The Complainant is CCA Global Partners, Inc., United States of America (“United States”), represented by Hovey Williams LLP, United States.
The Respondent is Private by Design, LLC, United States / Lobanova Gertrude, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2020. On June 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 27, 2020, 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. The Center sent an email communication to the Complainant on July 9, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 9, 2020. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2020. The Center appointed Nicholas Weston as the sole panelist in this matter on August 12, 2020. 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 a membership association that operates a buying group and shared services business for a group of independent flooring retailers in North America. The Complainant holds registrations for the trademark FLOORING AMERICA in the United States, which it uses to designate carpets, rugs and retail store services in the field of floor coverings. United States Trademark Registration No. 2542110, for example, cites a first-use date of July 14, 1999 and was registered on February 26, 2002. The Complainant owns the domain name The Respondent registered the Disputed Domain Name The Complainant cites its registrations of the trademark FLOORING AMERICA in the United States as prima facie evidence of ownership. The Complainant submits that the mark FLOORING AMERICA is well-known and that its rights in that mark predate the registration of the Disputed Domain Name The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademark. The Complainant also contends that use, which intentionally trades on the fame of another to divert traffic to a website promoting pornography does not meet the criteria of a bona fide offering of goods or services. Finally, the Complainant alleges, inter alia, that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, using the Complainant’s FLOORING AMERICA mark in the Disputed Domain Name, and has intentionally attempted to attract for commercial gain Internet users to the Respondent’s website or other online locations, by creating likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites (citing Merck Sharp & Dohme Corp. v. ZhenHui, HuiZhen, WIPO Case No. D2016-1431). B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark FLOORING AMERICA in numerous countries including the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Name is identical or confusingly similar to the FLOORING AMERICA trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark FLOORING AMERICA; (b) followed by the word “ashburn”; (c) followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “flooringamericaashburn”. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word, in this case, the geographical name “ashburn”: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033). This Panel accepts the Complainant’s contention that the addition of the word “ashburn” after the Complainant’s registered trademark is an additional element that does not serve to distinguish the Disputed Domain Name (see: Bondy Way Development Corporation and Ashburn Village Development Corporation v. Re/Max Premier,WIPO Case No. D2000-0322(“This Panel notes that Ashburn is the name of a town in Virginia”). This Panel accepts that the addition of a geographical location is a common practice to identify where a business is located (see: Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC , Worldwide Franchise Systems, Inc., Westin Hotel Management, L.P. v. Marketing Total S.A., Keyword Marketing, Inc., Domain Drop S.A., Maison Tropicale S.A., Web Advertising, Corp.,WIPO Case No. D2008-0019 (“The ability for such generic words and geographic locations to distinguish the disputed domain names from the trademarks of the Complainant is limited”). The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of Panel Views on Selected URDP Questions, Third Edition “WIPO Overview 3.0”, section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a landing web page containing explicit pornographic content, thereby illegitimately passing off the owner’s goodwill and reputation for its own benefit. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using the Complainant’s mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its webpage containing explicit pornographic video content. The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. In view of the composition of the Disputed Domain Name, the Panel finds it highly probable that the Respondent knew of the Complainant’s trademark FLOORING AMERICA, and had it in mind at the time of registration. Given that a Google Search Engine search by the Panel reveals the existence of a FLOORING AMERICA store in Ashburn, Virginia, this Panel infers that the Respondent was aware of the Complainant’s use of the FLOORING AMERICA trademark to identify a store located in Ashburn, Virginia. Further, a gap of several years between registration of a complainant’s trademark and a respondent’s registration of a disputed domain name (containing the trademark) could constitute in certain circumstances additional evidence of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In the present case, the Respondent registered the Disputed Domain Name twenty years after the Complainant first established trademark rights in the FLOORING AMERICA mark. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see: WIPO Overview 3.0, section 3.1.4) The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814). On the issue of use, the evidence is that the Disputed Domain Name resolved to webpage unconnected with any bona fide supply of goods or services by the Respondent featuring, as it does, sexually explicit and degrading pornographic video content. Exploitation of the reputation of a trademark to obtain revenue from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. (See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra; Lilly ICOS LLC v. The Counsel Group LLC,WIPO Case No. D2005-0042; and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, supra; Research In Motion Limited v. International Domain Names Inc./Moniker Privacy Services, supra; Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, supra and Deloitte Touche Tohmatsu v. Henry Chan, supra). In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark FLOORING AMERICA and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to webpage displaying pornographic content for commercial gain. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 Disputed Domain Name Nicholas Weston
Sole Panelist
Date: August 26, 2020
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