The Complainants are Furniture Brands International, Inc., Broyhill Furniture Industries, Inc., HDM Furniture Industries, Inc., Maitland-Smith Furniture Industries Inc. of United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is NC WEB SERVICES INC. of United States of America, appearing pro se.
The disputed domain names are <broyhilloutlets.com>, <hickorychairdealers.com>, <hickorychairoutlets.com>, <maitland-smithdealers.com>, <maitland-smithoutlets.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2011. On June 17, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On June 19, 2011, GoDaddy.com, Inc. 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 June 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2011. The Response was filed with the Center on July 1, 2011.
The Center appointed William F “Bill” Hamilton as the sole panelist in this matter on July 20, 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.
The Complainants are well-known designers, manufacturers, and retailers of home furnishings. The Complainants are the owners of the BROYHILL mark that was registered with the United States Patent and Trademark Office in 1958. The Complainants also registered and have used the domain name <broyhillfurniture.com> since 1998. The Complainants are the owners of the HICKORY CHAIR mark that was registered with the United States Patent and Trademark Office in 1974. The Complainants registered and have used the domain name <hickorychair.com> since 1996. The Complainants are the owners of the MAITLAND-SMITH mark that was registered with the United States Patent and Trademark Office in 1999. The Complainants registered and have used the domain name <maitland-smith.com> since 1997. The Complainants’ BROYHILL, HICKORY CHAIR, and MAITLAND-SMITH marks will be collectively referred to in this Decision as “the Marks” or “the Complainants’ Marks.”
The disputed domain name <broyhilloutlets.com> was registered by the Respondent on October 31, 2009. The other disputed domain names were registered by the Respondent on June 17, 2009.
The Complainants contend that the disputed domain names are confusingly similar to the Complainants’ Marks because the disputed domain names wholly incorporate the Complainants’ Marks. The Complainants further contend that the Respondent has no rights or legitimate interests in the disputed domain names as the Respondent has never been licensed or otherwise authorized to use the Complainants’ Marks. The Complainants note that the disputed domain names resolve to websites that are commercial in nature and that the Respondent has never been known as or conducted bona fide business under the Marks or the disputed domain names. Lastly the Complainants contend that the disputed domain names were registered and are being used in bad faith because the disputed domain names resolve respectively to websites which while purporting to be directories of stores offering the Complainants’ branded products for sale actually (i) advertise other furniture branded products that compete with the Complainants and (ii) prominently feature a link to the Respondent’s websites “www.ncfurniturestores.com” and “www.discountfurniturebargains.com” that offer furniture in competition with the Complainants.
The Respondent claims to provide a valuable service to consumers by developing a technologically sophisticated directory of furniture offerings. The Respondent has submitted letters from its web and database developers attesting to its development efforts. The Respondent contends that the creation of such directories provides the Respondent with rights and legitimate interests in the disputed domain names. The Respondent contends theses directories have been developed in good faith because, among other things, (i) the Respondent is providing an efficient consumer service, (ii) the disputed domain names were “not chosen as a result of their service mark or popularity,” but based on “customer demand,” (iii) the Respondent has not maximized advertising profits by employing a Google AdWords campaign, (iv) disclaimers are provided on the Respondent’s websites utilizing the disputed domain names, and (v) the Respondent has attempted to negotiate in good faith with the Complainants. In its response, the Respondent also alleges that “Hickory Chair does not have any registered trademark protection and thereby defaults to common law or first use law”. The Respondent also mentions “freedom of speech”.
Paragraph 4(a) of the Policy articulates three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and to obtain relief. These elements are:
i) The respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights, and
ii) The respondent has no rights or legitimate interests in respect of the domain name, and
iii) The respondent’s domain name has been registered and is being used in bad faith.
The disputed domain names are confusingly similar to the Complainants’ Marks. (The Respondent’s argument that the Complaints have no registered trademark in Hickory Chair appears misplaced.) It is well established that the mere addition of generic words as prefixes to a complainant’s trademark will not avoid a finding that the domain name incorporating the mark is confusing similar. In this case, the addition of the suffixes “dealers” and “outlets” to the Complainants’ Marks actually enhances the likelihood that unsuspecting Internet users will believe that the disputed domain names resolve to websites sponsored or authorized by the Complainants. Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774. The Panel finds that the Complainants have satisfied the requirements of Policy paragraph 4(a)(i).
The disputed domain names are utilized for commercial purposes to generate revenue for the Respondent. (This is not a case in which the Respondent is making a genuinely non-commercial use of the disputed domain name; its arguments regarding free speech are uncompelling in that context.) The disputed domain names resolve to websites that have sponsored links and other advertising in addition to a featured link (named “CATALOG”) that resolves to the Respondent’s websites offering competitive discounted furniture. The Complainants have not authorized the Respondent to use the Complainants’ Marks or the disputed domain names. There is no prior association between the Respondent and the Complainants. The Respondent, nonetheless, believes that the fact that the Respondent purports to offer directories to stores and locations that offer for sale furniture that may be manufactured by the Complainants provides the Respondent with rights or legitimate interest in the disputed domain names that incorporate the Complainants’ well-known Marks. The Respondent further relies on the quality of service that it provides (or intends to provide) at the websites involving the disputed domain names. However, the issue in this proceeding is not whether the Respondent is providing a user friendly solution to furniture shopping in North Carolina, United States, but whether the Respondent has any rights or legitimate interests in the disputed domain names. While domain names holders may identify businesses offering good or services, or those who are authorized to provide such services, domain name holders are not entitled to register a confusingly similar domain name for or including the trademark or service mark of the trademark owners to direct users to websites offering products of that trademark owner’s competitors. The Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain names and that the Complainants have satisfied the requirements of Policy paragraph 4(a)(ii). General Motors Corporation and General Motors of Canada Limited v. Andre Rheaume, WIPO Case No. D2004-0664.
It is apparent that the Respondent is using the disputed domain names to direct Internet users to its own websites offering competitive products. The Respondent’s reliance on the technical virtues of its websites is misplaced and irrelevant to the issues in this proceeding. The Respondent’s disclaimers are also ineffective and fail to address the fact that the disputed domain names resolve to websites offering competitive products. The Respondent’s claim to be offering a directory database and local maps to furniture stores does not offset the fact that the disputed domain names are being used to offer sponsored links and a clear pathway to the Respondent’s websites offering discounted furniture in competition to the Complainants. This strikes the Panel as analogous to classic bait and switch. The Respondent’s proffer of good faith is also undercut by the Respondent’s registration of a large number of domain names attaching the words “outlet” or “dealer” to many major and well-known furniture brands including the Complainants. ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co. and Worldcup 2002, WIPO Case No. D2000-0034. The Respondent’s attempts to mask the purpose of the websites utilizing the disputed domain names are of no avail. KeyCorp v. BruceBolton.com, WIPO Case No. D2004-0234; Farouk Systems, Inc. v. QYM, WIPO Case No. D2009-1572. The Panel finds the disputed domain names were registered and are being used in bad faith. General Motors Corporation and General Motors of Canada Limited, supra.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <broyhilloutlets.com>, <hickorychairdealers.com>, <hickorychairoutlets.com>, <maitland-smithdealers.com>, <maitland-smithoutlets.com> be transferred to the Complainants’ parent corporation, Future Brands International, Inc.
William F. Hamilton
Sole Panelist
Dated: August 3, 2011