Complainant is Regency Furniture of Laurel, Inc. of Brandywine, Maryland, United States of America, represented by Vorys, Sater, Seymour and Pease, LLP, United States of America.
Respondent is David Lively of Lancaster, Ohio, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2018. On April 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 22, 2018.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on May 31, 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 has operated in the furniture business since 1999 and has several (7) furniture stores in Virginia and Maryland. Complainant offers its retail services under the trademarks REGENCY FURNITURE (United States Registration No. 3475042; registered on July 29, 2008) and REGENCY (United States Registration No. 4647874; registered on December 2, 2014). Complainant also advertises and sells furniture online through its website “.”
Respondent registered the disputed domain name on July 19, 2012. The disputed domain name resolves to the website “www.”, which advertises furniture for a company called Regency Furniture of NC, Inc. (“RFNC”). RFNC operates three brick and mortar furniture stores in North Carolina. Respondent appears to be the designer of RFNC’s website.
In 2014, Complainant sent a cease and desist letter to RFNC’s predecessor company. In 2017, Complainant sent cease and desist letters to RFNC and also communicated with Respondent, who stated that all communications should be directed to RFNC. 5. Parties’ Contentions A. Complainant
Complainant alleges that the disputed domain name is confusingly similar to the REGENCY FURNITURE and REGENCY marks in which it has rights because the marks are incorporated into the disputed domain name. Complainant also maintains that Respondent has no rights or legitimate interests in the disputed domain name as Complainant’s trademark registrations predate the disputed domain name’s registration, Complainant has not authorized the use of its REGENCY FURNITURE and REGENCY marks, and Respondent and RFNC are not making a legitimate noncommercial or fair use of Complainant’s marks.1
Finally, Complainant argues that bad faith is established because RFNC was aware of Complainant’s rights from Complainant’s 2014 cease and desist letter to RFNC’s predecessor and because the disputed domain name trades off on Complainant’s goodwill and diverts traffic to a “fraudulent website and business” not affiliated with or endorsed by Complainant. B. Respondent
Respondent did not file a response to the complaint. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. The disputed domain name fully incorporates Complainant’s registered REGENCY FURNITURE and REGENCY marks and the inclusion of “galleries” fails to dispel the confusing similarity with Complainant’s mark. B. Rights or Legitimate Interests
Complainant’s failure to prove bad faith registration under paragraph 4(a)(iii) of the Policy, as addressed below, is dispositive and, thus, it is not necessary for the Panel to address Respondent’s lack of rights or legitimate interests. For completeness, the Panel notes its concerns regarding Complainant’s ability to satisfy the second element of the Policy. Specifically, it appears that the disputed domain name is used in support of a bona fide business. RFNC operates three brick-and-mortar furniture stores in the Raleigh, North Carolina region. The record evidence shows that Complainant operates its stores in Virginia and Maryland and does not operate stores in North Carolina. Furthermore, it appears that the disputed domain name is used essentially as an advertising billboard to draw customers to the RFNC’s physical stores. RFNC does not sell furniture online.
Although Complainant may have an ordinary trademark infringement claim, Respondent’s use of the disputed domain name is not cybersquatting. RFNC’s business is real and not pre-textual. RFNC began using REGENCY FURNITURE GALLERY as a trademark and trade name in the real world for a real business before2 Complainant notified him of its claim of rights in 2014. For this reason, the use of the disputed domain name is bona fide under paragraph 4(c) of the Policy. See WIPO Overview 3.0, section 2.2 (“evidence generally pointing to a lack of indicia of cybersquatting intent” supports a finding of bona fide use).
In finding bona fide use under paragraph 4(c) of the Policy, the Panel acknowledges that RFNC’s real world furniture sales may infringe Complainant’s trademark rights, although this is not certain given that RFNC may have a defense based on priority of use or the limits of Complainant’s actual market penetration, Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959) (holding that plaintiff was not entitled to relief under the Lanham Act because “no likelihood of public confusion arises from the concurrent use of the mark in connection with retail sales of doughnuts and other baked goods in separate trading areas, and because there is no present likelihood that plaintiff will expand its retail use of the mark into defendant’s market area”). The fact that a judicial court could (but has not) find that RFNC infringes Complainant’s trademarks, however, does not mean that the use of the disputed domain name is not bona fide under paragraph 4(c) of the Policy, the purpose of which is, in part, to distinguish between cases that may be decided under the UDRP and those that belong in the judicial courts. Schweizerische Bundesbahnen Sbb v. Gerrie Villon,WIPO Case No. D2009-1426 (transfer of denied; Fred Abbot), (“The Panel notes that the Policy is limited in its subject matter scope. It does not address trademark infringement, as such, but rather abusive domain name registration and use. A registrant may establish rights or legitimate interests in a domain name based on use of the domain name (or mark) in one country or region, yet use that domain name in a way that infringes a third-party trademark in another country or region. Ordinary claims of trademark infringement are a matter for the courts”). Where judicial court proceedings are necessary, or even preferred, to determine whether a Respondent’s real world business infringes Complainant’s rights, it is not appropriate to resolve the dispute under the UDRP. And a good faith use of a mark in the physical world may be considered bona fide, even where the Complainant has a plausible infringement claim that has not been validated by a judicial ruling.
The Panel notes that in its 2014 cease and desist letter Complainant accused RFNC’s predecessor of trademark infringement, but it has chosen not to sue. Complainant’s more recent cease and desist letter mentions only the disputed domain name, ignoring RFNC’s retail store activity in the real world. It would appear that Complainant is resorting to the UDRP as a substitute for litigation.
The Panel finds that Complainant has not satisfied paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant has not proved by a preponderance of the evidence that Respondent registered the disputed domain name in bad faith. A finding of bad faith registration may not be based on presumed knowledge. There must be some evidence from which the Panel can infer that Respondent was probably aware of Complainant’s rights at the time of the disputed domain name registration. Complainant here offers no such evidence.
While Complainant shows that it has been in business since 1999, there is nothing to indicate that Complainant was well-known and recognized outside of its region of operation (Virginia and Maryland) by 2012 when Mr. Lively registered the disputed domain name for RFNC, such that either Respondent or RFNC should likely have been aware of the REGENCY FURNITURE and REGENCY marks and Complainant’s rights in them. Complainant’s 2014 letter to RFNC’s predecessor does not establish knowledge at the time of registration (July 19, 2012).
Accordingly, the Panel finds that Complainant has not satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Lawrence K. Nodine
Sole Panelist
Date: June 14, 2018
1 The Respondent David Lively does not operate the website or furniture stores about which Complainant complains. According to his letter responding to Complainant, Mr. Lively secured the domain name and developed the webpage for RFNC’s predecessor, to whom Mr. Lively says he transferred the disputed domain name, even though Mr. Lively is still the owner listed in the WhoIs records. In large part, Complainant ignores Mr. Lively and treats RFNC as if it is the registered owner of the disputed domain name. Respondent directs its arguments at RFNC’s website, and Complainant imputes RFNC’s awareness of Complainant and RFNC’s use of the website “by extension” to Respondent. This Complaint raises the interesting question of whether the actions of an underlying beneficial owner (in this case, RFNC) of the disputed domain name may be imputed to Mr. Lively, the WhoIs-listed registrant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.4.6 (referencing the ICANN Registrar Accreditation Agreement under which a WhoIs-listed registrant “accepts liability for any use of the relevant domain name unless it timely discloses the contact information of any underlying beneficial registrant”). The Panel need not resolve this question here, however, as Complainant has failed to show that either Respondent or RFNC acted in bad faith. Accordingly, even if the RFNC’s knowledge and actions are imputed to Mr. Lively, there is still insufficient evidence of bad faith registration.
2 Respondent registered the disputed domain name in 2012, but the record does not reveal when Respondent began using the REGENCY FURNITURE GALLERY mark in Raleigh.
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