Steelcase Inc. v. Philip Bigler
Claim Number: FA1704001725297
Complainant is Steelcase Inc. (“Complainant”), represented by Lisa R. Harris, Michigan, USA. Respondent is Philip Bigler (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <steelcase-corp.com>, registered with 1&1 Internet SE.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 5, 2017; the Forum received payment on April 5, 2017.
On April 5, 2017, 1&1 Internet SE confirmed by e-mail to the Forum that the <steelcase-corp.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 April 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 2017 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@steelcase-corp.com. Also on April 6, 2017, 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 May 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, STEELCASE Inc., is in the business of producing office furniture, architectural, and technology products for office environment, education, health care, and retail industries. In furtherance of its business, Complainant has registered the STEELCASE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 534,526, registered Dec. 12, 1950). Respondent’s <steelcase-corp.com> is identical to the STEELCASE mark because it incorporates the mark in its entirety merely adding a hyphen, the generic term “corp”, and a generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in <steelcase-corp.com>. Complainant has not licensed or otherwise permitted Respondent to use the mark and Respondent is not otherwise commonly known by <steelcase-corp.com>. Respondent has caused <steelcase-corp.com> to resolve to a page designed to monetize the domain names through click-through fees associated with hyperlinks. This use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. An employee of Complainant also received an email from an email address associated with <steelcase-corp.com>, which sought to appear to be emails from the Senior Vice President and Chief Financial Officer of Complainant. The email sought to inquire about payments and invoices. Efforts to obtain financial information with no legitimate purpose for doing so constitute attempts at phishing. Use of a domain name for the purposes of phishing information for Respondent’s own purposes does not evince rights or legitimate interests.
Respondent has registered and used <steelcase-corp.com> in bad faith. Respondent’s use of an email address to conduct phishing schemes constitutes an intentional attempt to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation and is evidence of bad faith. Respondent’s impersonation of Complainant’s CEO disrupts Complainant’s business in a way which indicates bad faith. Respondent has also used the disputed domain name to attract and confuse Internet users for commercial profit with click through hyperlinks—conduct proscribed by Policy ¶ 4(b)(iv). In addition, the use Respondent made of the STEELCASE mark also evinces Respondent’s actual knowledge of Complainant’s rights in the mark. Respondent’s registration of the disputed domain name with actual knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set for the below, the Panel finds Complainant is entitled to the requested relief of transfer of the <steelcase-corp.com> 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.
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 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 (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.”).
Complainant, STEELCASE Inc., is in the business of producing office furniture, architectural, and technology products for office environment, education, health care, and retail industries. In furtherance of its business, Complainant has registered the STEELCASE mark with the USPTO (e.g., Reg. No. 534,526, registered Dec. 12, 1950). The consensus is that registration with the USPTO is sufficient in conferring rights in a mark under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Therefore, the Panel deems Complainant’s evidence of USPTO registrations for the STEELCASE mark to be sufficient in establishing rights under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <steelcase-corp.com> is identical to the STEELCASE mark because it incorporates the mark in its entirety merely adding a hyphen, the generic term “corp”, and a generic top-level domain (“gTLD”) “.com”. The gTLD “.com” has been characterized as “[doing] nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.” Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Forum Sept. 6, 2007). Panels have determined that the insertion of a hyphen does not differentiate the disputed domain from the mark in question. See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Additionally, a generic term such as “corp” does not render the disputed domain distinct. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). Thus, the Panel agrees that Respondent’s <steelcase-corp.com> is confusingly similar to the STEELCASE mark under a Policy ¶ 4(a)(i) confusing similarity analysis.
Complainant has proved this 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 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends Respondent has no rights or legitimate interests in <steelcase-corp.com>. Complainant claims that Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted to use the STEELCASE mark in any respect. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Philip Bigler.” The Panel finds that Respondent is not commonly known by the disputed domain name.
Complainant alleges Respondent has not made a bona fide offering of goods or services, or legitimate noncommercial or fair use of the disputed domain names. Complainant declares Respondent has caused <steelcase-corp.com> to resolve to a page designed to monetize the domain names through click-through fees associated with hyperlinks. Panels have found such use to amount to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bloomberg Finance L.P. v. Syed Hussain / Domain Management, FA1410001582912 (Forum Nov. 10, 2014) (concluding that the respondent’s use of the disputed domain name to host hyperlinks, unrelated to the complainant’s business, did not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii)). Therefore, this Panel agrees that the mere inclusion of hyperlinks on a parked page does not rise to the level of a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Additionally, Complainant indicates that Respondent engaged in a fraudulent email scheme to financially profit. Efforts to obtain financial gain with no legitimate purpose for doing so constitute attempts at phishing pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA1003001314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant identifies an email from an address associated with <steelcase-corp.com>. The email sought to appear to be emails from David Sylvester, the Senior Vice President and Chief Financial Officer of Complainant. Complainant alleges that Respondent used Mr. Sylvester’s name combined with Respondent’s domain name <steelcase-corp.com> to inquire about payments and monthly purchases. Therefore, the Panel finds that the use of the disputed domain name for phishing by Respondent is not a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
Complainant has proved this element.
Complainant alleges Respondent has registered and used <steelcase-corp.com> in bad faith. Complainant asserts Respondent’s impersonation of Complainant’s CEO disrupts Complainant’s business in a way which indicates bad faith. Panels have determined that the use of a domain by a respondent to impersonate a complainant’s executive constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Brownell Travel, Inc. v. Troy Haas, FA1411001589137 (Forum Dec. 20, 2014) (finding the use of the domain name to send emails impersonating the CEO to the Complainant’s Account Manager to attempt to commit fraud on the Complainant constituted bad faith registration and use under Policy ¶ 4(b)(iii)). As previously indicated, an email sent from an email account used the disputed <steelcase-corp.com> as the domain. The Panel agrees that this alleged attempt to impersonate Complainant’s officer for commercial or monetary gain indicates bad faith registration under Policy ¶ 4(b)(iii) as well as under Policy ¶ 4(b)(iv).
Additionally, Complainant asserts that under Policy ¶ 4(b)(iv), Respondent has registered and used a confusingly similar domain name to attract and confuse Internet users for commercial profit. In T-Mobile USA, Inc. v. utahhealth, the Panel found that registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a parked “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv). FA 697821 (Forum June 7, 2006). Complainant’s Exhibit 4 shows resolving screenshots of <steelcase-corp.com> which include a number of hyperlinks. The Panel finds the circumstances of the instant dispute similar to those in T-Mobile and determines that Respondent has registered and used the disputed domain to presumably profit from click through-hyperlink clicks by confused Internet users and thus exhibits bad faith under the language of Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent registered the disputed domain name with actual or constructive knowledge of the STEELCASE mark and Complainant’s rights in the mark. The use of the name of an actual employee of Complainant in an email containing the disputed domain name is evidence that Respondent is aware of Complainant’s rights in the trademark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). The Panel agrees that this imputed actual knowledge amounts to bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <steelcase-corp.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: May 3, 2017
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