WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tarkett Inc. v. Siarhei Chyzhevich
Case No. D2007-1164
1. The Parties
The Complainant is Tarkett Inc., Quebec, Canada, represented by Sheppard, Mullin, Richter & Hampton, United States of America.
The Respondent is Siarhei Chyzhevich, Brooklyn, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2007. On August 7, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On August 7, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint. An amended version of the Complaint was received by the Center via e-mail on August 10, 2007 and in hardcopy on August 20, 2007. 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 August 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2007.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on September 25, 2007. 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 is a producer and distributor of hardwood and resilient flooring. The Complainant is a worldwide company in producing and selling the abovementioned products under the brand names “Harris”, “Tarkett” and “Harris-Tarkett”. The Complainant is a successor to Tarkett AB and Harris Hardwood Company Inc.
The Complainant is the owner of the following trademark registrations: United States Federal trademark registration Nos. 0290424 (HARRIS & DESIGN), 3200492 (TARKETT & DESIGN), 3161710 (TARKETT).
The Complainant is the owner of the domain name , through which it promotes its goods and services under the trademarks HARRIS and TARKETT.
There is no information available about the Respondent except for that contained in the Complainant and in the Registrar’s records which essentially provides only the name and contact details of the Respondent.
The disputed domain name resolves to a website which features unauthorized references to the Complainant’s Harris, Tarkett and Harris-Tarkett brand flooring products.
Having noticed the above, the Complainant sent a cease and desist and transfer demand to the Respondent, and has contacted the Respondent by telephone demanding that he cease using the disputed domain name . According to the Complainant, in a telephone conversation the Respondent offered to sell the disputed domain name to it for a substantial sum, no further response has been received from the Respondent.
The facts mentioned above have been established on the basis of the Complaint and documents attached thereto in accordance with paragraph 3(b)(xv) of the Rules.
5. Parties’ Contentions
A. Complainant
The Complainant states that it is one of the largest producers and distributors of hard wood and resilient flooring in the world. It has over a century of experience since the company is the successor of Tarkett AB founded in Sweden in 1886 and Harris Hardwood Company Inc. founded 1898 in the United States of America. The HARRIS TARKETT marks were combined in 1999.
The Complainant has submitted copies of the registration certificates in respect of the above-referenced registered trademarks.
The Complainant states that they were the owners of the domain name since September 18, 2002 through to march 17, 2006, when inadvertently they let it lapse.
Counsel for Tarkett contacted the Respondent and demanded that all use of the domain name cease and that the Respondent transfer the domain name to Tarkett Inc. based upon its ownership of registered trademarks, and any further use by the Respondent of the disputed domain name and trademarks would violate the HARRIS-TARKETT trademarks. According to the Complainant, in a telephone conversation the Respondent offered to sell the disputed domain name to it for “significant monies” and no further response has been received from the Respondent.
In view of the above the Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular, the Complainant claims that:
a) The domain name in dispute is confusingly similar to the trademarks in which the Complainant has rights
The Complainant claims that a domain name is identical to a trademark despite the “.com”, or the absence or otherwise of a hyphen or space between words constituting the mark and that similarity is determined by comparing the mark at issue with the domain name, without regard to whether actual confusion or likelihood of confusion exists.
The Complainant asserts that given the above, there can be no doubt that the Respondents unauthorized use of the disputed domain name is confusingly similar to the HARRIS and TARKETT trademarks.
b) The Respondent has no rights or legitimate interests in respect of the domain name in dispute.
The Complainant asserts that the Respondent maintains no active website with the disputed domain name, instead has simply maintained a page which features unauthorized references to the Complainant’s HARRIS, TARKETT and HARRIS-TARKETT brand flooring products, which do not allow for the purchase of the same.
The Complainant also asserts that there is no evidence that the Respondent or anyone related to the Respondent is commonly known as Harris, Tarkett or Harris-Tarkett. Therefore, the Respondent has no legitimate interest in the domain name.
c) The domain name in dispute was registered and used in bad faith.
The Complainant claims that the Respondent traffics in the sale of domain names, including those which incorporate the trademarks of third parties and as a result of such activities the Respondent has been subject of at least two other UDRP Complaints.
The Complainant asserts that the disputed domain name webpage references to the Complainants flooring products but with no means to contact the complainant, leading customers to a dead end. Clearly to the detriment of the Complainant preventing therefore the owner of the trademark from reflecting the mark in a corresponding domain name which constitutes bad faith according to Policy paragraph 4(b)(ii).
The Complainant claims that the Respondent when contacted responded that if Tarkett Inc. wanted the domain name returned it would have to purchase it from him for significant monies, which conclusively demonstrates bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain names in question; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or similar to a trademark in which the Complainant has rights.
(1) Though the Complainant did not supply evidence of the existence of the trademark HARRIS-TARKET as referenced in its Complaint, the Panel finds that the Complainant has established that it is the owner of the registered trademarks HARRIS and TARKETT independently based on the evidence provided by the Complainant (exhibit c).
(2) The disputed domain name consists of two different registered trademarks owned by the Complainant. The juxtaposition of these words in the domain name is a clear reference to the Complainants trademarks. The risk of confusion is obvious and the addition of a hyphen does not eliminate or diminish such similarity. The Panel therefore finds that the disputed domain name is identical and confusingly similar to the Complainants trademarks.
B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the domain name in question.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the domain name in responding to a Complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under sub paragraph 4(a)(ii), the burden is shifted to the Respondent to prove the contrary.
The Complainant has stated that the disputed domain name website features the Complainants trademarked flooring products, but does not allow the purchase of any product, therefore can not be considered a bona fide offering of goods or services. The Complainant asserts that the Respondent has never been commonly known by the domain name. The Complainant finally claims that the Respondent has no legitimate interest in the domain name.
The Respondent has not provided a response to the allegations set forth by the Complainant, though given the opportunity.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interest in the domain name.
In the absence of a Response this Administrative Panel is satisfied that the Complainant has satisfied the second element, Paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interest in said domain name.
C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrate that (1) the domain name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The disputed domain name is a name composed of two words, “harris” and “tarkett”. Both words are registered trademarks owned by the Complainant; it is difficult to believe that this is a mere coincidence, therefore one can reasonably conclude that the Respondent had knowledge of the existence of these trademarks and that they pertained to a family of trademarks owned by the Complainant, demonstrating bad faith registration.
Notwithstanding the above, if the Respondent did not have knowledge of such registered trademarks, though one can reasonably infer the contrary, it was known to him since the day the Complainants counsel contacted the Respondent and informed him of Complainants prior rights. Therefore all use after such notification suggests use of the domain name in bad faith especially considering the contents of the webpage, which refers to comparable products to those protected under the trademarks HARRIS and TARKETT. In other words it features flooring products. This is sufficient evidence to conclude that the Respondent was in all likelihood well aware of the Complainant’s marks and wanted to refer to the Complainant.
Moreover, the Complainant sent a cease and desist letter to the Complainant requesting the transfer of the domain name and the cease of use of the trademarks on the website. However, to date the Respondent has not removed such mentions and remains using the trademarks of the Complainant, in circumstances in which the Complainant has clearly stated that they have never given the Respondent a license to use such trademarks nor any other type of written authorization.
In addition, the Panel accessed the Respondents website and has noted that the webpage does not appear to provide any facility for purchasing any of the Complainants products, nor is there any information as to how to contact the Complainant.
The above can only lead the Panel to conclude that the Respondent is attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Panel can also infer from what has been asserted by the Complainant, and not refuted by the Respondent, as to the selling of the domain name to Complainant for a significant amount of money that the Respondent acquired the domain name for the purpose of selling or otherwise transferring the domain name registration to the complainant for valuable consideration in excess of its documented out-of-pocket costs.
And even if this was not Respondents true intention when demanding the money, such behavior is not consistent with a good faith use of the Domain Name.
Moreover, in the Panel’s view the threat to sell the Domain Name and to continue use of the domain name in the manner it has continued use of the same, also constitutes evidence of bad faith use.
Therefore, in accordance with paragraph 4 (b)(iii) of the Policy, the above findings lead to the conclusion that the domain name in dispute has been registered and used 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.
Rodrigo Velasco Santelices
Sole Panelist
Dated: October 9, 2007
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