Smooth Corporation v. Web Advertising, Corp.
Claim Number: FA0609000792048
Complainant is Smooth Corporation (“Complainant”), represented by Karl
S. Kronenberger, of Kronenberger Hanley, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwifloor.com>, registered with Dstr Acquisition Vii, Llc.
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.
Louis E. Condon, as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On September 3, 2006, Dstr Acquisition Vii, Llc confirmed by e-mail to the National Arbitration Forum that the <wwwifloor.com> domain name is registered with Dstr Acquisition Vii, Llc and that Respondent is the current registrant of the name. Dstr Acquisition Vii, Llc has verified that Respondent is bound by the Dstr Acquisition Vii, Llc registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 4, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwwifloor.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <wwwifloor.com> domain name is confusingly similar to Complainant’s IFLOOR.COM mark.
2. Respondent does not have any rights or legitimate interests in the <wwwifloor.com> domain name.
3. Respondent registered and used the <wwwifloor.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Smooth Corporation, is the leading flooring
retailer on the Internet. Complainant
started doing business in 1998 and adopted the service mark “iFLOOR.com” on
Respondent, Web Advertising, Corp., registered the <wwwifloor.com>
domain name on
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."
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.”).
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 finds that Complainant has sufficiently demonstrated rights in the iFLOOR mark pursuant to Policy ¶ 4(a)(i) through Complainant’s submission of evidence of a trademark registration with the USPTO. See Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i); see also Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)).
Additionally, the Panel finds that Respondent’s <wwwifloor.com>
domain name is confusingly similar to Complainant’s iFLOOR mark under Policy ¶
4(a)(i) because the disputed domain name attempts to take advantage of common
typing errors committed by Internet users by omitting the period between the
“www” and the domain name. As a result
of Respondent’s typosquatting conduct, the Panel finds that Respondent’s <wwwifloor.com>
domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). See Meade Instruments Corp. v. Drop One – Buy/Sell/Lease and
Snapping Serv., FA 423017 (Nat. Arb. Forum Apr.12, 2005), (finding
that the <wwwmeade.com> domain name was confusingly similar to
Complainant’s MEADE mark because it “takes advantage of a typing error
(eliminating the period between the www and the domain name) that users
commonly make when searching on the Internet.”); see also Dana Corp. v. $$$
This Domain Name Is For
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must initially demonstrate that Respondent lacks rights or legitimate interests with respect to the disputed domain names. However, once Complainant establishes a prima facie case, the burden then shifts to Respondent to establish that it has rights or legitimate interests in connection with the disputed domain names under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondents has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name under Policy ¶ 4(c).
Respondent’s <wwwifloor.com> domain name resolves to websites providing links to third-party websites that offer flooring services in competition with Complainant. Thus, the Panel finds that such use by Respondent does not represent either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 ( Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Moreover, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Complainant asserts that Respondent is not a licensee or vendor of Complainant, and has not received permission from Complainant for the use of its mark. Additionally, nothing in Respondent’s WHOIS information indicates that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that the evidence on record does not demonstrate that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name, which is
confusingly similar to a mark in which the Complainant has rights, to operate a
website containing advertisements and links to competitors of the
Complainant. Thus, the Panel finds that
Respondent’s registration and use of the <wwwifloor.com> domain
name constitutes registration and use in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”). See also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name
resolved to a website that offered similar products as those sold under the
complainant’s famous mark).
Moreover, Respondent
presumably receives “click-through” fees for each misdirected Internet
user. Therefore, the Panel finds that
Respondent’s registration and use of the <wwwifloor.com>
domain name constitutes registration and use in bad faith under Policy ¶ 4(b)(iii). See EthnicGrocer.com,
Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <wwwifloor.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: October 25, 2006
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