WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carlisle Wide Plank Floors, Inc. v. Marketing Total, S.A.
Case No. D2007-0844
1. The Parties
The Complainant is Carlisle Wide Plank Floors, Inc., United States of America, represented by Hinckley, Allen & Snyder LLP, United States of America.
The Respondent is Marketing Total, S.A., of Charlestown, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <carlislewideplankflooring.com> is registered with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2007. On June 13, 2007, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On June 13, 2007, DomainDoorman, LLC transmitted by email to the Center its verification response confirming that the 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”), 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 June 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2007.
The Center appointed Adam Taylor as the sole panelist in this matter on August 27, 2007. 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, a US corporation, has provided US consumers with wide plank hardwood flooring and related wood and lumber products under the name “Carlisle” since 1966. The Complainant promotes its hardwood flooring products through a website at “www.wideplankflooring.com”.
The Complainant owns a US registered trademark number 3042503, filed May 18, 2003, for the words CARLISLE WIDE PLANK FLOORS in class 40.
The disputed domain name was first created on April 18, 2006.
As of June 6, 2007, there was a website at the disputed domain name with a directory of affiliate links to websites of businesses competing with the Complainant as well as one to the Complainant’s own website.
The Respondent has been the subject of at least nine other UDRP cases in which it was found to have registered and used domain names in bad faith: Rude Chalet Ltd. v. Marketing Total S.A., WIPO Case No. D2007-0220 (April 6, 2007); Wal-Mart Stores Inc. v. Marketing Total S.A., WIPO Case No. D2007-0419 (May 8, 2007); Robert Bosch GmbH v. Marketing Total, S.A., NAF Case No. 888552 (February 28, 2007); Hershey Entertainment & Resorts Co., v. Marketing Total S.A., NAF Case No. 888088 (February 20, 2007); Questar Corporation v. Marketing Total S.A., NAF Case No. 819504 (November 21, 2006); Enterprise Rent-A-Car Co. v. Marketing Total S.A., NAF Case No. 843582 (December 29, 2006); Bealls, Inc. v. Marketing Total S.A., NAF Case No. 882153 (February 21, 2007); SR Holdings, Inc. v. Marketing Total S.A., NAF Case No. 915273 (March 15, 2007); Sico Inc. v. Marketing Total S.A., NAF Case No. 949597 (May 15, 2007).
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s CARLISLE and CARLISLE WIDE PLANK FLOORS trademarks. The domain name wholly incorporates the CARLISLE mark. The only difference between the domain name and “Carlisle Wide Plank Floors” is substitution of “Flooring” for “Floors”.
Rights or Legitimate Interests
The Complainant contends that the Respondent lacks rights and legitimate interests.
There is nothing to indicate that the Respondent is commonly known by the disputed domain name.
The Complainant asserts that the Respondent did not, before notice of the dispute, use the disputed domain name in connection with a bona fide offering of goods or services, nor has it made bona fide non-commercial or fair use of the name. Diversion to competitor sites is not bona fide use nor legitimate non-commercial or faith use.
The Complainant has not authorized or licensed the Respondent to use its trademarks.
Registered and Used in Bad Faith
The Complainant further contends that the Respondent is using the disputed domain name in bad faith primarily for the purpose of intentionally attracting for commercial gain, Internet users to the Respondent’s site by creating a likelihood of confusion with the Complainant’s mark.
The Respondent is diverting Internet users to the Complainant’s competitors. It can be inferred from the disputed domain name and the links to the Complainant’s competitors that the Respondent had actual knowledge of the Complainant’s marks.
The Respondent’s registration of at least eleven other domain names containing well known trademarks, or misspellings thereof, as identified in nine UDRP cases against the Respondent, is further evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name differs from the Complainant’s registered trademark CARLISLE WIDE PLANK FLOORS only by the substitution of “Flooring” for “Floors”. This is a very minor distinction which is far from sufficient to differentiate domain name and trademark.
The Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Panel therefore finds that the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070 (March 24, 2003).
The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant. Such use of the disputed domain name could not be said to be bona fide.
There is no evidence before the Panel that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of the Policy.
C. Registered and Used in Bad Faith
It is difficult to conceive of any genuine reason why the Respondent would wish to register a domain name which is virtually identical to the Complainant’s distinctive trademark and use it to drive traffic to the Complainant’s competitors.
The Respondent has not come forward to deny that the Complainant’s assertions of bad faith let alone offer any explanation for its registration and use of the disputed domain name.
It is also noteworthy that the Respondent has been found to have registered and used domain names in bad faith in at least nine other UDRP cases, as indicated above.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Panel is satisfied that the Respondent has in all likelihood intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. The Panel therefore finds that the Complainant has established the third element of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <carlislewideplankflooring.com> be transferred to the Complainant.
Dated: September 10, 2007