Rexair LLC v Rexair Bul / Stiliyan Grigorov
Claim Number: FA1010001350485
Complainant is Rexair LLC ("Complainant"), represented by Linda E. Monge of Radar, Fishman & Grauer PLLC, Michigan. Respondent is Rexair Bul / Stiliyan Grigorov ("Respondent"), BG.
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name(s) at issue is/are <rainbowbg.com>, registered with Enom, Inc..
The undersigned certify that they acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Carol Stoner, Dennis A. Foster and Mark McCormick, Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2010; the National Arbitration Forum received payment on October 5, 2010.
On Oct 06, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <rainbowbg.com> domain name(s) is/are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 October 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 2010 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@rainbowbg.com. Also on October 6, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.
No Response was made.
On November 9, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Carol Stoner, Dennis A. Foster and Mark McCormick, Chair, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that Respondent is a cybersquatter who registered the <rainbowbg.com> domain name, which is confusingly similar to Complainant’s RAINBOW mark, in bad faith for the purpose of selling competing goods.
B. Respondent
Respondent did not respond.
Complainant Rexair LLC’s predecessor, the Rexair Company began manufacturing and marketing vacuum cleaners in 1929. Complainant began marketing its vacuum cleaner products under the RAINBOW mark in the 1960’s and has been in the same business more than 80 years. It has an international sales and distribution network in more than 70 countries and sells its cleaning system throughout the world.
Complainant’s primary domain name, rainbowsystem.com, has been registered with the U.S. Patent and Trademark Office (“USPTO”) since November 2, 1996. Complainant owns more than 250 registrations and applications for its RAINBOW mark throughout the world. Complainant also holds additional domain names incorporating the RAINBOW mark and has developed its rainbowsystem.com website to promote its products and to provide information about its products.
Respondent Stiliyan Grigorov is a former subdistributor of Complainant who registered the disputed domain name <rainbowbg.com> in 2008. The “bg” stands for Bulgaria, where Respondent is located. Respondent has used the domain name to divert Internet users to another website where he markets competing cleaning products under the RITELLO name. Respondent registered his competing domain name even before his subdistributorship of Complainant’s products was terminated and has persisted in using it to market his competing products despite a request by Complainant’s Bulgaria distributor that he cease doing so. Respondent incorporated Complainant’s corporate name “Rexair” in Bulgaria to pass himself off as having a connection to Complainant in registering his competing domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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.
Complainant’s registrations of its RAINBOW mark establish its rights in the mark within the meaning of Policy ¶4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007). Respondent incorporated Complainant’s mark in his <rainbowbg.com> domain name, adding only the two letter “bg” country code for Bulgaria and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. These changes do not sufficiently distinguish Respondent’s domain name from Complainant’s mark. TPI Holdings, Inc. v. Shola Ajiboye, D2007-1019 (WIPO Sept. 5, 2007).
Complainant has met its burden to show that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶4(a)(i).
Respondent registered his disputed domain name by identifying himself as “Rexair Bul / Stiliyan Grigorov.” This information coupled with the additional evidence provided by Complainant establishes clearly that Respondent is not known by the <rainbowbg.com> domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003).
Similarly, the record shows that Respondent uses the disputed domain name to divert Internet users to his <ritellobg.com> website where he offers products for sale in competition with Complainant’s products. Respondent thus does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003).
Complainant has thus met its burden to show that Respondent lacks rights and legitimate interests in the <rainbowbg.com> domain name within the meaning of Policy ¶4(a)(ii).
The evidence shows Respondent registered and used the disputed domain name to confuse and mislead Internet users and divert them to his competing website in order to market his competing products for a profit. In 2008, when Respondent registered the competing domain name, it was during the term of his subdistributorship of Complainant’s vacuum cleaner business, and was without the approval of, or license from, Complainant. Therefore, ipso facto, Respondent’s registration was secured in bad faith.
Respondent’s bad faith use of Complainant’s marks is evidenced in Complainant’s Exhibits 1, and also in their Exhibits A, I and J, which show that Respondent’s website directly copied portions of texts regarding Complainant’s products from Complainant’s website; used Complainant’s WET DUST CAN’T FLY trademark to describe competing products; prominently utilized the slogan THE POWER OF NATURE (which is a play on Complainant’s THE POWER OF WATER MARK) in similar placement to Complainant’s use of its mark on its own website; placed Complainant’s RAINBOW mark rather than competitor’s mark next to a picture of the competing product; and mistakenly referred to himself by Complainant’s name in the directly copied text.
Respondent, in these actions, is improperly trading on Complainant’s goodwill for his own commercial gain. This conduct establishes bad faith registration and use of his <rainbowbg.com> domain name. See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001).
Accordingly, Complainant has met its burden to show that Respondent registered and has used the domain name in bad faith within the meaning of Policy ¶4(a)(iii).
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rainbowbg.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Dennis A. Foster and Mark McCormick, Chair, Panelists
Dated: November 19, 2010
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