Complainant is Cabinets to Go, LLC. of Miami, Florida, United States of America ("United States"), represented by Much Shelist PC, United States.
Respondent is WHOIS Agent of Kirkland, Washington, United States of America / Nachman Cheeman of Richardson, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 9, 2018. On February 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 15, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 15, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 28, 2018.
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 proceedings commenced on February 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 21, 2018.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on March 29, 2018. 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 provides cabinets, kitchen and bathroom floorings, countertops, and accessories, and related services to customers through its website and through brick and mortar stores throughout the United States. Complainant's business has a distribution center of over 400,000 square feet and over 60 stores nationwide.
Since August 2009, Complainant has provided goods and services under the trademark, CABINETS TO GO, for which it received a registration certificate from the United States Patent and Trademark Office (the "USPTO") on July 26, 2016 (Reg. No. 5,007,979). The trademark registration indicates that Complainant's first use in commerce of the CABINETS TO GO mark dates from August 25, 2009.
Respondent registered the Domain Name on August 31, 2012. The Domain Name resolves to a website where goods and services are offered, including kitchen cabinets. The name of the business promoted at the website to which the Domain Name resolves is "Best Kitchen Cabinets Factory Direct Pricing". 5. Parties' Contentions A. Complainant (i) Identical or confusingly similar
Complainant asserts that the Domain Name is identical or confusingly similar to Complainant's CABINETS TO GO mark, in which Complainant has rights.
Complainant states that because of extensive marketing and promotion, and because of the enormous success of its business, the CABINETS TO GO mark has been extremely well-known for many years prior to the registration of the Domain Name. Complainant enjoys substantial goodwill and strength in its mark due to its longstanding and continuous use in commerce throughout the United States. In addition, Complainant owns a registered mark, CABINETS TO GO, which provides a clear indication that the rights in the mark shown on the trademark certificate belong to its owner.
Complainant further states that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered mark. In this case, the Domain Name incorporates Complainant's CABINETS TO GO mark in its entirety. Moreover, the inclusion of the word "best" does nothing to reduce the similarity; instead, it exacerbates it as the word conveys a message of quality suggesting awards won by Complainant. (ii) Rights or legitimate interests
Complainant states that Respondent has no rights or legitimate interests in the Domain Name because Respondent has not commonly been known by the Domain Name, nor is Respondent making a legitimate noncommercial or fair use of the Domain Name. Moreover, Complainant has never licensed or otherwise authorized Respondent to use the CABINETS TO GO mark, or any similar variation, in the Domain Name or in any other respect.
Complainant states, in particular, that in this case the lack of rights or legitimate interests in the Domain Name arises from the following circumstances:
- Respondent has not commonly been known by the Domain Name. The WhoIs information simply defines Respondent as "WHOIS Agent". Information gathered from communications with the owner of the website to which the Domain Name resolves indicates a principal by the name of Naghman Cheema. Respondent does not use the words "cabinets to go" or any formative of those words in its business name. The name of the business promoted at the website located at the Domain Name is "Best Kitchen Cabinets Factory Direct Pricing".
- Respondent is not making a legitimate noncommercial or fair use of the Domain Name. As is clear from the website found at the Domain Name, Respondent is using it to operate a business. The Domain Name resolves to a website where goods and services are offered, including kitchen cabinets that are competitive with Complainant's business.
- Complainant has never licensed or otherwise authorized Respondent to use the CABINETS TO GO mark, or any similar variation, in the Domain Name or in any other respect.
For these reasons, Complainant states that it has established, prima facie, this second element of the Policy. (iii) Registered and used in bad faith
Complainant contends that Respondent registered the Domain Name primarily for the purpose of disrupting the business of Complainant, and has used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's CABINETS TO GO mark as to the source, sponsorship, affiliation, or endorsement of goods and services on Respondent's website.
Complainant states that when Respondent registered the Domain Name in 2012, Complainant had already been using its CABINETS TO GO mark for several years, and was well on its way of establishing the wildly successful business that Complainant is today. In these circumstances, there is no basis on which Respondent could have registered the Domain Name except in bad faith. Respondent is a direct competitor of Complainant, and without Complainant's authorization or consent registered the Domain Name, which is confusingly similar to Complainant's mark. Respondent has used the Domain Name to divert Internet traffic to a website on which Respondent promotes its own products and services. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its CABINETS TO GO trademark, based on its trademark registration and longstanding use of the mark in the United States.
Further, the Panel determines that Domain Name is confusingly similar to the CABINETS TO GO mark, as the Domain Name incorporates the mark in its entirety, while the addition of the term "best" does not prevent a finding of confusing similarity. See Pet Plan Ltd. v. Registration Private, Domains By Proxy, LLC / Nicholas Maddalena,WIPO Case No. D2017-0839 (where the panel found that the domain name was confusingly similar to the complainant's PET PLAN mark, observing that the word "best" was merely of a laudatory nature and consequently not likely to avoid a finding of confusing similarity).
Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1, states that "where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
Here, the Panel finds that Complainant has made out a prima facie case, while Respondent has failed to respond to the Complaint. The Panel finds that Complainant has not licensed or otherwise authorized Respondent to use its CABINETS TO GO trademark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name is linked to a website that provides good and services directly in competition with Complainant's goods and services.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that "bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant's mark".
Here, the Panel finds that the Domain Name was registered and is being used in bad faith. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant's CABINETS TO GO trademark in its entirety, along with the word "best", which, when used in the Domain Name in combination with the CABINETS TO GO mark, falsely suggests a connection to Complainant. The circumstances indicate that Respondent is a competitor of Complainant and that when Respondent registered the Domain Name in 2012, Complainant had already been using its CABINETS TO GO mark for several years and had established a reputation in its mark. In view of the evidence and allegations put forward by Complainant, and without a Response from Respondent, the Panel finds, on the balance of probabilities, that Respondent registered the Domain Name in bad faith.
Further, the Panel finds that Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's CABINETS TO GO mark as to the source, sponsorship, affiliation, or endorsement of goods and services on Respondent's website. In this way, Respondent is using the Domain Name to disrupt the business of a competitor, Complainant, by creating a likelihood of confusion with Complainant's mark, for commercial gain.
In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy 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.
Christopher S. Gibson
Sole Panelist
Date: May 3, 2018
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