Complainant is Cabinets to Go, LLC, United States of America, represented by Much Shelist, P.C., United States of America (“United States”).
Respondent is Oliveira Tiago of Florida, the United States.
The disputed domain name <orlandocabinetstogo.com> (“Domain Name”) is currently registered with GoDaddy.com (“the Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2018. On August 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 7, 2018, the Registrar verified that Respondent was the registrant for the Domain Name.
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”).
The Center formally notified Respondent of the Complaint on August 17, 2018 by email and by post. The Center sent formal notice by email with the Complaint and attachments to Respondent’s gmail.com email address, which is the email address listed with the Registrar, and to [email protected] The Center also sent formal notice by DHL Express Worldwide to the mailing address listed with the Registrar, for which the delivery receipt was signed for by Oliveira Tiago on August 20, 2018.
Respondent did not submit a Response to the Complaint by the deadline of September 6, 2018, as required by the Rules, Paragraph 5. Accordingly, on September 7, 2018, the Center notified Respondent that Respondent had failed to comply with the deadline and that a single-member Administrative Panel would be constituted, as requested by Complainant. On September 20, 2018, the Center notified the parties that it had appointed the undersigned panelist, Grant L. Kim, to decide this case.
Complainant Cabinets to Go is a Florida corporation that uses its website at “www.cabinetstogo.com” to sell cabinets, kitchen and bathroom floorings, countertops, and accessories. The WhoIs record indicates that the domain name, <cabinetstogo.com>, was registered in 2005. Complainant owns United States Trademark Registration Number 5,007,979 (the “Mark”), registered on July 26, 2016, which covers the mark CABINETS TO GO. According to Complainant’s website, Cabinets to Go was established in Florida and has sold its products and services since 2008. The website also states that Cabinets to Go has since grown to over 60 stores nationwide, including Orlando and six other cities in Florida, with a 400,000 square foot distribution center.
Respondent registered the domain name <orlandocabinetstogo.com> with the Registrar on November 16, 2017. Respondent has set up a webpage at “www.orlandocabinetstogo.com” that sells competing kitchen cabinets and remodeling services.
Complainant asserts that it used its CABINETS TO GO trademark in commerce since approximately August 2009. Complainant contends that it is entitled to a transfer of the Domain Name because Respondent’s actions satisfy the requirements of paragraph 4(a) of the Policy. Complainant contends that the Domain Name is identical or confusingly similar to Complainant’s Mark, that Respondent has no rights or legitimate interests in the Domain Name, and that Respondent registered and used the Domain Name in bad faith.
Respondent did not reply to Complainant’s allegations. Notwithstanding Respondent’s lack of a response, the Panel has reviewed the full record to determine whether Complainant has met the standard for transfer of the Domain Name under paragraph 4(a) of the Policy.
According to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement. The Domain Name is registered with GoDaddy.com, which has confirmed that the language of the registration agreement is English.
According to paragraph 4(a) of the Policy, a domain name may be cancelled or transferred to Complainant where the three elements below are satisfied. The burden of proof is on Complainant.
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
To satisfy this element, the Panel must find that (1) Complainant has demonstrated its rights in the CABINETS TO GO mark; and (2) the Domain Name is identical or confusingly similar to Complainant’s mark.
With respect to the first element, the Panel finds that Complainant’s domestic trademark registration is sufficient to show Complainant’s rights to the Mark. See, e.g.Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503 (registered U.S. trademark is adequate to demonstrate Complainant’s rights); Facebook, Inc. v. Tstacy Muniru, WIPO Case No. D2017-1934 (registered trademark provides “a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner”).
With respect to whether the Domain Name is identical or confusingly similar, “the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark.” See, Facebook, Inc. v. Tstacy Muniru, supra. Further, other UDRP panels have held that a domain name that consists of a trademark combined with a geographical term is confusing and does not provide sufficient distinction from the Complainant’s trademark. See, Accor S.A. v. Whois Agent Domain Protection Services, Inc. / Domain Administrator, Matama, WIPO Case No. D2017-2267 (adding geographic identifiers such as “London” and “Manchester” to hotel names such as “Ibis” and “Mercure” did not avoid likelihood of confusion).
In this matter, Complainant’s Mark is incorporated in its entirety with the addition of a geographical term in the Domain Name. The Panel finds that the addition of “Orlando” does not negate any confusion. Accordingly, the Panel finds that Complainant has satisfied the first element in paragraph 4(a) of the Policy.
A complainant must make a prima facie showing that the respondent has no rights to or legitimate interests in the disputed domain name. Once a prime facie showing is established, the burden then shifts to the respondent to present evidence of its rights or legitimate interests. See, VMWare, Inc. v. WhoIs Agent, WhoIs Privacy Protection Service, Inc. / Raymond Morgan, WIPO Case No. D2016-1629.
According to the Complaint, Complainant never licensed or authorized Respondent to use the CABINETS TO GO Mark. Complainant registered its Mark in 2016 and has operated its business since 2008. Respondent, on the other hand, registered the Domain Name in 2017 and there is no evidence that Respondent was using the website or selling its products before Complainant registered its Mark in 2016. Further, the Domain Name is registered under an individual name and not Respondent’s business name.
Accordingly, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights to or legitimate interests in the disputed domain name, which shifts the burden to Respondent to present contrary evidence. Respondent has failed to present any evidence, so Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances that may show bad faith, including registrations made “to attract Internet users intentionally and for commercial gain, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location, or an offered product or service.” Thus, UDRP panels have found that using a confusingly similar domain name to divert consumers looking for the complainant’s website to a website that sells similar products or service is strong evidence of bad faith. See, Mothercare UK Limited v. Reza Arabi, WIPO Case No. D2017-0022 (panel found bad faith where respondent used a domain name incorporating complainant’s mark plus a geographical term and sold similar baby care products as complainant); American Internet Holdings L.L.C. v. William Vaughan and River Cruise Investments, Ltd., WIPO Case No. D2008-1031 (finding bad faith where the disputed domain name was confusingly similar to complainant’s mark and connected users with links to complainant’s competitors who sold similar ink and printer products).
In this matter, Respondent has set up a website that incorporates Complainant’s Mark in its entirety, and simply adds “Orlando” in front of the Mark. Additionally, Respondent is using the Domain Name for the commercial purpose of selling products and services that compete directly with those of Complainant. Given that Complainant had been selling its products for many years before Respondent registered the Domain Name in 2017, it seems highly likely that Respondent registered and is using the Domain Name for the bad faith purpose of diverting consumers who were looking for Complainant’s website to Respondent’s competing website instead. Indeed, if a consumer conducts a Google search for “Cabinets to Go Orlando” in an attempt to find a Cabinets to Go store in Orlando, the Domain Name <orlandocabinetstogo.com> is listed as one of the first several results.
Respondent registered the Domain Name in 2017 while Complainant asserts that it had been using its CABINETS TO GO Mark since at least as early as 2009. While Complainant did not submit specific evidence of this fact, it is supported by Complainant’s website “www.cabinetstogo.com,” which states that Complainant has offered its kitchen cabinet and related products and services since 2008 and has expanded to more than 60 stores across the United States. Thus, when Respondent registered the Domain Name many years later in 2017, Respondent should have been aware of Complainant’s Mark and website. This is particularly so since Respondent is based in Florida, where Complainant started its business, and the Domain Name includes “Orlando,” which is the location of one of Complainant’s stores. The use of the term “Orlando” in the Domain Name also serves to further the likelihood of confusion with Complainant’s mark, as Complainant operates a store in Orlando.
Further, despite being put on notice, Respondent continues to promote directly competing products and services through the Domain Name. In light of the foregoing, the Panel finds that the evidence supports a finding that Respondent has registered and is using the Domain Name in bad faith. Thus, Complainant has satisfied the third element in paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders the Domain Name <orlandocabinetstogo.com> to be transferred to Complainant.
Grant L. Kim
Dated: October 4, 2018
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