DECISION

 

Floor Covering Associates, Inc. v. David Harris / E Flooring Deals

Claim Number: FA2502002139497

 

PARTIES

Complainant is Floor Covering Associates, Inc. ("Complainant"), represented by Jennifer M. Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is David Harris / E Flooring Deals ("Respondent"), Utah, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <eflooringdeals.com>, registered with Tucows Domains Inc.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 10, 2025; Forum received payment on February 10, 2025.

 

On February 11, 2025, Tucows Domains Inc. confirmed by e-mail to Forum that the <eflooringdeals.com> 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 February 12, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2025 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@eflooringdeals.com. Also on February 12, 2025, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 5, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in EFLOORS.COM.  Complainant holds a national registration for that trademark.  Complainant submits that the disputed domain name is nearly identical and confusingly similar to its trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and passively holds the disputed domain name in bad faith.

 

A.       Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

 

1.       Complainant uses the trademark EFLOORS.COM in connection with the sale and repair of flooring and floor coverings;

2.       Complainant owns United States Patent & Trademark Office ("USPTO") Reg. No. 4,450,878, registered December 17, 2013, for the trademark, EFLOORS.COM; and

3.       the disputed domain name was registered on October 12, 2024, and has not been used.

 

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.

 

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.  

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Complainant therefore has rights in the trademark EFLOORS.COM since it provides proof of its registration with the USPTO, a national trademark authority. The Panel also notes proof of registration of two stylized trademarks but for the purposes of the discussion which follows, Complainant's best position hinges on Reg. No. 4,450,878, for the word mark, EFLOORS.COM.

 

Complainant submits that the disputed domain name is nearly identical and confusingly similar to its trademark.  Near identity is not the language of the Policy. The domain name is not identical to the trademark and the only question is whether the domain name is confusingly similar to the trademark. In that regard Complainant's submission is that:

 

The dominant portion of the Domain Name is EFLOOR; as the first part of the domain name, it is the part of the domain name that consumers will remember. The domain name merely adds the generic suffix "ING" and the descriptive word DEALS.

 

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, asks at #1.7: What is the test for identity or confusing similarity under the first element? In answer, the consensus view of UDRP panelists is that:

 

The … test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name.

 

This test typically involves a side-by-side comparison of the domain name and … the relevant trademark to assess whether the mark is recognizable within the disputed domain name. … In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant's trademark and the disputed domain name to ascertain confusing similarity.

 

While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark … .

 

In the great majority of cases, panels begin with the commonplace finding that, for the purposes of comparison, the gTLD can be disregarded because it is typically part of domain name syntax and has no inherent distinctive capacity (see, for example, Am. Int'l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)).  In this case the gTLD, ".com", is part of the registered trademark, but even if a more "holistic comparison" is taken, that part of the trademark must be given very low weight for the same reason.

 

If the Panel then applies a "side-by-side comparison" of the domain name and the trademark, it is not moved by Complainant's submission that the dominant and memorable portion of the domain name is EFLOOR.  The prefix "E" (or more frequently, "e") is arguably even less inherently distinctive than ".com". Moreover, EFLOOR is not the trademark, even when ".COM" is disregarded or heavily discounted and, in context, EFLOOR makes less syntactical/grammatical sense than either the trademark – EFLOORS – or the domain name, EFLOORING.  Furthermore, that differentiation is underscored by addition of the word DEALS which, albeit descriptive, nevertheless completes an intelligible, nominative, message – e flooring deals – not carried by the trademark.

 

The Panel finds that the disputed domain name is neither identical nor confusingly similar to the trademark and therefore finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

No findings required (see, for example, 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); 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)).

 

Registration and Use in Bad Faith

No findings required.

 

DECISION

Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is ORDERED that the <eflooringdeals.com> domain name REMAIN WITH Respondent.

 

 

 

Debrett G. Lyons, Panelist

Dated: March 6, 2025