The Complainant is Compagnie Financière Européenne de Literie (COFEL) of Paris, France, represented by Bloch & Bonnetat, France.
The Respondent is LKN Media of Mooresville, North Carolina, United States of America, represented by Remler Tillman Law Group, P.C., United States of America. 2. The Domain Names and Registrar
The disputed domain names , and are registered with TLDS L.L.C. d/b/a SRSPlus. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2011. On September 22, 2011, the Center transmitted by email to TLDS L.L.C. d/b/a SRSPlus a request for registrar verification in connection with the disputed domain names. On September 26, 2011, TLDS L.L.C. d/b/a SRSPlus transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 30, 2011, the Center sent a complaint deficiency notification to the Complainant, since the Complaint did not specify the remedies sought, namely, cancellation or transfer of the disputed domain names. The Complainant filed an amendment to the Complaint on October 3, 2011.
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” 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 October 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2011. The Response was filed with the Center on October 22, 2011.
The Center appointed John Swinson as the sole panelist in this matter on November 1, 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
The Complainant is COFEL, a French company. The Complainant owns various registered trade marks incorporating the term “merinos” in several jurisdictions.
The Respondent is LKN Media, a company hired by Merinos Furniture and Carpet, Inc (“Merinos Furniture”) to develop and host a website for its business. The Respondent registered the disputed domain names on May 16, 2011 for the benefit of Merinos Furniture which offers retail and wholesale furniture, home furnishings and accessories in the United States. Merinos Furniture is a South Carolina Corporation incorporated in 2008 and registered to do business in North Carolina in 2010. George Bulat is the principal and officer of Merinos Furniture. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions: Identical of Confusingly Similar
The Complainant owns numerous registered trade marks incorporating the term “Merinos” in various jurisdictions (namely, Japan, China, Europe and Monaco), registered from as early as 1990.
The prior trade mark registrations belong to a family mark, MERINOS, which is placed first and in large font in the trade mark registrations. The relevant prior registered trade marks are registered for furniture, mattresses, beds and bedding products.
The disputed domain names incorporate the term “merinos”, which is the first element of the disputed domain names. Even though the disputed domain names contain other terms such as “furniture”, these elements are descriptive. The dominant element of the disputed domain names is “merinos” and as such, there is a direct link between the Complainant’s marks and the disputed domain names. This is reinforced by the fact that the disputed domain names include references to goods that the Complainant’s trade marks are registered for.
Therefore, there is a clear likelihood of confusion given the visual, aural and conceptual similarities between the disputed domain names and the Complainant’s marks and the overall impression created by the disputed domain names which clearly indicates that they are imitations of the Complainant’s trade marks. Rights or Legitimate Interests
Prior to initiating the proceedings, the Complainant attempted to notify the Respondent of the prior registered trade marks, however the matter was not resolved.
The use made by the Respondent of the disputed domain names (that is in relation to bedding and furniture) is not legitimate as it damages the Complainant’s business. Registered and Used in Bad Faith
The Respondent has no registered trade mark for MERINOS and has not applied for registration of such a mark.
Given the website that resolves from the disputed domain names relates to the United States, it is unclear why the Respondent did not use the “.us” extension as opposed to “.com” which applies throughout the world including the jurisdictions in which the Complainant has registered its trade marks.
Therefore, using the disputed domain names under the relevant extension indicates bad faith given it appears the Respondent intended to confuse potential customers looking for the Complainant’s business and products on the Internet.
The Complainant requests that the disputed domain names be cancelled. B. Respondent
The Respondent makes the following submissions: Identical of Confusingly Similar
The Complainant has no right to use its trade marks in relation to furniture more broadly and as such, considerations that the trade marks and disputed domain names relate to similar goods are unfounded.
The inclusion of the word “furniture” in the disputed domain name does distinguish the disputed domain names from the Complainant’s marks and thus the disputed domain names and trade marks are not confusingly similar. Moreover, the word “merinos” is descriptive. Relevantly, there are 78 US Federally registered trade marks incorporating the word “merino”. There are also 21 French registered trade marks that incorporate the word “merino”.
Moreover, an Internet user visiting the websites resolving from the disputed domain names would be immediately aware the disputed domain names were not connection with the Complainant.
Therefore, the Complainant has failed to establish the first element of the Policy. Rights or Legitimate Interests
Merinos Furniture selected the disputed domain names as they reflected their business name, the business goods and services they offer, as well as their Federally Registered Trade mark, MERINOS.
Relevantly, before the Respondent or Merinos Furniture received any notice of the dispute, there is evidence of it using the disputed domain names and demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
The Respondent and Merinos Furniture first received notification of the Complainant’s complaints eight days prior to these proceedings being initiated. Prior to receiving notification of the dispute, Merinos Furniture has been, and currently is, in the business of offering retail and wholesale furniture in the United States. Merinos Furniture is a South Carolina corporation, incorporated in 2008 and registered to do business in North Carolina in 2010. Merinos Furniture has been in the business of selling furniture and rugs since 2008 in the United States with a physical presence in North Carolina, South Carolina and Georgia.
Further, Merinos Furniture filed a trade mark application with the United States Patent and Trademark Office (USPTO) on December 24, 2010 and received a Federal Trademark Registration for the mark, “Merinos” on July 26, 2011. Merinos Furniture has used and currently uses the mark, “Merinos”, for its retail furniture store services and has done so since 2008.
Moreover, the majority stockholder of Merinos Furniture is Merinos Hali, a Turkish company in the business of selling furniture and rugs, since 1997. Merinos Hali has had a registered trade mark for the term “merinos”, in various countries, since March 24, 2004. It also has a domain name incorporating the term “merinos”. Merinos Hali authorized the use of the mark, “Merinos”, by Merinos Furniture.
Merinos Furniture is commonly known as Merinos Furniture which is identical to the domain name .
Therefore, the Complainant has failed to show that the Respondent and Merinos Furniture have no rights or legitimate interests in the disputed domain names and it is clear that Merinos Furniture does have rights in relation to the disputed domain names. Registered and Used in Bad Faith
The disputed domain names were not registered by Merinos Furniture or the Respondent with an intention to cause “initial interest confusion” or attract for commercial gain, Internet users to the websites resolving from the disputed domain names by creating a likelihood of confusion with the Complainant’s trade marks as to source, sponsorship, affiliation or endorsement of the websites resolving from the disputed domain names. There is no evidence to suggest that the Respondent or Merinos Furniture intended to cause confusion to Internet users as to the relationship or connection between the disputed domain names and the Complainant’s trade marks. Further, there is no evidence of any confusion being caused to Internet users.
Relevantly, the Respondent and Merinos Furniture had no knowledge of the Complainant’s existence or its trade marks prior to receiving correspondence from the Complainant, eight days prior to the Complaint being served with the Complainant, which proves a lack of intent to cause confusion.
Nothing in the Policy requires a person to carry out a prior trade mark search in every country of the world for conflicting trade mark rights. If the Complainant cannot demonstrate that the Respondent and Merinos Furniture, at the time of registration of the disputed domain names, knew or should have known of the Complainant’s trade marks, then there is no evidence suggesting the disputed domain name has been chosen with an intent to profit or abuse the Complainant’s trade mark rights. Here, the Complainant has failed to prove this.
The Respondent and Merinos Furniture simply selected the disputed domain names as they reflected Merinos Furniture’s business name, goods, trade mark and majority stockholder.
As such, the Respondent and Merinos Furniture did not register and use the disputed domain name in bad faith. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The burden of production of evidence of these elements is on the Complainant. A. Procedural Issues
While the named Respondent, LKN Media, is the registered owner of the disputed domain names, the Respondent asserts that the Respondent registered the disputed domain names for the benefit of Merinos Furniture after much discussion and negotiation. The Respondent asserts it was hired by Merinos Furniture to develop and host a website for Merinos Furniture’s business. Although the disputed domain names are currently registered to the Respondent, it is asserted that the disputed domain names are in fact owned by Merinos Furniture and that they will be transferred to Merinos Furniture once the website associated with the disputed domain names is complete.
The website at least one of the disputed states “website by LKN Media”.
Both LKN Media and George Bulat have submitted signed and witnessed affidavits asserting to this.
The Panel accepts these submissions and in light of this, has considered, inter alia, the use of the disputed domain names by, and the business and intention of Merinos Furniture in assessing the merits of the case. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that a complainant must establish that a respondent has no rights or legitimate interests in the disputed domain name in order to succeed. Paragraph 4(c) of the Policy provides a number of ways in which a respondent may then demonstrate rights or legitimate interests in a disputed domain name.
Here, the Complainant has failed to establish a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain names. The Complainant has not provided sufficient evidence and has not made complete submissions to establish this prima facie case.
Moreover, the Respondent has proffered ample evidence to demonstrate that it does have rights or legitimate interests in the disputed domain name. Relevantly, the Panel is satisfied that the Respondent is commonly known as Merinos Furniture which is similar to all the disputed domain names and is exactly incorporated into two of the disputed domain names. Moreover, the principal of Merinos Furniture owns a registered trade mark for the term “Merinos” and prior to notification of the dispute, used and provided evidence of demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. See U.S. Trademark Registration No. 4002469 in the name of George Bulat. Mr. Bulat is also listed on South Carolina Secretary of State records provided by the Respondent that show use of the name “Merinos” as part of a business name. Therefore, it is clear that the Respondent has rights and legitimate interests in the disputed domain names.
Finally, the fact that the majority stockholder of Merinos Furniture is a company with the name “Merinos Hali” and authorized Merinos Furniture’s use of the term is further evidence that it has rights and legitimate interests in the disputed domain names.
As such, the Complainant has failed to satisfy the second element of the Policy. It is thus unnecessary for the Panel to consider the remaining elements of the Policy and the Complainant must necessarily fail. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Dated: November 29, 2011
Full & Egal Universal Law Academy