WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
R.T.G Furniture Corp. v. Oleg Techino
Case No. D2006-0886
1. The Parties
The Complainant is R.T.G Furniture Corp., United States of America, represented by DLA Piper Rudnick Gray Cary US, LLP, United States of America.
The Respondent is Oleg Techino, Ukraine.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2006. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 19, 2006. On July 21, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On July 21, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 25, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August�14,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2006.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on August 23, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, since its founding in 1991, has grown to become the largest furniture distributor in the United States of America. It first began using its Marks as early as March 1, 1991, and obtained federal trademark registration in March,1993. The Complainant registered its Marks, pursuant to the Madrid Protocol in August 2005, and in April 1996 registered its Marks with the European Community.
According to Go Daddy’s WHOIS database, the Respondent in this administrative proceeding registered the domain name on August�21,�2003.
No response has been filed.
5. Parties’ Contentions
A. Complainant
History of the Complainant Company
The Complainant, R.T.G. Furniture Corp., (“RTG”) is a Florida Corporation with its principal place of business in Seffner, Florida, United States of America. RTG was founded in 1991, and is the largest furniture retailer in the United States of America, shipping nearly 4,000 complete-room furniture packages per day to customers located in 32 states. RTG operates retail showrooms in Texas, Puerto Rico, and six south-eastern states (the “ROOMS TO GO Stores”). The Complainant creates unique furniture displays used by those Stores that allow customers to shop for complete-room furniture packages. RTG’s unique furniture displays “changed the way the ROOMS TO GO� Stores’ customers were and are able to conceptualize room designs, and buy furniture. Another distinct feature of RTG is the ability to provide customers with low-prices through high-volume sales.”
The Complainant has used its Marks in extensive advertising campaigns to drive its high-volume sales. RTG’s “revolutionary approach to complete-room furniture designs at low prices was the impetus behind the Marks. RTG has relied on the Marks to create goodwill and generate public interest in RTG products. RTG spends millions of dollars each year on annual advertising expenditures using the Marks, including daily television commercials, radio and print advertisements.”
RTG also operates a website on the Internet under the domain name , where consumers throughout the country can view product arrangements, purchase products, and locate retail stores. RTG’s website displays the Marks and consumers identify that website by the Marks.
The Complainant has operated continuously since its founding in 1991. Its unique approach to home furniture sales is captured in its Marks. RTG first began using its Marks (Registration No. 1,756,239) as early as March 1, 1991. RTG obtained federal trademark registration number 1,756,239 for its Marks on March 7, 1993. RTG registered its Marks, pursuant to the Madrid Protocol (Application No. A0002328), on August 18, 2005. Additionally, RTG registered its Marks with the European Community (Application No. 13540) on April 1, 1996.
RTG has taken extensive measures to protect its Marks from international trademark infringement. Annex 5 to the Complaint lists registrations of the “ROOMS TO GO” Mark in over 60 countries worldwide, including the Russian Federation (registration in 1997), Slovakia (also registered in 1997), Hungary (1996), Bulgaria (1996), and Poland (1998).
The Complainant realized that the Internet “provided the potential for greater sales, and customer convenience, and registered its Marks as a domain name - “www.” - on November 11, 1996. Copies of RTG’s domain registrations are contained in Annex 6 to the Complaint.
Some of RTG’s other Marks, like “ROOMSTOGO.STUDIO,” “ROOMSTOGO.BEDS” and “ROOMSTOGO.BED” are also similar to RTG’s domain name . RTG also registered the domain on June 21, 2002.
Respondent’s Activities
The Complainant says that the Respondent registered the domain name on August, 21, 2003, “ over 10 years after RTG first began using its Mark, and well after the time when RTG first began using its Marks and domains, and in connection with its online and ROOMS TO GO� Stores’ operations. Respondent has used this infringing domain name solely for purposes of diverting Internet users seeking RTG’s products and services to web pages containing similar or related products and services. The website page at the “www.” domain name does not contain any bona fide content but instead consists primarily of a list of sponsored links related to home furnishings.” For example: “Horchow - Dining Room Furniture Go shopping for a dining room set and view Horchow’s large selection”.
The Complainant says that, as far as it can determine, “Respondent profits from this exploitation of RTG’s Marks by receiving a commission for each ‘hit’ to one of the linked-to sites and/or by receiving direct payments from visitors to the linked-to sites.”
Complainant’s Allegations against the Respondent
The Complainant contends that:
1. The Respondent’s domain name is identical or confusingly similar to the Complainant’s Federally Registered trademarks.
2. The Respondent has no rights or legitimate interests with respect to the domain name.
3. The Respondent registered and is using the disputed domain name in bad faith.
The Complainant requests that the disputed domain name be transferred to the Complainant.
B. Respondent
As stated earlier, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Rules state that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate, paragraph 15 of the Rules.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name for the purposes of paragraph 4 (a)(ii). The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii), paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
A. Identical or Confusingly Similar
The Complainant contends that the domain name is virtually identical, and confusingly similar to, its federally registered trademarks containing the words “ROOMS TO GO” and could easily lead a consumer to believe that is in some way affiliated with the Complainant, “the RTG Marks, RTG, the RTG website, and ROOMS TO GO� Stores.”
The Complainant relies upon a number of WIPO decisions in support of its contention.
The disputed domain name incorporates in its entirety the Complainant’s trademark “ROOMS TO GO”. That would be sufficient to satisfy the “confusingly similar” requirement. See for example The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137: “numerous WIPO panels have found that a domain name that wholly incorporates the complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy”.
The addition of the word “furniture” to “rooms to go” is insufficient to distinguish the disputed domain name from the Complainant’s trademark registered in the United States of America and numerous other countries around the world. Indeed, the addition of that word strengthens the case against the Respondent since that word describes the very product for which the business of the Complainant is known: furniture. The likelihood of confusion on the part of Internet users is therefore actually increased. See for example the decision in ACOR, Society Anonyme a Directoire et Conseil de Surveillance v. SEOCHO, WIPO Case No.�D2002-0517.
Further, the incorporation of “.com” does not assist the Respondent. It has long been established by WIPO panels that the addition of “.com” is non-distinctive because it is a gTLD required for registration of a domain name. For example, see Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No.�D2000-0127: “the addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants.”
The Panel is therefore satisfied that the Complainant has proved the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant makes a number of points.
First, since the Respondent’s sole use of the disputed domain name has been to “divert consumers seeking RTG’s online products and services to related web sites for its own financial benefit, it cannot establish legitimate rights in the domain name on any of the bases set forth in the Policy – or on any other basis. Other than using the domain name as described above, Respondent has not made use of the domain name in connection with a bona fide offering of goods or services. Respondent’s use of the domain name to direct RTG’s customers and potential customers to other web sites does not qualify as a ‘bona fide offering of goods or services’ under the Policy.”
Second, the Complainant says that the Respondent has never sought or obtained a license from RTG to use the disputed domain name, nor has it registered the disputed domain name - or any corresponding name - as a trade or service mark in the United States, or, so far as the Complainant is aware, in any other jurisdiction.
Third, given RTG’s “longstanding use of the Marks, both, online and offline, and of its position as the leader in the home furniture market in the United States of America, Respondent must have been well aware of the association of the Marks with RTG, ROOMSTOGO.COM and the ROOMS TO GO� Stores. Respondent must have also known of the goodwill associated with the RTG Marks when Respondent registered and began using the domain name .”
The Complainant relies upon the decision in a previous WIPO case in support of its contention that the Respondent must have constructive knowledge of the Complainant’s marks as establishing that the Respondent’s registration of the contested domain was a “patently illegitimate attempt to misleadingly divert [complainant’s customers] . . .” Indeed, such a conclusion “ is the only reasonable one where, as here, the registrant has no previous connection with the domain name, and no current connection other than its attempt to exploit the value of the RTG Marks for its own commercial gain.”
On the basis of the Complainant’s evidence and submissions, the Panel holds that the Complainant has satisfied the rights or legitimate interests requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s Submissions
The Complaint relies upon a number of previous WIPO decisions in support of its contention that the Respondent’s “registration, and use, of a domain name corresponding to the trademarks of a well-known company such as RTG in order to misdirect traffic to other web sites constitutes bad faith.” Such a scheme, says the Complaint, “particularly when, as here, it is conducted for Respondent’s financial gain, is a clear indication of bad faith. Id.; Paragraph 4(b)(iv) of the Policy.”
Reliance is also placed on trademark law in the United States of America which recognizes that “using another’s trademark where it will, or is likely to cause, customers to confuse a registered trademark with that of a similar mark is a violation of trademark law and the rights of the registrant.” The Complainant refers to a number of decisions of United States’ courts:
Babbitt Electronics., Inc. v. Dynascan, Inc., 38 F.3d 1161, 1178 (11th Cir. 1994); Brookfield Communications, Inc. v. West Coast Entertainment Corp.. 174 F.3d 1036, 1062 (9th Cir. 1999); and Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1025 (9th Cir. 2004). As mentioned earlier, the Panel is entitled to decide a complaint in accordance with, amongst other things, “any principles of law that it deems applicable”: Rule 15(a) of the ICANN UDRP Rules.
In this case, the Complainant contends that the Respondent has registered the dispute domain name in a manner “calculated to improperly trade on the goodwill of the RTG Marks, and such use constitutes trademark infringement. The infringement is especially damaging to RTG because Respondent directs potential customers looking for RTG products to web sites of other parties offering products similar to, and competitive with, the products of RTG. Customers may purchase these competing products in the mistaken belief they are sponsored by, or affiliated with, RTG. However, even if customers realize that these competing web sites are not sponsored by or affiliated with RTG, sales of those products were generated by trading on the goodwill of RTG’s Marks. Such a registration as a domain name and use of another’s mark constitutes trademark infringement and bad faith under the UDRP policy.”
The Complainant refers to the decision in National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment , WIPO Case No. D2000-0700 in support of its contention that “Initial interest is enough to demonstrate bad faith under Paragraph 4.b.(iv)”.
The provisions of the Policy:
The Complainant, for the purposes of paragraph 4(a)(iii), must show both that the Respondent registered - and is using - the disputed domain name in bad faith.
As mentioned earlier, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
The particular circumstance of relevance on the facts of this case is set out in paragraph 4(b)(iv), namely, that the Respondent, by using the domain name, has “intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Complainant has submitted compelling argument and evidence in support of its case under the bad faith provisions of paragraph 4(a)(iii) of the Policy. The Respondent was entitled to put in a Response answering the Complainant’s contentions, but has chosen not to do so. The Panel is satisfied that the Complainant has proved its case on registration and use in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Anthony R. Connerty
Sole Panelist
Dated: September 4, 2006
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