DECISION

 

Cabinets To Go, LLC v. BATY ALBERT

Claim Number: FA2412002129359

PARTIES

Complainant is Cabinets To Go, LLC ("Complainant"), represented by Gina Carrillo of Corsearch, Inc., Texas, USA. Respondent is BATY ALBERT ("Respondent"), Romania.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cabinetstogofr.shop>, registered with NameCheap, 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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 12, 2024; Forum received payment on December 12, 2024.

 

On December 13, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <cabinetstogofr.shop> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 December 18, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2025 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@cabinetstogofr.shop. Also on December 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 January 8, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 contends in part as follows:

 

Complainant Cabinets To Go, LLC is an American specialty cabinet retail store chain, offering cabinets for kitchens, bathrooms, laundry rooms, mudrooms, and garages. It was founded in 2008 and is headquartered in Lawrenceburg, Tennessee. The first store opened in Miami, Florida, and there are now 106 stores.

 

Respondent's at-issue domain name is confusingly similar to a trademark in which Complainant has rights. By virtue of its federal trademark and/or service mark registrations Complainant is the owner of multiple marks relating to CABINETS TO GO. Respondent's at-issue domain name is confusingly similar to Complainant's CABINETS TO GO trademark because the domain name incorporates the entirety of the Complainant's trademark, deletes the trademark's spaces, and adds the country abbreviation "FR" and the .shop gTLD and such changes do not negate confusingly similar between a domain name and a mark per Policy ¶ 4(a)(i).

 

Respondent lacks rights and legitimate interests in respect of the at-issue domain name. Respondent is not commonly known by the domain name and there is no evidence that Respondent had rights therein at the time of registration. Complainant is not affiliated with Respondent nor has Complainant authorized Respondent to use the CABINETS TO GO mark in any capacity. Respondent fails to use the at-issue domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent implies a connection with Complainant. Respondent is prominently using the CABINETS TO GO trademark in the domain name and on the <cabinetstogofr.shop> website and is offering products similar or identical to Complainant's products. Also, the website copies original elements and content from Complainant's official website. Such use is evidence that the Respondent is defrauding customers into believing that the Respondent's website is operated or authorized by Complainant and that the goods being sold on the Respondent's websites are authentic by creating a strong impression of false affiliation with the Complainant. Further, the <cabinetstogofr.shop> website does not accurately state, in a prominent position on the website, the relationship (or lack of) between the respondent and the complainant. Respondent has not replied to Complainant's "Cease and Desist" letter.

 

Respondent registered and used the at-issue domain name in bad faith. Respondent is intentionally attempting to attract, for commercial gain, internet users to Respondent's <cabinetstogofr.shop> website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of such website. Respondent is commercially gaining from the sales of product or users' personal data obtained on the <cabinetstogofr.shop> website showing bad faith under Policy ¶ 4(b)(iv). Respondent is diverting internet customers from Complainant's website to Respondent's <cabinetstogofr.shop> website through the confusion caused by the similarity between the CABINETS TO GO mark and the at-issue domain name. Respondent intends to disrupt Complainant's business. Respondent's disruption of Complainant's business by selling versions of Complainant's products shows that Respondent registered and used the at-issue domain name in bad faith pursuant to Policy ¶ 4(b)(iii). Respondent had actual knowledge of Complainant's rights in CABINETS TO GO when it registered the at-issue domain name. Additionally, Respondent's WHOIS contact information appears incorrect.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has trademark rights in the CABINETS TO GO mark.

 

Respondent has not been authorized to use any of Complainant's trademarks.

 

Respondent registered the at-issue domain name after Complainant acquired rights in CABINETS TO GO.

 

Respondent used <cabinetstogofr.shop> to address a website mimicking Complainant's genuine website and purporting to offer goods or services similar to those offered by 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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Any of Complainant's registrations for its CABINETS TO GO mark with the USPTO or with any other bona fide trademark agency worldwide demonstrates Complainant's rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).

 

Respondent's <cabinetstogofr.shop> domain name consists of Complainant's CABINETS TO GO mark less its domain name impermissible spaces followed by the letters "FR" (an abbreviation for France) with all followed by the ".shop" top-level. The differences between Complainant's trademark and the at-issue domain name fail to distinguish the Complainant's trademark from Respondent's domain name. Therefore, the Panel concludes that Respondent's <cabinetstogofr.shop> domain name is confusingly similar to a mark in which Complainant has rights under Policy ¶4 (a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable 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.")

 

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant's prima facie showing acts conclusively.

 

Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of the at‑issue domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum Jun. 8, 2015) (finding that the respondent was not commonly known by the at-issue domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark into any domain name).

 

The WHOIS information for the at-issue domain name identifies the registrant of <cabinetstogofr.shop> as "BATY ALBERT" and the record before the Panel contains no evidence that tends to show that Respondent is commonly known by <cabinetstogofr.shop>. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent uses the at-issue domain name to address a website that mimics Complainant's genuine website. Respondent's <cabinetstogofr.shop> website thereby attempts to pass itself off as Complainant's to cause internet users to falsely believe that Respondent's domain name and referred website are somehow affiliated with or sponsored by Complainant. Respondent's use of the <cabinetstogofr.shop> domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name "resolves to a website that Respondent has designed to mimic Complainant's own in an attempt to pass itself off as Complainant").

 

Given the forgoing, Respondent lacks rights and lacks legitimate interests in respect of <cabinetstogofr.shop>.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, the Panel finds that Respondent acted in bad faith pursuant to the Policy.

 

Respondent uses the at-issue domain name to address a website mimicking Complainant's genuine website and there offer products that are similar or identical to Complainant's offering for sale. Respondent's use of <cabinetstogofr.shop> to pass itself off as Complainant is disruptive to Complainant's business and is intent on attracting internet users to Respondent's website so that Respondent might then capitalize on the confusion Respondent created between its <cabinetstogofr.shop> domain name and Complainant's CABINETS TO GO trademark. Respondent's use of <cabinetstogofr.shop> demonstrates Respondent's bad faith registration and use of such domain name under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) ("Respondent is appropriating Complainant's mark to divert Complainant's customers to Respondent's competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)."); see also, Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).").

 

Moreover, Respondent had actual knowledge of Complainant's rights in the CABINETS TO GO mark when it registered <cabinetstogofr.shop> as a domain name. Respondent's prior knowledge is apparent given the mark's notoriety and given Respondent's use of the domain name to address a website mimicking Complainant's official website. Respondent's actual knowledge of Complainant's rights in CABINETS TO GO further demonstrates Respondent's bad faith. See Lemon Inc. v. Sumer Singh, FA 2110519 (Forum September 5, 2024 ("registration of a disputed domain name with actual knowledge of another's trademark rights is sufficient to establish bad faith, and can be shown by the notoriety of the mark and the use the Respondent makes of the disputed domain name"); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).

 

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 <cabinetstogofr.shop> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: January 9, 2025