Smooth Corporation v. ifloortile.com
Claim Number: FA0609000809770
PARTIES
Complainant is Smooth Corporation (“Complainant”), represented by Karl S. Kronenberger, of Kronenberger Hanley, LLP, 220 Montgomery Street, Suite 1920, San Francisco, CA 94104. Respondent is Ifloortile.com (“Respondent”), 5313 Silver Strand Way, Sacramento, CA 95841.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ifloortile.com>,
(the “Disputed Domain”) registered with Network
Solutions, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Clive Elliott as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 29, 2006; the National Arbitration Forum received a
hard copy of the Complaint on September 29, 2006.
On September 29, 2006, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <ifloortile.com>
domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On October 5, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 25, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@ifloortile.com by e-mail.
A timely Response was received and determined to be complete on October
6, 2006.
On October 13, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Clive Elliott as Panelist.
On October 24, 2006, a facsimile letter was
received from Mark C. Jacobs, a Registered Patent Attorney authorised to
represent Respondent and advising that Respondent was ready, willing and able
to assign the Disputed Domain to Complainant.
RELIEF SOUGHT
Complainant requests that the Disputed Domain be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a leading flooring retailer on the
Internet. It started doing business in
1998 and at or about this time commenced using the service mark “iFLOOR.com”
(the “Mark”). Complainant has continued to use the Mark to sell and promote its
products and services and asserts that as a result its Mark has become the most
recognized brand in the Internet floor retailing industry.
Complainant has registered its service mark with the United
States Patent and Trademark Office under Registration No. 2,733,575, which
includes both the words and letters, and the stylized form of the service mark,
for retail store services available over the Internet featuring flooring.
Complainant asserts that iFLOOR.com is now a widely
recognised name in the flooring industry, both nationally and worldwide,
enjoying a consumer base of both consumers and experienced contractors. Complainant markets and distributes its
products primarily through the website <ifloor.com>, as well as through
retail stores in the USA that serve as both pick-up points for Internet sales
and locations for walk-in customers to shop.
Complainant states that it has recently become aware of the
fact that Respondent has registered its Mark in the domain name, <ifloortile.com>
(the “Disputed Domain”).
Complainant notes that Respondent's web page for the Disputed Domain is
“parked” and contains links to products competitive to those of Complainant,
from which revenues are being generated through “pay-per-click"
commissions.
Complainant relies on its provided by the registration of
the Mark and also by virtue of common law rights by virtue of the use of the
Mark and the secondary meaning acquired thereby.
Complainant notes that, except for the addition of “tile” after
“iFLOOR,” the Disputed Domain contains the exact Mark of the Complainant,
without the addition of any other words or letters.
Complainant argues that Respondent is not now
nor has it ever been known by the name "iFLOOR.com" and does not have
any legitimate interest in being associated with the Disputed Domain and is not
making any legitimate, non-commercial or fair use of the domain <ifloortile.com>. Finally,
Complainant submits that Respondent’s parking and links to competitive
products is evidence of bad faith.
B. Respondent
Respondent
provided no substantive response but simply stipulated and agreed in writing to
a decision in favour of Complainant and indeed expressly requested that the
Panel order the Disputed Domain be transferred to Complainant. As noted above, on October 24, 2006, a
notification was received by the National Arbitration Forum from Respondent’s
Patent Attorney advising that Respondent was ready, willing and able to assign
the Disputed Domain to Complainant.
The Patent Attorney also suggested that there was
no need for an arbitration proceeding given his client’s agreement to transfer
the Disputed Domain. That however is a
moot point because the proceeding is underway and extant and needs to be
resolved.
Given
that Respondent does not contest any of Complainant’s allegations
regarding the Disputed Domain, it is open
to the Panel to decide to forego the traditional UDRP analysis and order
the immediate transfer of the said domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman
Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain
name registration where the respondent stipulated to the transfer); see also
Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum
Jan. 13, 2004) (“In this case, the parties have both asked for the domain name
to be transferred to the Complainant . . . Since the requests of the
parties in this case are identical, the Panel has no scope to do anything other
than to recognize the common request, and it has no mandate to make findings of
fact or of compliance (or not) with the Policy.”); see also The Royal Bank
of Scotland Group plc v. rbspayments, FA 728805 (Nat. Arb. Forum Jul. 7,
2006) (transferring the <rbspayments.com> domain name where the
respondent agreed to the transfer and did not contest any of the complainant’s
allegations).
Under the circumstances and absent
any obvious reasons why in this particular case a transfer should not be
ordered, the Panel finds for Complainant and considers it unnecessary to
separately analyze the case under the elements of the UDRP.
FINDINGS
Accordingly, giving due consideration to the
submissions and evidence filed by Complainant and Respondent’s written
stipulation and agreement to a transfer of the Disputed Domain to Complainant,
such transfer is hereby ordered.
DECISION
For the foregoing reasons and with the agreement and consent of
Respondent, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ifloortile.com>
domain name be TRANSFERRED from Respondent to Complainant.
Clive Elliott, Panelist
Dated: October 26, 2006
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