WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A.B.C. Carpet Co., Inc. v. ABC Carpet and Rug Repair Services
Case No. D2011-0773
1. The Parties
Complainant is A.B.C. Carpet Co., Inc. of New York, United States of America, represented by Lathrop & Gage LLP, United States of America.
Respondent is ABC Carpet and Rug Repair Services of New York, United States of America, represented by Reena Gulati PLLC, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <abccarpetandrugcare.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2011. On May 4, 2011, the Center transmitted by email to Tucows Inc (the “Registrar”) a request for registrar verification in connection with the disputed Domain Name. On the same date, 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2011. By agreement of the Parties, the Response due date was extended to June 24, 2011. The Response was filed with the Center on June 24, 2011.
On July 12, 2011, Complainant submitted a supplemental filing that responded to Respondent’s Response. The next day, Respondent objected to the supplemental filing citing Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on July 13, 2011. 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 ABC Carpet Co., Inc., (“ABC”) is a corporation organized and existing under the laws of the State of New York. Since 1897, ABC has operated retail stores in New York, New Jersey, Florida and the United Kingdom. Its gross sales nationwide exceed tens of millions of dollars annually.
ABC has registered multiple trademarks (the “Marks”) incorporating the ABC Mark, including:
(a) United States Trademark Registration No. 2,193,567 covering ABC for “retail store services, featuring rugs and carpets” in Class 35, having a first use in commerce date of 1897 and a registration date of October 6, 1998.
(b) United States Trademark Registration No. 2,185,853 covering ABC CARPET & HOME and Design for “retail store services, featuring rugs and carpets” in Class 35, having a first use in commerce date of August 1992 and a registration date of September 1, 1998.
(c) United States Trademark Registration No. 2,185,854 covering ABC CARPET & HOME (Stylized) for “retail store services, featuring rugs and carpets” in Class 35, having a first use in commerce date of February 1995 and a registration date of September 1, 1998.
(d) United States Trademark Registration No. 2,212,531 covering ABC and Design for “retail store services, featuring rugs and carpets” in Class 35, having a first use in commerce date of 1960 and a registration date of December 22, 1998.
(e) United States Trademark Registration No. 3,852,639 covering ABC for “Cleaning, repair and restoration services for rugs, carpets, upholstery and furniture” in Class 37, having a first use in commerce date of June 1990 and a registration date of September 28, 2010.
(f) United States Trademark Registration No. 3,852,640 covering ABC CARPET & HOME and Design for “Cleaning, repair and restoration services for rugs, carpets, upholstery and furniture” in Class 37, having a first use in commerce date of June 1990 and a registration date of September 28, 2010.
Since 1990, a licensee of Complainant (the “licensee”) has used the ABC Mark as well as the trade name and mark "ABC Rug & Carpet Cleaning" for rug and carpet cleaning services. Since its inception, the licensee has completed approximately 57,000 orders, resulting in USD 23 million in sales. The licensee operates and maintains a website located at “www.abchomecare.com” that has been in operation since June 2000 and attracts over 4,000 visitors a month.
Respondent in this administrative proceeding is ABC Carpet and Rug Repair Services. Respondent is the registrant of the Domain Name, <abccarpetandrugcare.com> (the “Domain Name”) . At the bottom of the homepage at the disputed Domain Name, there is a disclaimer (the “disclaimer”) that "This website IS NOT affiliated with ABC carpet & home of New York & New Jersey or any other ABC Carpet Cleaning Service !".
The Domain Name was created on October 17, 2008.
5. Parties’ Contentions
Complainant contends the following:
As a result of over a century of successful sales and marketing, Complainant’s ABC Mark has become well-known.
The Domain Name incorporates the entirety of Complainant’s ABC Mark together with a description of carpet and rug care services in direct competition with Complainant’s. In light of Complainant’s registration and use of the ABC Mark and the domain name <abccarpet.com>, and its licensee's use of the domain <abchomecare.com>, Respondent’s registration and use of the Domain Name create a strong likelihood of confusion as to source, sponsorship, association, or endorsement of Respondent’s website associated with its Domain Name <abccarpetandrugcare.com>.
No bona fide offering of goods or services accompanies Respondent’s use of the Domain Name. Rather, Respondent is capitalizing on consumers’ recognition of Complainant’s name and well-known ABC Mark to attract consumers to its own website.
Respondent’s use of the Domain Name to exploit Complainant’s mark is in bad faith.
Respondent challenges the scope of Complainant’s asserted trademark rights and their application to the present dispute. Respondent argues that the presumption of confusing similarity that attaches to one party’s unauthorized incorporation of another party’s trademark does not attach to Complainant’s ABC mark due to the Mark’s “weak and barely distinctive” nature. Response at page 4. Indeed, in view of the multitude of third-party registrations of the Mark ABC, there is no confusing similarity between Respondent’s Domain Name and Complainant’s Marks.
Respondent contends that its use of the Domain Name precedes any notice of the instant dispute. And, that its use of the Domain Name serves a valid, legitimate commercial purpose - the offering of carpet and rug cleaning services on the Internet. Respondent bolsters its commercial presence with reference to its website’s link to the Better Business Bureau, which indicates that “Oriental Rug Care New York” has been operating since January 1, 1971. Id. at page 8.
Respondent denies any bad faith use of the Domain Name. Respondent points out that its registration of the Domain Name preceded Complainant’s registration of certain of the ABC Marks by nearly two years. Furthermore, the Domain Name accurately describes its legitimate commercial business - carpet and rug cleaning services. And, Respondent’s website “looks and feels acutely different” from Complainant’s website. Id. at page 12.
Respondent views the Complaint as an illegitimate attempt to “deprive a registered domain-name holder of a Domain Name.” Id. at page 13. Thus, Respondent seeks a Panel finding that the instant proceeding “was brought primarily to harass the domain holder.” Id.
6. Discussion and Findings
To prevail on its Complaint, Complainant must prove: (i) The Domain Name is identical or confusingly similar to the trademark; (ii) Respondent has no right or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Sony Kabushiki Kaisha aka Sony Corporation v. Sony Holland, WIPO Case No. D2008-1025.
To prevail on its reverse domain name hijacking claim, Respondent must show that “the complainant knew of the respondent's unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith.” Sony Kabushiki Kaisha aka Sony Corp. v. Sony Holland, supra (citing Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224, and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151).
In reviewing the Parties’ claims, the Rules require this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable.” Camden Lock Limited, Northside Developments Limited v. Domain Finance Inc., Minakumari Periasamy, WIPO Case No. D2011-0530. This Panel reached its decision without any need to reference the Parties’ supplemental filings; thus, it need not address the propriety of those supplemental filings on the merits.
A. Identical or Confusingly Similar
The Panel finds that the Domain Name is confusingly similar to Complainant’s Mark.
UDRP Panels have consistently concluded that a domain name’s inclusion of a registered mark in its entirety results in confusing similarity for purposes of paragraph 4(a)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, (“the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778, (where <playboysportsbook.com> was found confusingly similar to the PLAYBOY mark); Adaptive Molecular Technologies, Inc. v. Piscilla Woodward S Charles R Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006, (where the distinctive features of the domain name were the complainant's trademarks). Thus Respondent’s inclusion of the entirety of Complainant’s Mark is compelling evidence of confusing similarity.
Respondent’s addition of the words “Carpet and Rug Care” to Complainant’s ABC Mark “only serves to increase the likelihood of confusion between that mark and the [d]omain [n]ame.” World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642. “Forming a domain name by adding to a complainant’s mark a word which is descriptive or suggestive of the very services offered by the complainant under that mark, effectively ensures that the domain name will convey the same idea, or impression, as the mark. “ (concluding that the domain name <pronaturalmuscle.com> was confusingly similar to the complainant’s PRO NATURAL mark). Id.
Finally, Respondent’s use of a top-level domain (“.com”) is irrelevant to paragraph 4(a)’s “confusing similarity” inquiry and is thus disregarded. Altria Group v. Daniel Cheng, WIPO Case No. D2009-1764.
Respondent offers no authority to undermine Complainant’s case. The panel’s decision in Metropolitan Life Insurance Company v. HLP General Partners Inc., WIPO Case No., D2005-1323, does not favor Respondent. In Metropolitan, the panel did not make a finding under the first element. In that case, the complainant sought to enforce its mark against one of the “most famous nude photography websites in the world”, “www.met-art.com”. Id. The panel’s rationale for denying the complaint was two-fold: first, respondent’s use of the mark was not “obviously related to the financial services for which complainant is primarily famous.” Id. Second, complainant showed no likelihood that the “hundreds of thousands (perhaps millions)” of Internet users visiting respondent’s website in search of nude pictures were actually confused in their search for complainant’s financial or philanthropic services. In the present case, the Panel finds that Respondent’s website offers services identical to those offered by Complainant and its disclaimer concedes material confusion, which is relevant to the assessment of intent to create confusion under the second and third elements of the Policy (i.e. rights or legitimate interests and bad faith), but not relevant under the first element. See question 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
Respondent’s invocation of Pinnacle Intellectual Property v. World Wide Exports, WIPO Case No. D2005-1211, fares no better. In that case, complainant sought to enforce its THE MEDICINE SHOPPE mark against the registrant of <canadamedicineshop.com>. In that case, complainant failed to provide “evidence of the nature and extent of its use of the mark,” and the panel was “[un]able to access the scope of rights to which the complainant may be entitled.” Id. The panel’s decision in Pinnacle, rendered in the absence of any evidence as to the strength of complainant’s case, does not guide the present case which is rife with evidence of ABC Carpet & Co.’s long-standing commercial use of its Marks.
The Panel concludes that the Domain Name is confusingly similar to Complainant’s Marks.
B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance often requires the impossible task of proving a negative because such information is frequently within the sole possession of respondent. See Altria Group, Inc. v. Steven Company, WIPO Case No. D2010-1762. Accordingly, Complainant need only make out a prima facie case that Respondent lacks rights or legitimate interests. Id.
Complainant has established its ownership of the registered word Mark ABC (for retail store services, featuring rugs and carpets), ABC CARPET AND HOME, ABC CARPET AND HOME (stylized) and ABC and DESIGN. Complainant has averred, and Respondent has not contested, that the Domain Name’s use of the Mark is without authorization from the Mark’s owner. It is therefore incumbent upon Respondent to demonstrate its rights or interests in the Domain Name. See Altria Group, Inc. v. Steven Company, supra (Upon a prima facie showing, the burden shifts to respondent to demonstrate its rights or interests in the domain name; if the respondent fails to do so, a complainant may be deemed to have satisfied paragraph 4(a)(ii) of the UDRP).
The record does not support the conclusion that Respondent has been commonly known by the Domain Name. Indeed, as the Response admits, Respondent has operated for over forty years under the name “Oriental Rug Care New York.” Response at page 8 (emphasis added). Nor does the record contain any factual basis in support of any long-standing commercial use of the Domain Name (<abccarpetandrugcare.com>) in reference to Respondent’s business. Thus, the record permits no inference of any bona fide or legitimate commercial use of the Domain Name. To the contrary, the evidence suggests that Respondent intentionally chose a Domain Name confusingly similar to Complainant’s business in an effort to exploit Complainant’s Mark.
Accordingly, the Panel finds that Respondent has no rights to or legitimate interests in the disputed Domain Name and thus paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
As the panel observed in Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, a respondent’s use of a mark notwithstanding its knowledge of a direct competitor’s trademark rights in that mark “would go far to suggest bad faith.” See also Samsonite Corporation v. Colony Holding, NAF Claim No. 94313 (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). This record leaves no doubt that Respondent possessed actual or constructive knowledge of Complainant’s business and distinctive Marks. See Enagic USA, Inc. v. Charlie Kalopungi / Moniker Privacy Services, WIPO Case No. D2011-0484. Respondent does not contest Complainant’s century-old presence in the carpet, rugs and home furnishings industry; its annual sales in excess of tens of millions of dollars; its concentrated east-coast presence in New York and New Jersey; or its acknowledgement (via disclaimer) that its Domain Name bore confusing similarity to Complainant’s Marks. In light of Complainant’s established commercial presence in the same state and in the same industry, it defies reason that Respondent’s registration and use of the Domain Name occurred in the absence of any awareness of Complainant’s rights to the Mark. Id. (Complainant was “well-known” in the industry, thus the “Respondent, at the time of registration of the disputed Domain Name, most likely knew or should have known of the existence of the Complainant’s business name [.]”)
Thus, the Panel concludes, without difficulty, that Respondent’s registration and use of the Domain Name occurred in bad faith.
D. Reverse Domain Name Hijacking
Respondent has failed to support a claim for reverse domain name hijacking. Under the Rules, reverse domain-name hijacking exists if “the Complainant knew or should have known at the time that it filed the Complaint that it could not prove that the Domain Name was registered in bad faith.” See Futureworld Consultancy (Pty) Limited v. Online advice, WIPO Case No. D2003-0297. Complainant has succeeded on its Complaint, thus no such claim may lie.
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 <abccarpetandrugcare.com> be transferred to Complainant.
Maxim H. Waldbaum
Dated: July 28, 2011