, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 made the following contentions.
1. Complainant is a United States company that is a provider of superior furniture and related goods and services.
2. Complainant conducts its business under trademarks for COASTER and related marks.
3. Complainant promotes its products on the internet at www.coasterfurniture.com.
4. Complainant has registered trademark rights in the COASTER trademark by virtue of its registration of the trademark for COASTER with the United States Patent and Trademark Office ("USPTO"), Registered Number 4,285,908, registered on February 5, 2013 and other trademarks for COASTER and derivatives registered with the USPTO (collectively "the COASTER trademark").
5. The COASTER trademark has become prominent, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.
6. On August 8, 2023, Respondent registered the domain name <coasterfurnituresale.com> ("the disputed domain name").
7. The Complainant acquired its trademark rights in the COASTER trademark well before the Respondent registered the disputed domain name.
8. In registering the disputed domain name, the Respondent has incorporated in it the entirety of Complainant's COASTER trademark without any authority to do so, and has added the words "furnituresale", which covers the principle activities of the Complainant, namely furniture and its sale. The disputed domain name also adds the gTLD ".com". These changes do not negate the confusing similarity between a domain name and a mark that is otherwise present as it is in the present case.
9. The disputed domain name is therefore confusingly similar to the Complainant's COASTER trademark.
10. The Respondent has caused the disputed domain name to resolve to a website which prominently displays the COASTER trademark and the Complainant's COASTER FINE FURNITURE logo and advertises furniture for sale.
11. The Respondent has no right or legitimate interest in the dispute domain name. That is so because:
(a) the website prominently displays the COASTER trademark and the Complainant's COASTER FINE FURNITURE logo;
(b) the website is populated by an extensive array of photographs of furniture for sale;
(c) the website therefore purports to be associated with the Complainant and the furniture of the Complainant and to promote furniture that purports to be that of the Complainant;
(d) the Respondent is not commonly known by the disputed domain name as the WHOIS records show that the Respondent does not have a name that is even similar to the domain name;
(e) the Respondent is not affiliated with the Complainant in any way;
(f) the Complainant has not licensed the COASTER trademark to the Respondent, and Complainant has not granted Respondent any right, authorization, or permission to use Complainant's trademark or name in a domain name on a website or in any other manner;
(g) the Respondent is using the Complainant's name, trademark and logo in conjunction with the same type of goods that the Complainant sells under the COASTER trademark, which use is misleading and is doing so for commercial gain;
(h) the Complainant has demanded that the Respondent transfer the disputed domain name to the Complainant, but the Respondent has failed and refused to do so.
12. The Respondent has registered and used the disputed domain name in bad faith. That is so because:
(a) by diverting internet users from the Complainant's website to the Respondent's website, the Respondent has sought to disrupt the Complainant's business within the meaning of Policy ¶ 4(b)(iii);
(b) the Respondent has been attracting internet traffic by causing confusion with the Complainant's trademark within the meaning of Policy ¶ 4(b)(iv);
(c) the Respondent registered the disputed domain name with actual knowledge of the Complainant and Complainant's trademark rights;
(d) the Respondent registered the disputed domain name with the intention of creating the false appearance of an association with Complainant and its products and services;
(e) the Respondent created the false impression that its website originated with and was approved by, or linked to, the Complainant;
(f) the use by the Respondent of its website is not a bona fide offering of goods or services;
(g) the use by the Respondent of its website is not a legitimate nonommercial or fair use of the disputed domain name.
13. It is therefore submitted by the Complainant that it has shown all of the elements that it must establish under the UDRP and that the domain name should be transferred from the Respondent to the Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant is a United States company that is a provider of superior furniture and related goods and services. Complainant conducts its business under the COASTER trademark and related marks and promotes its products on the internet at www.coasterfurniture.com.
2. Complainant has established by evidence that it has registered trademark rights in the COASTER trademark by virtue of its registration of the trademark with the United States Patent and Trademark Office ("USPTO"), Registered Number 4,285,908, registered on February 5, 2013 and other trademarks for COASTER and derivatives registered with the USPTO (collectively "the COASTER trademark").
3. The COASTER trademark has become prominent, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.
4. On August 8, 2023, Respondent registered the domain name <coasterfurnituresale.com> ("the disputed domain name").
5. The Complainant acquired its trademark rights in the COASTER trademark well before the Respondent registered the disputed domain name.
6. The Respondent had actual knowledge of the Complainant, its business, trademark, products and brands prior to its registration of the disputed domain name. The Respondent promoted itself on its website as Coaster and purported to sell furniture products under the COASTER name, trademark and logo.
7. The Respondent passed itself off as the Complainant, directed internet users away from the Complainant and to itself and tried to extract money from internet users by misleading them and attempting to create the false impression that its website originated with and was approved by or associated with the Complainant.
8. By reason of the matters aforesaid and as demonstrated by the evidence, the disputed domain name is confusingly similar to the Complainant's COASTER trademark, the Respondent has no rights or legitimate interests in the domain name and the domain name has been registered and used by the Respondent in bad faith.
9. Accordingly, the disputed domain name should be transferred to the Complainant.
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 first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. Complainant has established by evidence that it has registered trademark rights in the COASTER trademark by virtue of its registration of the trademark for COASTER with the United States Patent and Trademark Office ("USPTO"), Registered Number 4,285,908, registered on February 5, 2013 and other trademarks for COASTER and derivatives registered with the USPTO (collectively "the COASTER trademark").
The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's COASTER trademark. Having examined the domain name and the trademark, the Panel finds that the disputed domain name is confusingly similar to the COASTER trademark.
The Complainant's argument to that effect is that the Respondent has taken the entirety of the relevant trademark without any authority to do so, and has incorporated it in the disputed domain name, with the result that the dominant portion of the domain name is the Complainant's trademark, so it is obviously invoking that trademark.
To that dominant portion of the domain name the Respondent has added the word "furnituresale" which relates to the principal activities of the Complainant, namely furniture and its sale. The disputed domain name also adds the gTLD ".com". Panels have routinely found that changes of this sort do not negate the confusing similarity between a domain name and a mark that is otherwise present, as it is in the present case.
The domain name means and would be interpreted by internet users to mean that it is a domain name of the Complainant because it uses its trademark and purports to relate to the well-known activities of the Complainant under its trademark. Those features emphasize that the domain name is a copy of the trademark and that the additions do nothing but add to the notion that it is a domain name of the Complainant or has been created with the approval of the Complainant and will probably lead to an official website of the Complainant, none of which is correct.
The Respondent has also added the generic Top-Level Domain ".com".
None of these additions can negate a finding of confusing similarity which is present, as it is in the present case. In fact, they underline and emphasize a finding that the Respondent knew what it was doing and was aiming at the Complainant for its own illegal purposes and concocting a domain name that would further that endeavor.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's COASTER trademark under Policy ¶ 4(a)(i).
The Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations:
(a) the Respondent has chosen to take the Complainant's COASTER trademark and to use it in the disputed domain name, making only the additions to the trademark mentioned above, generating the clear impression that it is referring to and invoking the Complainant's COASTER trademark and that the Respondent intended to use the domain name for an unauthorized purpose involving the use of the Complainant's branded product name. The Respondent had no right to do any of this, meaning that there is no foundation at all for finding that it had the right to do so or that it gave the Respondent any legitimate interest in the domain name so created;
(b) Respondent registered the disputed domain name <coasterfurnituresale.com> on August 8, 2023;
(d) the Respondent had no right to register the domain name and no legitimate interest in doing so. The intention of the Respondent is therefore very clear and it was to invoke the Complainant's name, trademark and business and to copy them, which cannot conceivably give rise to a right or legitimate interest in the domain name in any way;
(f) this conduct was a clear infringement of the Complainant's COASTER trademark;
(g) the evidence on the foregoing matters is contained in the Complainant's Exhibit C to the declaration of C. Wook Pak filed in support of the Complaint. The Panel has examined the screenshot in that Exhibit and the detail contained in it. The fatal flaw in the Respondent's website is that it has the heading "Coaster" and the words that surround an obviously unique logo, complete with a designed curve, to the effect that the furniture on display is asserted to be the furniture of the Complainant. The implication is obvious. Internet users who see this website would probably be looking for Coaster furniture and even if they were not, the website would probably be seen by potential buyers of furniture in general and it is only natural that they would conclude that what they are being presented with is COASTER furniture offered by or with the consent of the company of that name. It is impossible to conclude that they would reach any other conclusion. The result of that analysis is that it cannot conceivably give rise to a right or legitimate interest in the domain name;
(h) the evidence also shows that the Respondent is not commonly known
by the domain name;
(i) the evidence also shows that the use made of the domain name by the
Respondent is not a bona fide offering of goods or services within the meaning of Policy¶4(c) (i); it cannot be bona fide when it is based on a falsehood;
(j) the evidence also shows that the domain name is not being used for a
legitimate non-commercial or fair use; the use of the domain name has been demonstrated to be illegitimate because it is being used to mislead internet users; it also cannot be said to be non-commercial in any sense as it clearly is intended to be used by the Respondent for a financial purpose, namely to make money; nor is it fair, as it is clearly unfair to use a trademark without permission of the trademark owner and to pretend falsely that it is being used with the approval of the Complainant as trademark owner;
(k) the evidence also shows that the domain name is being used and was intended to be used to pass the Respondent off as the Complainant;
(l) the evidence shows that there is no relationship between the Complainant
and the Respondent and that the Complainant has not authorized or licensed the Respondent to register the domain name or to use its COASTER trademark in any way;
(m) the Complainant and the Respondent are not affiliated, connected, or associated with each other;
(n) all of the above considerations disprove any suggestion that the Respondent has a right or legitimate interest in the disputed domain name.
All of the grounds relied on by the Complainant have therefore clearly been made out on the evidence.
All of these matters go to make out the prima facie case against the Respondent.
As the Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that the Respondent does not have a right or legitimate interest in the disputed domain name.
The Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) are not exclusive but that UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
The Complainant has submitted that the Respondent has registered and used the disputed domain name in bad faith on several grounds, namely that:
(a) by diverting internet users from the Complainant's website to the Respondent's website, the Respondent has sought to disrupt the Complainant's business within the meaning of Policy ¶ 4(b)(iii);
(b) the Respondent has been attracting internet traffic by causing confusion with the Complainant's trademark within the meaning of Policy ¶ 4(b)(iv);
(c) the Respondent registered the disputed domain name with actual knowledge of the Complainant and the Complainant's trademark rights;
(d) the Respondent registered the disputed domain name with the intention of creating the false appearance of an association with Complainant and its products and services;
(e) the Respondent created the false impression that its website originated with and was approved by, or linked to, the Complainant;
(f) the use by the Respondent of the website is not a bona fide offering of goods or services;
(g) the use by the Respondent of the website is not a legitimate nonommercial or fair use of the disputed domain name.
The Panel finds that each of the grounds relied on by the Complainant has been made out by the persuasive evidentiary case presented on its behalf. There is no need to repeat the details of the conduct of the Respondent that show that it registered and used the domain name in bad faith. The substance of the case revealed by the evidence is that the Respondent had actual knowledge of the Complainant, its business, trademark, products and brands and could not have embarked on the illegal activities revealed by the evidence without having actual knowledge of the Complainant, its trademark and its products. It knew what its target was and aimed directly at it, up to and including promoting itself as Coaster and selling products under the COASTER trademark. It obviously passed itself off as the Complainant, directed internet users away from the Complainant and to itself and tried to extract money from internet users by misleading them, all the time trying to create the false impression that its website originated with and was approved by or linked to Complainant. If that conduct were not bad faith, those words would have no meaning.
Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the COASTER trademark and in view of the conduct that the Respondent has engaged in since registering and using it, the Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
The Complainant has thus made out the third of the three elements that it must establish.
The Complainant has established all of the elements that it must show under the Policy and is therefore entitled to the relief it seeks.
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 <coasterfurnituresale.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: February 29, 2024
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