DECISION

 

Consolidated Graphics, Inc. v. Peter Mayors

Claim Number: FA2506002161507

 

PARTIES

Complainant is Consolidated Graphics, Inc. ("Complainant"), represented by Brian L. Heidelberger of Loeb & Loeb LLP, Illinois, USA. Respondent is Peter Mayors ("Respondent"), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <consolidatedgraphicsinc.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 have no known conflict in serving as Panelist in this proceeding.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 18, 2025; Forum received payment on June 18, 2025.

 

On June 20, 2025, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <consolidatedgraphicsinc.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 June 20, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 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@consolidatedgraphicsinc.com. Also on June 20, 2025, 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 July 10, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the CONSOLIDATED GRAPHICS mark based on its ownership of the United States registered service mark described below, and continuous use of the mark in commerce since 1994.

 

Complainant adds that it has spent significant sums advertising and promoting its mark in the United States and as a result of its extensive marketing efforts and sales success, the CONSOLIDATED GRAPHICS mark has acquired significant goodwill and reputation.

 

Furthermore, Complainant submits that it has an active Internet presence and owns various domain names used in connection with the CONSOLIDATED GRAPHICS mark including, but not limited to, <consolidatedgraphics.com> and <cgx.com>.

 

To illustrate the extent of its operation, Complainant explains that in 2023 it was acquired by R.R. Donnelly & Sons Company – a leading global provider of marketing, packaging, print and supply chain solutions for USD $620 million, as evidenced in media reporting which is exhibited in an annex to the Complaint.

 

Complainant firstly alleges that the disputed domain name is identical or confusingly similar to the CONSOLIDATED GRAPHICS mark in which it has rights as it contains the mark in its entirety, in combination with the descriptive term "inc"  and the generic Top-Level Domain ("gTLD") extension <.com>.

 

Complainant submits that the addition of the element "inc" does not prevent a finding of similarity as it merely refers to Complainant's corporate structure arguing that panels found domain names identical and confusingly similar under similar circumstances in the past. See, e.g. 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.").

 

Furthermore, it is submitted that the gTLD extension <.com> does not distinguish the disputed domain name from the mark, citing Travelocity.com LP v. Thomas Lefleur c/on/a, FA 1296087 (Forum Jan. 11, 2010) ("Similarly, the addition of a gTLD does not reduce the likelihood of confusion between the resulting domain name and the mark, because every domain name must contain a top-level domain.").

 

Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that

·       Respondent is not commonly known by the disputed domain name;

·       the WHOIS records for the disputed domain name show the registrant as "Peter Mayors," with no evidence that Respondent is commonly known by the name "Consolidated Graphics Inc."

·       there is no evidence that Respondent has any rights predating Complainant's longstanding use and registration of the mark, citing Delray Beach Historical Society, Inc. v. Cirila Strawmyer, WIPO Case No. D2004-0387 (finding that "[i]t is highly unlikely that respondent can allege that it was commonly known by the domain name or a name corresponding to the domain name because it was complainant that was known by that name for almost forty years");

·       there no evidence that Respondent made any use of the CONSOLIDATED GRAPHICS mark prior to Complainant's adoption, use or registration of the mark in 1994;

·       Complainant has not licensed or authorized Respondent to use its CONSOLIDATED GRAPHICS mark or register any domain name incorporating the mark;

·       Respondent is not using the disputed domain name for a bona fide offering of goods or services, but instead, it is being used to impersonate Complainant and potentially defraud users as shown in a screen capture of the website to which it resolves which is exhibited in an annex to the Complaint (the "exhibited screen capture");

·       The exhibited screen capture shows that Respondent is using the disputed domain name to impersonate Complainant, trade off its goodwill and potentially defraud unsuspecting internet users; and panels established under the Policy have categorically held that the use of a domain name for illegal activity, e.g., impersonation/passing off, phishing, or other types of fraud, can never confer rights or legitimate interests on a respondent as in for example Edible Communities v. Thoreau, FA0803001158554 (Forum Apr. 16, 2008) ("[R]espondent's use of the disputed domain name [<theedibleaustin.com>] to pass itself off as [c]omplainant shows that [r]espondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) as well as Policy ¶ 4(c)(iii).").

 

Complainant next alleges that the disputed domain name was registered and is being used in bad faith.

 

Complainant again refers to the exhibited screen capture of the website to which the disputed domain name resolves, which shows that Respondent is purporting to offer printing and printing related goods and services prominently displaying the CONSOLIDATED GRAPHICS mark.

 

Complainant submits that the screen capture illustrates that Respondent is purporting to impersonate Complainant on the website which demonstrates actual knowledge of the CONSOLIDATED GRAPHICS mark at the time of registration. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (holding that while constructive knowledge alone is insufficient to support a finding of bad faith, circumstances indicating that a respondent had actual knowledge of a complainant's mark at the time of registration may justify such a finding).

 

It is further contended that the exhibited screen capture shows that Respondent is using the disputed domain name within the address of his website to impersonate Complainant by using Complainant's name, mark, address, and phone number, and purporting to offer identical printing services to those offered by Complainant.

 

Complainant further argues that the posting of Complainant's actual contact details and branding, reinforcing the likelihood of confusion among Internet users.

 

Additionally, Complainant submits a copy of an MX record for the disputed domain name which is exhibited in an annex to the Complaint (the "exhibited MX record").

 

The exhibited MX record indicates that the disputed domain name is configured to send and receive email which raises concerns about phishing or fraudulent activity.

 

It is argued that therefore by establishing the website to which the disputed domain name resolves, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website by Complainant. Specifically, Respondent is using the disputed domain name to misleadingly divert and lure internet users and Complainant's prospective customers using a mark confusingly similar to Complainant's well-known mark and advertising competing printing services.

 

Complainant adds that Respondent's use of the CONSOLIDATED GRAPHICS mark in the address of his website is confusing and disruptive because visitors might reasonably believe that the services marketed there are connected to or approved by Complainant. See, e.g. Microsoft Corp. v. Lafont, FA1009001349611 (Forum Nov. 9, 2009) ("intentional appropriation of Complainant's mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶ 4(b)(iv)").

 

Finally, Complainant submits that Respondent has a history of registering domain names incorporating third-party trademarks. In this regard Complainant refers to a reverse WHOIS search which is exhibited in an annex to the Complaint which shows that Respondent is the holder multiple domains targeting other well-known brands; and furthermore, Respondent has been involved in at least two prior UDRP proceedings that resulted in domain transfers, supporting a finding of a pattern of bad faith conduct.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is a provider of provides digital and commercial printing, print management and proprietary Internet-based technology solutions. using the CONSOLIDATED GRAPHICS mark for which it holds the following registration: 

·       United States registered service mark CONSOLIDATED GRAPHICS (stylized) registration number 2,535,668, registered on the Principal Register February 5, 2002, for services in international class 42.

 

Complainant has an active online presence and owns and uses domain names associated with the CONSOLIDATED GRAPHICS mark including <consolidatedgraphics.com> created on December 4, 1998, and <cgx.com>, created on June 21, 1995

 

The disputed domain name <consolidatedgraphicsinc.com> was registered on January 10, 2022. It resolves to a website on which Respondent is purporting to impersonate Complainant, using Complainant's CONSOLIDATED GRAPHICS mark without license or permission, and offering competing services. Furthermore an MX record shows that the disputed domain name has been configured to send and receive emails.

 

There is no information available about Respondent, except for that provided in the Complaint, the Registrar's WhoIs and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name for the purposes of this proceeding.

 

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

Complainant has provided convincing evidence that rights in the CONSOLIDATED GRAPHICS mark, established by its ownership of the United States service mark registration described above.

 

The disputed domain name <consolidatedgraphicsinc.com> consists of Complainant's mark in its entirety, in combination with the element "inc" and the gTLD extension <.com>.

 

Complainant's CONSOLIDATED GRAPHICS mark is the dominant and only distinctive element in the disputed domain name.

 

The element "inc" within the disputed domain name does not prevent a finding of confusing similarity as it is a commonplace abbreviation inferring that the phrase relates to the name of a corporation.

 

Neither does the gTLD extension <.com> prevent a finding of confusing similarity as in the circumstances of this case, it would be considered by Internet users as a necessary technical requirement for a domain name.

 

This Panel finds therefore that the disputed domain name <consolidatedgraphicsinc.com> is confusingly similar to the CONSOLIDATED GRAPHICS mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

In its Complaint, Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name as set out in Complainant's uncontested and convincing detailed submissions above.

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant's registered trademark CONSOLIDATED GRAPHICS mark is clearly recognizable as the only element within the disputed domain name.

 

Complainant's registered service mark rights in the mark predate the registration of the disputed domain name. The service mark registration relied upon by Complainant dates back to February 5, 2002 whereas the disputed domain name was not registered until January 10, 2022.

 

It is improbable that the registrant of the disputed domain name was unaware of Complainant's mark when the disputed domain name was chosen and registered because Complainant's CONSOLIDATED GRAPHICS is a very distinctive combination of elements, and the disputed domain name is almost identical to Complainant's mark.

 

Furthermore, Complainant's own almost identical domain name <consolidatedgraphics.com> created on December 4, 1998, had been registered and used long prior to the registration of the disputed domain name. So, it is improbable that when registering the disputed domain name the registrant did not become aware of Complainant's own almost identical domain name.

 

There appears to be no plausible reason for registering the disputed domain name other than to create an association with Complainant and its CONSOLIDATED GRAPHICS mark.

 

On the balance of probabilities, therefore, this Panel finds that the disputed domain name was chosen and registered with Complainant's mark in mind with the intention of taking predatory advantage of Complainant's rights and goodwill in the CONSOLIDATED GRAPHICS mark.

 

The uncontested evidence in the form of the exhibited screen capture of the website to which the disputed domain name resolves shows Respondent is using the disputed domain name within the address of his website on which he is purporting to impersonate Complainant by offering competing services while using Complainant's name, mark, address, and phone number, and purporting to offer identical printing services to those offered by Complainant.

 

Such misleading use of Complainant's trademark within the address of the resolving website is on the balance of probabilities intentionally intended to attract and confuse Internet users and cause them to divert their Internet traffic intended for Complainant and misdirect it to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site, which constitutes bad faith for the purposes of the Policy.

 

Additionally, Complainant has adduced evidence in the form of an exhibited MX record which shows Respondent has configured the confusingly similar disputed domain name to receive and send emails. This is very concerning in the above circumstances and infers an intention to use the disputed domain name in bad faith to engage in phishing or other fraudulent correspondence.

 

Furthermore, Complainant has adduced in evidence a reverse WhoIs search which shows that Respondent has been the unsuccessful respondent in a prior case brought under the Policy which is evidence of a pattern of registration of domain names in bad faith.

 

As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in 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 <consolidatedgraphicsinc.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James Bridgeman SC

Panelist

Dated: July 13, 2025