Grigore’s Hardwood Flooring v. Steve Livengood
Claim Number: FA1507001628989
Complainant is Grigore’s Hardwood Flooring (“Complainant”), represented by Maulin V. Shah of UDRPro, LLC, New York, USA. Respondent is Steve Livengood (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grigoreshardwoodflooring.com> ('the Domain Name'), registered with GoDaddy.com, LLC.
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.
<<Dawn Osborne>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 15, 2015; the Forum received payment on July 15, 2015.
On July 16, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <grigoreshardwoodflooring.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 July 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2015 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@grigoreshardwoodflooring.com. Also on July 16, 2015, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On August 7, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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
The Complainant's submissions can be summarised as follows:
The Complainant has been providing flooring related services since 2006 under the mark GRIGORE's HARDWOOD FLOORING which has acquired secondary meaning and has become a distinctive identifier associated with Complainant's services. Complainant has spent over $50,000 since 2006 promoting its business under its mark. In 2013 and 2014 the Complainant obtained third party media awards for its services. Complainant in its peak years generated over USD $300,000 revenue and has had over 500 clients since 2006.
The Complainant used the Domain Name from 2007 until 2015 to promote its services. It owned the Domain Name until its administrator inadvertently allowed it to lapse, when it was registered by the Complainant. The Complainant did not realise until its customers informed it the Domain Name was displaying pornographic videos.
The Domain Name is confusingly similar to Complainant's mark. It completely encompasses the Complainant's mark with the addition of the generic gTLD. These variations are insufficient to distinguish a domain name from a given mark under the Policy.
The Respondent is using the Complainant's established brand recognition to divert users to pornographic material thus tarnishing the Complainant's mark. Respondent is nor engaging in a bona fide offering of goods or services or making a legitimate or non-commercial fair use of the Domain Name, as the Domain Name resolves to pornography for a charge. Respondent is not commonly known by the Domain Name and dos not have any approval from the Complainant. Further the Domain Name belonged previously to the Complainant it is only owned by the Respondent due to lapse in registration.
Use for pornography constitutes bad faith use and registration pursuant to the Policy.
Further the Respondent is intentionally attempting to attract Internet users to the Respondent’s web site by creating a likelihood of confusion with Complainant’s mark as to the source, affiliation or endorsement of the Respondent’s web site.
To intentionally take advantage of a lapsed domain name associated with a trade mark is also bad faith.
The removal of the Complainant’s web site has significantly disrupted the Complainant's business activities, e mail access and the ability to communicate with customers and potential clients.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical or Confusingly Similar
The Complainant has successfully demonstrated by evidence that it has common law rights in its GRIGORE'S HARDWOOD FLOORING mark. The Domain Name consists of the Complainant’s common law GRIGORE'S HARDWOOD FLOORING without the possessive apostrophe, plus the gTLDs .net or .com. The omission of the possessive apostrophe is unlikely to be noticed in the use of a domain name as registration of possessive apostrophes is not possible in a domain name in any event.
The gTLD .com does not serve to distinguish the Domain Name from the GRIGORE'S HARDWOOD FLOORING mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
The Panel agrees with the Complainant that on the evidence the Respondent is not commonly known by the Domain Name, is not using it to offer bona fide goods and services and is not making a legitimate non-commercial or fair use of the name. The site attached to the Domain Name has been set up for commercial benefit to use the Complainant’s intellectual property rights to attract customers to make a profit through pornography.
Panels have held that such use by a respondent evinces no rights or legitimate interests. See AM. Online Inc. v Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003) (Respondent uses <aol-x.com> in connection with [adult orientated] material which is not a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the domain name pursuant to Policy 4(c) (i) and (iii).)
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Previous panels have held that pointing a domain name reflecting a trade mark to pornography as the Respondent has in this case is confusing bad faith registration and use. See Nat'l Ass'n of Stock Car Auto Racing, Inc v RMG Inc - BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan 23, 2002)(It is now well known that [adult orientated material providers] rely on misleading domain names to attract users by confusion in order to generate revenue from click through advertising, mouse trapping or other pernicious online marketing techniques') See also Google Inc v Bassano, FA 232958 (Nat. Arb. Forum Mar 8, 2004) (Holding that the respondent's use of the googlesex.info domain name to intentionally attract Internet users to a web site featuring adult orientated content constitutes bad faith registration and use under the Policy. 4 (b) (iv). Previous panels have also held that use in relation to pornography to tarnish without confusion is also bad faith registration and use per se. See Wells Fargo & Co. v Party Night Inc, FA 144647 (Nat Arb Forum Mar 18, 2003) the panel found that the respondent's tarnishing use of the disputed domain name to redirect Internet users to adult orientated web sites was evidence that the domain names were being used in bad faith per se.
In this case there is also evidence that the Respondent is disrupting the Complainant’s business intentionally per Policy 4 (a) (iii).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <grigoreshardwoodflooring.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: <<August 21, 2015>>
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