Hudson’s Furniture Showroom, Inc. v. Boran Batur
Claim Number: FA2110001971294
Complainant is Hudson’s Furniture Showroom, Inc. (“Complainant”), represented by Ava K. Doppelt of Allen, Dyer, Doppelt & Gilchrist, P.A., Florida, USA. Respondent is Boran Batur (“Respondent”), represented by Rachel Hofstatter of Honigman LLP, District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hudsonfurniture.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 Forum electronically on October 29, 2021; the Forum received payment on October 29, 2021.
On November 1, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hudsonfurniture.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 November 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 2021 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@hudsonfurniture.com. Also on November 3, 2021, 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 November 22, 2021.
An Additional Submission was received from the Complainant on December 3, 2021 and the Respondent submitted an Additional Submission on December 7, 2021.
On November 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed dr. Katalin Szamosi 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.
Respondent requests the Panel to deny Complainant’s request for relief.
A. Complainant
The Complainant asserts the following:
· Complainant is a company selling furniture to consumers primarily in the central Florida area.
· Complainant has continually advertised and provided its goods under the "HUDONS’S FURNITURE " mark throughout the central Florida area.
· Complainant has eighteen (18) stores in the central Florida area where it sells its goods under the mark.
· Complainant also advertises its goods under the "HUDONS’S FURNITURE " mark at its website located at <https://www.hudsonsfurniture.com> and via local newspapers.
· Complainant’s continuous use of its "HUDONS’S FURNITURE " mark in connection with the sale of furniture for forty years establishes common law rights in the "HUDONS’S FURNITURE " mark.
· The <hudsonfurniture.com> domain name is identical or confusingly similar to Complainant’s "HUDONS’S FURNITURE " mark because it wholly incorporates Complainant’s mark but for the removal of the apostrophe and a letter “s” and adding in the “.com” generic top-level domain (“gTLD”).
· Respondent does not have any rights or legitimate interests in the <hudsonfurniture.com> domain name because Respondent is not commonly known by the domain name nor is Respondent an authorized user or licensee of Complainant’s "HUDONS’S FURNITURE " mark.
· Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent has not made any demonstrable preparations to use the domain name.
· Lack of rights or legitimate interests is found through Respondent’s offer to sell the domain name.
· Respondent registered and uses the <hudsonfurniture.com> domain name in bad faith because Respondent appears to be selling the domain name in excess of out of pocket costs.
· Respondent registered and uses the <hudsonfurniture.com> domain name in bad faith because failed to make active use of the domain name.
B. Respondent
The Respondent asserts the following:
· Complainant fails to sufficiently establish it has common law rights in the "HUDONS’S FURNITURE " mark beyond the scope of its geographic location in Central Florida that would give rise to transfer of a domain name not exclusively associated with the Complainant.
· Complainant does not own and does not in its Complaint allege to own a federal or state registration of the designation "HUDSON’S FURNITURE".
· HUDSON FURNITURE INC. of New York (a different legal entity from the Complainant) has registered the mark HUDSON FURNITURE with the United States Patent and Trademark Office (USPTO) for furniture, retail store services featuring furniture, and light fixtures.
· Complainant has only limited common law rights in and to its name.
· Numerous third party use marks consisting of or containing the word “HUDSON” for the sale of furniture.
· Complainant’s allegations of years of use and advertising is in a crowded field of HUDSON designations in the furniture business.
· The volume of third parties using a name consisting of or containing the term HUDSON for furniture or for furniture businesses indicates that consumers are used to differentiating among the many sources of HUDSON furniture.
· Complainant markets itself as offering the best value in Central Florida and only has retail store locations in this geographic location.
· Respondent is commonly known by the <hudsonfurniture.com> domain name because it uses the domain name in relation to its Hudson Furniture and Bedding, Inc. business.
· Respondent uses the domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use because Respondent engages in the sale of furniture.
· Respondent’s intended business operations and hired an attorney to file the Articles of Incorporation for Hudson Furniture and Bedding Inc.
· Respondent acquired the domain name through an auction for almost $4,500 after Complainant allowed the registration to lapse.
· Respondent argues that it did not register or use the <hudsonfurniture.com> domain name in bad faith because Respondent did not list the domain name for sale nor did it initiate contact with a broker to sell it, but rather Complainant initiated the negotiation for sale.
· Respondent is in the business of selling furniture near the Hudson River and did not have knowledge about Complainant prior to the commencement of this dispute.
· Respondent has right to and legitimate interests in the domain name <hudsonfurniture.com> because it is comprised of descriptive terms. The Complainant and Respondent both use the terms “Hudson” and “Furniture” in a descriptive manner. The domain hudsonfurniture.com incorporates the geographically descriptive term “Hudson” and descriptive term “Furniture.”
C. Additional Submissions
In its Additional Submission the Complainant asserts the following:
· Complainant has sufficiently established that it has prior rights in the "HUDSON’S FURNITURE" mark and has set forth case law in its Complaint supporting the argument that the domain name at issue is confusingly similar to the "HUDSON’S FURNITURE" mark.
· Respondent is not commonly known by the name “HUDSON FURNITURE,” nor by the domain name at issue.
· Respondent is not located near the Hudson River.
· Respondent has had the domain name parked as “Under Construction” for over a year and there is nothing to indicate that it intends to use it.
· Respondent has offered to sell the domain name for a price that is demonstrably in excess of Respondent’s costs of its acquisition.
In its Additional Submission the Respondent asserts the following:
· Complainant exaggerate its alleged common law rights and has failed to provide any evidence that its common law mark HUDSON’S FURNITURE has gained a reputation in the marketplace or embodies a high level of trademark distinctiveness.
· Respondent has taken demonstrable steps to use the domain <hudsonfurniture.com> and the corresponding business name “Hudson Furniture & Bedding Inc.” in connection with a bona fide intended offering of wholesale furniture and related retail store services.
· There is no evidence that Respondent was targeting Complainant when it registered the disputed domain.
· Where a service mark is composed of a such highly descriptive or generic elements such as a personal or surname, and where the domain name was registered in good faith, the fact that there may be some consumer confusion does not support an actionable claim for cybersquatting infringement.
· The domain broker’s repeated contact at the Complaint’s request is the reason that Respondent provided a counter offer to sell the domain hudsonfurniture.com.
The Panel notes that the <hudsonfurniture.com> domain name was originally registered on September 16, 1997; however, Respondent only acquired the domain name through a public auction on April 2, 2020
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 the terms HUDSON and FURNITURE are descriptive and lack of distinctiveness. The Complainant doesn't own any registered trademarks comprising of the terms HUDSON and FURNITURE and has not submitted evidence supporting marketing expenses which would support the allegation that the continuous use the "HUDONS’S FURNITURE " mark establishes common law rights in the "HUDONS’S FURNITURE " mark for the Complainant. Without the any evidence to the contrary the fact that the Complainant is only located in a small geographical area (taking into the global reach of a website) it cannot be established that "HUDONS’S FURNITURE " mark has acquired secondary meaning.
Respondent argues that Complainant does not have rights to the HUDSON’S FURNITURE mark because Complainant has not provided enough evidence that it has common law rights over the mark. The Panel finds that the Complainant has no common law rights over a HUDONS’S FURNITURE " mark, under Policy ¶ 4(a)(i), where a complainant does not provide sufficient evidence that its mark has acquired secondary meaning. See CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015) (finding Complainant failed to establish common law rights, stating, “Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant. Mere use of social media alone is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind of the general public.”).
Respondent argues that Complainant only relies on its years of using the HUDSON’S FURNITURE mark and its advertising, specifically geographically limited to central Florida, to establish rights. Therefore, the Panel finds that Complainant does not have common law rights in the HUDSON’S FURNITURE mark under Policy ¶ 4(a)(i).
Respondent further claims that Complainant does not have any rights in the HUDSON’S FURNITURE mark because it is a common business name. Simply operating under a business name does not necessarily confer rights in a mark under Policy ¶ 4(a)(i). See Weatherford Int’l, Inc. v. Wells, FA 153626 (Forum May 19, 2003) (holding that “simply operating under a business name does not, per se, constitute secondary source identification sufficient to warrant a finding of common law rights in the WELLSERV mark”).
Complainant operates a business that contains the HUDSON’S FURNITURE mark. Respondent, however, asserts that Complainant’s HUDSON’S FURNITURE mark is a common term that is used for various other furniture business stores, including Respondent’s own business, therefore the Panel finds that Complainant does not have rights in the HUDSON’S FURNITURE mark under Policy ¶ 4(a)(i).
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), therefore the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <hudsonfurniture.com> domain name REMAIN WITH Respondent.
dr. Katalin Szamosi, Panelist
Dated: December 13, 2021
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