WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Tarkett Inc. v. Texas International Property Associates Case No. D2009-0180 1. The Parties
The Complainant is Tarkett Inc., East Farnham, Quebec, Canada, represented by Sheppard, Mullin, Richter & Hampton LLP, United States of America.
The Respondent is Texas International Property Associates, Dallas, Texas, United States, represented by the Law Office of Gary Wayne Tucker, United States . 2. The Domain Name and Registrar
The disputed domain name is registered with Compana LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2009. On February 10, 2009, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On February 11, 2009, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 February 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2009. The Response was filed with the Center on March 11, 2009.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on March 19, 2009. 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, Tarkett Inc., is a Canadian corporation and is a successor to Tarkett AB which was founded in Sweden in 1886 and Harris Hardwood Company Inc, which was founded in the United States in 1898.
The Complainant is one of the largest producers and distributors of hardwood and resilient flooring in the world and currently distributes its products to over fifty countries throughout the world.
The Tarkett trademarks are the subject of numerous registrations and applications in the United States and abroad. Among Complaint's United States Federal Trademark Registrations are Nos. 3,200,492 for TARKETT, and 3,161,710 for TARKETT.
The Respondent registered the domain name on March 7, 2006. 5. Parties' Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its marks. The addition of a generic or descriptive term with which the mark is used does not alter the fact the domain name is confusingly similar to the mark.
The Complainant asserts inter alia that: the disputed domain does not support an active website; Respondent has not offered goods or services using the domain name; no legitimate noncommercial or fair use is being made of the domain name; that the Respondent was never commonly known by the mark or domain name. The Complainant asserts that all of these support a finding that the domain name registrant possesses no legitimate interests in the disputed domain name.
Finally, the Complainant alleges that the Respondent registered and is using the domain name in bad faith, noting the facts that more than one hundred UDRP decisions have been issued against the Respondent. B. Respondent
The Respondents requests “that the Panel order the immediate transfer of the disputed domain name” to the Complainant. Despite this request, the Respondent maintains that such request is not an admission as to the three elements of 4 (a) of the Policy but rather an offer to a “unilateral consent to transfer”
Furthermore, the Respondent requests to be given the opportunity to prepare a more formal response if the Panel decides that an analyses is required as to whether the elements of paragraph 4(a) of the UDRP have been established. 6. Discussion and Findings
According to Paragraph 15(a) of the Rules: “A Panel shall 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.”
Under Paragraph 4(a) of the Policy the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith.
Furthermore, no time extension will be granted to the Respondent as the Panel notes that the Respondent is not a stranger to administrative proceedings such as under the UDRP as it has taken part in more than 100 (one hundred) WIPO cases. Therefore, the Respondent must be well aware of the procedure and if he makes no effort to respond on time he must accept the drawback of such strategy. A. Identical or Confusingly Similar
The Complainant has made continuous use of its registered and incontestable marks where TARKETT appears to be a distinctive element and has spent much time, money and effort promoting the mark and has established significant good will.
Previous panels have decided that a domain name with the addition of a generic or descriptive term to an otherwise distinctive trademark name is to be considered confusingly similar to the trademark (See, e.g., La Caixa D'Estalvis I Pensions de Barcelona v. José Antonio BernalWIPO Case No. D2006-1637, finding that the addition of the word “area” does not remove a domain name from being confusingly similar).
Accordingly, in the present case, the addition of the word “wood” to the Complainant's mark is not sufficient to distinguish the domain name. Therefore, the Panel is prepared to accept the submission of the Complainant that the addition of the term “wood” to the Complaint's trademarks to form the domain name is insignificant and consequently the domain name is confusingly similar to the Complaint's trade mark.
The Panel therefore concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made a prima facie showing of lack of Respondent's rights or legitimate interests in the disputed domain name. This is shown by the fact that the Respondent has no authorization to use Complainant's trademarks, neither the Respondent is commonly known as “Tarkett” and nor does the Respondent maintains an active website in connection with domain name.
Moreover, the Respondent has not presented any arguments on this element and consents to the requested transfer. It appears to this Panel that the disputed domain name has been used merely to forward to a domain name parking service. Such use in the circumstances does not constitute a bona fide use.
In view of the above, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Respondent is a serial cybersquatter and, therefore, the Respondent has been found by previous panels (WIPO Case No. D2008-1959;WIPO Case No. D2008-1824;WIPO Case No. D2008-1817;WIPO Case No. D2008-1803;WIPO Case No. D2008-1709;WIPO Case No. D2008-1699;WIPO Case No. D2008-1644;WIPO Case No. D2008-1557;WIPO Case No. D2008-1547; D2008-1464; D2008-1451; D2008-1438, among many others) to have engaged in a pattern of conduct registering domain names to prevent the owners of marks from registering them.
In the present case, the Panel finds the Respondent had knowledge of the Complainant's mark at the time it registered the disputed domain name. Furthermore, the disputed domain name resolves to a landing page showing numerous links to websites offering floor and products in competition with Complainant. The Respondent is not in the business of offering such products, but receives fees when such links are clicked. This is a violation of paragraph 4(b)(iv) of the Policy and constitutes bad faith registration and use. See, e.g., ACCOR v. Steve Kerry/North West Enterprise, Inc.,WIPO Case No. D2006-0649.
The Panel finds that the Respondent deliberately attracted, for commercial gain, Internet users to the disputed domain name by creating a likehood of confusion with the Complainant's mark and as such, finds the requisite bad faith under paragraph 4(a)(iii) of the Policy. 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.
Manuel Moreno-Torres
Sole Panelist
Dated: March 24, 2009
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