Complainant is Cabinet Discounters, Inc. of Columbia, Maryland, United States of America, represented by Cahn & Samuels, LLP, United States of America.
Respondent is Alexander Serkisian, Kitchen, Bath & Floors of Gaithersburg, Maryland, United States of America, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2015. On November 18, 2015, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that 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, Complainant filed an amended Complaint on November 20, 2015.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on November 26, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2015. Respondent submitted email communications on November 20 and 23, 2015 to the Center. On December 14, 2015, the Center received a request to extend the Response due date from Respondent. On December 15, 2015, the Center notified the Parties that the Response due date was extended to December 20, 2015 in accordance with Rules, paragraph 5(b). Respondent submitted further email communications on December 15 and 16, 2015. The Response was filed with the Center on December 20, 2015.
The Center appointed Robert A. Badgley as the sole panelist in this matter on January 8, 2016. 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 and Respondent are both engaged in the business of home construction and remodeling, including the remodeling of kitchens and bathrooms. The parties are located roughly 26 miles apart in the State of Maryland.
Complainant has been using the mark CABINET DISCOUNTERS for its home construction and remodeling business since 1985. This mark has been registered with the United States Patent and Trademark Office (“USPTO”) since November 2009. Complainant also operates a website accessible via the domain name .”
The Domain Name was registered on February 11, 2014. The registrant of the Domain Name is listed as Alexander Serkisian, and the registrant organization is listed as “Kitchen Bath&Floors.” The Domain Name resolves to a website which features products and services offered by Respondent. The services offered at Respondent’s website overlap considerably with the services offered by Complainant.
On June 17, 2015, Complainant’s counsel sent a cease-and-desist letter to Respondent who, as far as the record in this case is concerned, never responded to the letter.
On June 6, 2015, the Commonwealth of Virginia issued a certificate of incorporation to Cabinets Discounters Inc. On November 17, 2015, the State of Maryland issued a license to Cabinets Discounters Inc. 5. Parties’ Contentions A. Complainant
Complainant contends that it has satisfied all of the elements required under the Policy for a transfer of the Domain Name. Complainant argues that the Domain Name is confusingly similar to its CABINET DISCOUNTERS trademark, with the additional “s” being the only (and minor) difference. Complainant also asserts that Respondent has not been commonly known by the Domain Name, and has not used the Domain Name in connection with a bona fide offering of goods and services because the services offered at Respondent’s website compete directly with those of the nearby Complainant’s business. Complainant asserts that Respondent is trading off of the renown of Complainant’s longstanding and established trademark to siphon business from Complainant in the Maryland/Washington D.C. area. B. Respondent
Respondent states:
Cabinets Discounters Inc. is a registered corporation in 2 states, State of Maryland and Virginia, Cabinets Discounters Inc. has been given a traders license to oporate [sic] and commence business in the State of Maryland to sell kitchen and bath cabinetry goods. Cabinets Discounters Inc. is simply exersising [sic] its right to commence business in Washington metropoltian [sic] area by advertising its products and services by all means of advertising.
As respects the three elements of the Policy, Respondent states:
Our Domain Name is not identical or confusingly similar to the Complainant, governmental state corporation in both State Maryland and Virginia State does a thorough search before allowing any corporations being registered with the State Commissioners, our corporation under Cabinets Discounters Inc. is a registered corporation in both state [sic], and [the Domain Name] is the property of our registered corporation.
Cabinets Discounters Inc. has every right or legitimate interest in respect of the [Domain Name].
[The Domain Name] is a registered domain and in no form or conjunction is being used in bad faith, we are simply advertising for our own products and services. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant clearly holds rights in its registered trademark CABINET DISCOUNTERS. The Domain Name adds an “s” between the two words but is otherwise identical. In the Panel’s view, this difference is de minimis and does not overcome the confusing similarity between the mark and the Domain Name.
Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent registered the Domain Name in February 2014, decades after Complainant began using the CABINET DISCOUNTERS mark in Maryland and nearly five years after the mark was registered with the USPTO. Respondent does not deny having knowledge of Complainant’s mark, and such a denial would seem implausible given that the parties are located only 26 miles apart and engage in essentially the same business.
Respondent also had the opportunity to explain its bona fides when it received Complainant’s cease-and-desist letter in June 2015. Instead, as far as the record indicates, Respondent ignored the letter.
The Panel sees no convincing evidence that Respondent was commonly known at any time by the Domain Name, or that Respondent used the Domain Name in connection with a bona fide offering of goods or services. The Panel concludes, rather, that on a balance of probabilities Respondent was seeking to divert consumers from Complainant. Further, the Panel concludes that no legitimate noncommercial or fair use was intended or undertaken here by Respondent; the website is clearly commercial in nature.
Finally, the Panel observes that having a corporation or a license in the same name as the Domain Name does not necessarily invest Respondent with a legitimate interest in the Domain Name. As far as the Panel is aware, the state’s grant of a certificate of incorporation or a trading license does not entail a thoroughgoing search for potential trademark infringement or cyberpiracy.
Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
For much the same reasons as the Panel concludes that Respondent lacks a legitimate interest in the Domain Name, the Panel concludes that the Domain Name was registered and is being used in bad faith. Both paragraphs 4(b)(iii) and 4(b)(iv) quoted immediately above may be invoked here.
The Panel would add that, if this had been an innocent misunderstanding on Respondent’s part, such that Respondent was genuinely ignorant of Complainant’s trademark for a competing business located 26 miles away or Respondent genuinely did not appreciate that securing a business license was not the same thing as securing trademark rights, one would have expected a good faith business person to respond to the June 2015 cease-and-desist letter. Respondent’s apparent decision to ignore this letter was the fact which tipped the balance of credibility decidedly in Complainant’s favor in this case.
Complainant has established Policy paragraph 4(a)(iii). 7. Decision
For 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.
Robert A. Badgley
Sole Panelist
Date: January 11, 2016
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