Complainant is W.S. Badcock Corporation of Mulberry, Florida, United States of America, represented by Trenam Kemker, United States of America.
Respondent is Paul Slater or Registrant of Naples, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2011. On February 2, 2011, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On February 3, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on February 11, 2011.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on February 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 10, 2011.
The Center appointed Kevin H. Fortin as the sole panelist in this matter on March 28, 2011. 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
Complainant, W.S. Badcock Corporation, was founded in 1904 by Henry S. Badcock when the name Badcock was first used in conjunction with furniture sales and continues operations using the Badcock name today.
Complainant is the owner of several trademarks, registered with the United States Patent and Trademark Office (USPTO) for goods including furniture. These marks are BADCOCK, Registration No. 2,359,675; BADCOCK HOME FURNITURE & MORE, Registration No. 2,443,504; and LEGENDS BY BADCOCK, Registration No. 2,421,435. The first of these registrations was registered on June 20, 2000.
Complainant currently uses the marks, including the Badcock name, in commerce and various mailings and brochures have been distributed widely using the marks. Complainant owns and uses the domain name as part of its marketing efforts.
Respondent uses the disputed domain name to offer furniture for sale through links to various other websites. Furniture is shown in images on the home page of Respondent along with various links to other sellers of furniture. The disputed domain name was created on April 4, 2009.
On February 1, 2011 Complainant filed a Complaint with the Center alleging that the domain name was registered and used in bad faith and is confusingly similar to the registered marks of Complainant, among other relevant allegations.
Respondent has defaulted in this proceeding. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to the registered mark BADCOCK HOME FURNITURE & MORE, and the mark BADCOCK (collectively “Complainant’s trademarks”); that Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of Respondent to furnish a response is not due to any omission by the Center.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) the respondent’s domain name 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 name; and
(iii) the respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Because Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant’s undisputed representations in accordance with Rules, paragraph 15(a)). A. Identical or Confusingly Similar
Complainant is the holder of several trademark registrations for trademarks which include BADCOCK in the United States (“U.S.”) and has been using the mark in commerce for over 100 years. Complainant’s registration of the trademarks on the Principal Register at the USPTO establishes a presumption of validity under U.S. law. Complainant has rights in the trademarks under paragraph 4(a) of the Policy.
The top level domain is irrelevant to the determination because all domain names include a top level domain. The issue of confusingly similarity is determined by comparing the disputed domain name with the registered marks of Complainant. Here, Complainant’s trademark BADCOCK and the disputed domain name are confusingly similar because the sole term “Badcock” is shared. Further the mark BADCOCK HOME FURNITURE & MORE is confusingly similar to the disputed domain name because both the term “Badcock” and the term “furniture” are shared. There is no evidence to the contrary.
The Panel finds that Complainant has met the burden of showing that disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights. B.Rights or Legitimate Interests
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name and has established a prima face showing in this regard. Respondent has not presented any evidence such as a license or other facts that would overcome this showing. The Panel therefore finds that Respondent has no rights or legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
As indicated above, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks. Since the website at the disputed domain name is used to promote furniture, or at least links to other websites offering furniture for sale, the Panel finds that the disputed domain name is likely to confuse a customer as to the source of origin of goods or services. Further, the use of the disputed domain name to offer furniture for sale establishes facts sufficient to find that Respondent must have intended to attract, for commercial gain, Internet users to its website through by creating a likelihood of confusion with Complainant’s registered trademarks . Respondent offers no evidence to the contrary.
Accordingly, this Panel finds that the disputed domain name was registered and is being used in 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 Complainant.
Kevin H. Fortin
Sole Panelist
Dated: April 13, 2011
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