Spectrum Brands, Inc. v. Dmitriy Grishunin / Private Person
Claim Number: FA1711001760029
Complainant is Spectrum Brands, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Dmitriy Grishunin / Private Person (“Respondent”), Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <furminator.pro> (the “Domain Name”), registered with Tucows Domains Inc.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 27, 2017; the Forum received payment on November 27, 2017.
On November 28, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the Domain Name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 November 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 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@furminator.pro. Also on November 30, 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.
A timely Response was received and determined to be complete on December 4, 2017.
On December 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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
Complainant supplies pet grooming devices and brushes under several FURMINATOR trademarks, including United States Patent and Trademark Office registration dated July 5, 2005 (Reg. No. 2,965,342, claiming first use in commerce on November 18, 2002). The Domain Name is identical to that mark because it simply appends the generic top-level domain (“gTLD”) “.pro” to that mark.
Respondent does not have rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise authorized Respondent to use its FURMINATOR mark and Respondent is not commonly known by the Domain Name. Respondent does not use the Domain Name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to pass itself off as Complainant and divert Internet users to Respondent’s website, which offers counterfeit versions of Complainant’s products.
Respondent registered and is using the Domain Name in bad faith. Respondent attempts to disrupt Complainant’s business by diverting Internet users to Respondent’s competing website. Respondent is also attempting to attract Internet traffic and commercially benefit from the goodwill of the FURMINATOR mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant and advertising counterfeit versions of Complainant’s products for purchase. Further, Respondent had actual knowledge of Complainant’s rights in the FURMINATOR mark.
B. Respondent
Respondent has advertised Complainant’s products since 2010 and has invested heavily in the Domain Name. Through Respondent’s work, customers recognize the FURMINATOR brand. Respondent has tried to contact Complainant directly to collaborate and help get rid of counterfeit products in Russia.
Complainant has established all elements entitling it to relief.
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.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Hewlett-Packard Company v. Full System, FA 0094637 (Forum May 22, 2000) David G. Cook v. This Domain is For Sale, FA0094957 (Forum July 12, 2000) and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, FA0094925 (Forum July12, 2000).
Complainant has shown that it has registered trademark rights in the word FURMINATOR. The Domain Name is identical to that mark because the appended gTLD “.pro” does not sufficiently distinguish the mark from the Domain Name. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”).
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the Domain Name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel finds that the FURMINATOR mark is distinctive and widely known. Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the Domain Name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006).
Respondent claims to have been advertising Complainant’s products since 2010 and to have invested heavily in the Domain Name.
The Panel notes that the Domain Name was registered on January 5, 2011 in the name “Moscow Forewer”, with the email address for the registrant being “grishunin@mail.ru” and that the name of the registrant was later changed to Dmitriy Grishunin, the present Respondent. The Panel considers that the Domain Name has always been under the control of Respondent.
The period of over 6½ years between registration of a disputed domain name and the filing of a Complaint under the Policy could enable a respondent to establish rights to or legitimate interests in a disputed domain name. However, in this case Respondent’s website is clearly designed to create the false impression that it is the authorised Russian outlet of Complainant, displaying Complainant’s FURMINATOR trademark and offering numerous goods, all bearing another of Complainant’s trademarks, United States registered trademark No. 3238141, being an illustration of a paw print above the word “FURminator” (the “FURminator mark”), registered on May 1, 2007. Complainant has provided evidence that goods bearing that mark which it bought from Respondent’s website are counterfeit.
Under these circumstances Respondent has failed to rebut Complainant’s prima facie case and the Panel finds Respondent has no rights to or legitimate interests in the Domain Name.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
For the reasons set out above, the Panel finds that Respondent has clearly used the Domain Name to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s FURMINATOR and FURminator marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and of products on its website.
Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the Domain Name <furminator.pro> be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: December 14, 2017
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