CFDC Acquisition, LLC v. Liberty Flag & Specialty Company
Claim Number: FA1203001434216
Complainant is CFDC Acquisition, LLC (“Complainant”), represented by R. Scott Keller of Warner Norcross & Judd LLP, Michigan, USA. Respondent is Liberty Flag & Specialty Company (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americasflagcompany.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 12, 2012; the National Arbitration Forum received payment on March 13, 2012.
On March 15, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <americasflagcompany.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 2012 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@americasflagcompany.com. Also on March 15, 2012, 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.
A timely Response was received and determined to be complete on March 30, 2012.
Complainant submitted an Additional Submission that was received and determining to be timely on April 4, 2012.
On April 13, 2012 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Katalin Szamosi as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant argues that Respondent’s < americasflagcompany.com > domain name is identical or confusingly similar to Complainant’s mark, in support of this Complainant asserts that it
Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name. In support of this Complainant asserts that
Complainant argues that Respondent registered and uses the disputed domain names in bad faith. In support of this Complainant contends that
B. Respondent
Respondent asserts in its Response that,
C. Additional Submissions
Complainant argues in its Additional Submission that
Complainant is the owner of the AMERICA’S FLAG COMPANY trademarks which are registered with the United States Patent and Trademark Office.
The USPTO trademark registration for the mark lists December 2003 as the date of first use for Complainant’s mark.
Complainant submitted several declarations from third-party companies which attest that the tagline "America's Flag Company" is associated with Complainant.
Screenshots submitted by the Complainant also support the fact that third party companies distributing Complainant's products refer to the products as products of America's Flag Company.
Respondent registered the <americasflagcompany.com> domain name in 2007.
Preliminary Issue: Deficient Response
In Complainant’s Additional Submission, Complainant alleges that Respondent’s Response does not contain the proper certification that the Response is complete, accurate, and warranted. Complainant also claims that Respondent did not properly serve the Response.
Although the Panel finds that the deficiency allegation of the Complainant is well-grounded - i.e. the Response is not in compliance with ICANN Rule 5. -, but the missing certifications do not constitute a substantial deficiency, the Panel has decided to consider the deficient Response. See Victoria’s Secret Stores Brand Management, Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
Discussion
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.
The Panel notes that ownership of a federally registered trademark is strong evidence of a Complainant’s rights in that mark under Policy ¶ 4(a)(i). See, e.g., Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006); Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005). Here, Complainant owns the federally registered trademark AMERICA'S FLAG COMPANY.
The Panel finds that Complainant has established rights in its AMERICA’S FLAG COMPANY mark under Policy ¶ 4(a)(i), dating back to November 17, 2008. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Additionally Panel finds that based on the USPTO registry there is sufficient evidence to conclude that Complainant owns common law rights in the AMERICA’S FLAG COMPANY mark under Policy ¶ 4(a)(i), dating back to December 2003. The Complainant’s common law rights are also proven by the submitted materials such as declarations of third party companies and screenshots of websites. See also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
The Panel notes that the disputed domain name does not contain the apostrophe and the spaces found in Complainant’s mark and does contain the generic top-level domain (“gTLD”) “.com.” However, the Panel is of the view that these alterations to Complainant’s mark fail to adequately distinguish the disputed domain name, therefore the Panel finds that Respondent’s <americasflagcompany.com> domain name is confusingly similar to Complainant’s AMERICA’S FLAG COMPANY mark pursuant to Policy ¶ 4(a)(i). See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
As to the second element, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The Panel finds that the WHOIS information for the disputed domain name identifies “Liberty Flag & Specialty Company” as the registrant, therefore Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel finds that Complainant submitted sufficient evidence to prove that the website under the domain name contains third party links and links to Complainant's competitors, therefore the Respondent's use of the confusingly similar domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Respondent registered and uses the confusingly similar disputed domain name to attempt to create confusion as to Complainant’s association with the domain name and to profit from that confusion, therefore the Panel finds that Respondent registered and uses the <americasflagcompany.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americasflagcompany.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Katalin Szamosi, Panelist
Dated: April 27, 2012
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