WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
W.S. Badcock Corporation v. Angelina Gan
Case No. D2011-1178
1. The Parties
The Complainant is W.S. Badcock Corporation, of Florida, United States of America, represented by Trenam Kemker, United States of America.
The Respondent is Angelina Gan, Taiwan Province of China.
2. The Domain Name And Registrar
The disputed domain name <badcock-furniture.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2011. On July 12, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On July 13, 2011, Moniker Online Services, 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” 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 the Respondent of the Complaint, and the proceedings commenced on July 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2011.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on August 10, 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
The Complainant was founded in 1904 and is presently one of the largest privately-owned home furniture retailers in the United States.
Also, the Complainant has received numerous awards and accolades and is widely recognized and well respected in the United States.
The Complainant owns United States trademark registrations composed by the expression “badcock”, including for the brand BADCOCK HOME FURNITURE & MORE.
The Complainant expends considerable resources advertising and promoting its services under the “badcock” name, including Internet, radio, television and print advertising.
In addition, the Complainant owns the domain name <badcock.com> which has operated as an official website since, at least 1995.
The disputed domain name was registered in April 28, 2010.
The Panel accessed the website displayed at the disputed domain name on August 25, 2011 and there was a parking page with several links related to furniture items.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) The disputed domain name is confusingly similar to the Complainant’s well-known and successful trademark BADCOCK. Numerous WIPO panels have held that when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identically or confusingly similarity. As the Complainant’s trademark BADCOCK is associated to furniture retailing, the disputed domain name <badcock-furniture.com> is obviously identical or confusingly similar to the Complainant’s trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. Also, the Respondent is not associated or affiliated with the Complainant in any way. Indeed, the Complainant has not licensed the Respondent to use its marks nor has allowed the Respondent to use its trademarks. The disputed domain name does not resolve to a website, which is a sufficient basis to find that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has never attempted to use the disputed domain name in connection with the offering of any goods, services or business, nor in connection with any legitimate noncommercial or fair use.
(iii) The disputed domain name was registered and is being used in bad faith. The disputed domain name is a monetized parking page that is being used by the Respondent to direct Internet user to third-party websites offering home furnishing and other types of furniture, which compete directly with the Complainant. Given that the disputed domain name incorporates the Complainant’s mark and directs consumers to websites offering competing services, consumers will likely be confused by the concurrent use of the disputed domain name and the Complainant’s name and mark. Indeed, the purpose of the disputed domain name is to divert consumers from the Complainant’s website to the Respondent’s page. On or about June 7, 2011, the Complainant sent a Cease and Desist Letter to Ping Man Kam, who was the registrant at that time. However, no response was received. After that, the Administrative Contact and/or Registrant information changed. Another Cease and Desist Letter was sent to the current Registrant, but again no response was received. The Respondent has not made any actual use of the disputed domain name, as it does not resolve to a website. Such inaction can characterize bad faith. Clearly the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant and in order to attract Internet users to the Respondent’s website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no doubt that “badcock” and “badcock furniture” are terms directly connected with the Complainant’s activities.
Annex 4 to the Complaint demonstrates registrations of BADCOCK trademarks in the United States since at least 2000.
The trademark BADCOCK is wholly encompassed within the disputed domain name, which also includes the symbol "-" and the generic term “furniture”, an expression that is also part of the Complainant's trademark BADCOK HOME FURNITURE & MORE. The Panel concludes that the addition of those elements is not sufficient to refute the similarity between the disputed domain name and the Complainant’s trademark, required under paragraph 4(a)(i) of the Policy.
In a previous UDRP case, concerning the domain names <buy-xenical-000.biz> and <order-xenical-a.biz>, the panel stressed that “it is now well-established that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is distinguishable from the Trademark in question”
(F. Hoffmann-La Roche AG v. sysadmin admin, balata.com ltd., WIPO Case No. D2008-0954).
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark, and that the Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the webpage that is published at the disputed domain name basically hosts pay-per-click links to competitor’s websites.
The Complainant has not licensed or authorized the use of its trademark to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.
Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
When the disputed domain name was registered the Complainant’s trademark BADCOCK was already well established and known in the field of furniture retailers in the United States. Therefore, it is not feasible that the Respondent could has been unaware of the Complainant’s reputation and business.
Also, the disputed domain name is being used as a pay-per-click landing page, displaying sponsored links for third party websites that offer competing products. Therefore, in doing so, the Respondent:
(i) create a likelihood of confusion with the Complainant’s trademark;
(ii) obtain click-through revenue from this practice; and
(iii) deprive the Complainant from selling its products to prospective clients who are clearly looking for the Complainant and, at the same time, promote products offered by competitors.
In situations like this, former UDRP decisions have considered this type of use of a domain name enough to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474, or also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith, satisfying the third element of the Policy.
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 <badcock-furniture.com> be transferred to the Complainant.
Dated: August 26, 2011