UDRP: Loss for the Respondent.
The domain name Toptile.com was registered in 2003; fifteen years later, it’s lost via the UDRP process at the WIPO.
The Complainants are Halstead C&W Corporation of Norwalk, Connecticut, and Tower IPCO Company Limited of Dublin, Ireland.
The TOPTILE mark was registered in multiple classes between 2015 and 2018, and yet the 2003 domain registration was challenged based on the Complainants’ allegations that it was first used in a 1992 product line, that was eventually phased out.
As far as we can tell from the UDRP decision’s particulars, these allegations could have been disputed by the Respondent, but unfortunately for them, they did not respond. The domain was listed for sale at Sedo with a $2,200 dollar price tag.
John Swinson, sole panelist, pointed out the appearance of related PPC ads on the domain, while accepting the Complainant’s position that the Respondent is not the original registrant of the domain.
Final decision: transfer the domain Toptile.com to the Complainant; full details follow.
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ADMINISTRATIVE PANEL DECISION
Halstead C&W Corporation, Tower IPCO Company Limited v. Kevin Sarrafi
Case No. D2018-09041. The Parties
The Complainant is Halstead C&W Corporation of Norwalk, Connecticut, United States of America (“United States”) and Tower IPCO Company Limited of Dublin, Ireland, represented by Troutman Sanders, LLP, United States.
The Respondent is Kevin Sarrafi of Calgary, Alberta, Canada.
2. The Domain Name and Registrar
The disputed domain name <toptile.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2018. On April 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 25, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a request for clarification by the Center, the Complainant submitted an amended Complaint on May 1, 2018.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2018.
The Center appointed John Swinson as the sole panelist in this matter on June 8, 2018. 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 Complainants are Halstead C&W Corporation of the United States and Tower IPCO Company of Ireland. According to the Complaint, the Complainants are “sister companies” within the Halstead International Group of Companies, which is a family of companies offering for sale a variety of building materials. Of particular relevance to this Complaint is the Complainants’ range of ceiling material products offered under the brand TOPTILE.
According to the Complaint, an entity related to the Complainants first launched TOPTILE branded products in 1992. That product line was phased out over the years, but the Complainants recommenced sale of TOPTILE products and use of the TOPTILE brand as early as 2012 in Canada and the United States.
The Complainants own the following registered trade marks for TOPTILE:
– the first Complainant, Halstead C&W Corporation, owns United States registered trade mark number 5377597 for TOPTILE (word mark), filed on April 7, 2016 and registered on January 16, 2018; and
– the second Complainant, Tower IPCO Company Limited, owns Canadian registered trade mark number TMA911014 for TOPTILE (stylized), filed on April 18, 2013 and registered on August 12, 2015,
(the “Trade Mark”).
The Respondent is Kevin Sarrafi, an individual of Canada. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Disputed Domain Name was registered on June 12, 2003. The Complainants submit that the Respondent acquired the Disputed Domain Name between January 15, 2015 and April 6, 2015. In support of this, the Complainants have provided historical WhoIs records showing that the registrant of the Disputed Domain Name changed from a privacy service to the Respondent, as well as a change in registrar around this time.
The website at the Disputed Domain Name features pay-per-click (“PPC”) links relating to tiling and other building materials, and renovations.
5. Parties’ Contentions
A. Complainants
The Complainants make the following contentions.
Identical or Confusingly Similar
The Trade Mark is a coined, registered brand with no dictionary definition. The Disputed Domain Name is confusingly similar to the Trade Mark as the Disputed Domain Name incorporates the Trade Mark in its entirety. The Trade Mark is the dominant and distinctive element of the Disputed Domain Name.
Rights or Legitimate Interests
The Respondent acquired the Disputed Domain Name years after the Complainants registered and began using the Trade Mark.
The Respondent is not a licensee of the Complainants. The Complainants have not otherwise authorized the Respondent to use the Trade Mark for any purpose. The Respondent is not commonly known by the Disputed Domain Name or the Trade Mark. As such, the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Respondent does not use, and has not made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name currently resolves to a parking page containing PPC links relating to building materials which divert Internet traffic to websites which compete with those of the Complainants.
There is no legitimate basis for the Respondent’s registration or use of the Disputed Domain Name which is identical to the Trade Mark.
Registered and Used in Bad Faith
The Respondent’s registration of the Disputed Domain Name evidences bad faith. The Respondent knowingly registered the Disputed Domain Name, which is identical to the Trade Mark.
The Respondent is using the Disputed Domain Name to redirect Internet users to PPC links from which the Respondent presumably receives click-through revenue. This constitutes bad faith registration and use of the Disputed Domain Name under paragraph 4(b)(iv) of the Policy.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainants even though the Respondent has not filed a Response.
The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainants (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.
A. Multiple Complainants
The Complaint is filed jointly by Halstead C&W Corporation and Tower IPCO Company. Previous panels have permitted a single complaint where the complainants have a “common grievance” against the respondent, as long as it is equitable and procedurally efficient to do so (Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc. / Official Tickets Ltd, WIPO Case No. D2009-0331). The Panel accepts that Halstead C&W Corporation and Tower IPCO Company have common legal interests in the Trade Mark, as they each own Trade Mark registrations in different jurisdictions. As such, the Panel permits both parties to be joint Complainants in this dispute.
If successful, the Complainants have requested a transfer of the Disputed Domain Name. However, this bears the question: to which of the Complainants should the Disputed Domain Name be transferred?
Previous panels have stated that, in a case brought by multiple complainants where only one of the complainants has a legal entitlement to the trade mark on which the complaint is based, the panel should order that the relevant domain name is transferred to that complainant (see, e.g., The Avenue, Inc. and United Retail Incorporated v. Chris Guirguis doing business as Lighthouse Web Design and/or Cannibal, and Sam Guirguis, WIPO Case No. D2000-0013). But what if more than one complainant has a legal entitlement to the trade mark on which the complaint is based? Only one complainant can receive the transfer of the relevant domain name.
As stated by the panel in “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Posers/Philip Cox, WIPO Case No. D2011-1142:
“It seems to this Panel that the answer to this question is to be decided by the complainants, not the panel. Given that the complainants have chosen to bring a joint action under the Policy, it seems appropriate that the complainants should be left to determine which of them is to be listed as the registrant in the event that the joint action is successful. Where the complainants have specified in the complaint to which of them transfer of the disputed domain name is requested, the panel should make the order accordingly (an approach that was adopted in, inter alia, Westfield Corporation, Inc and Westfield Limited v. Graeme Michael Hobbs (Dynamic Marketing Consultants), WIPO Case No. D2000-0227). Where the complainants have not specified this in the complaint, it should generally be left to them to inform the registrar of their wishes (this being the approach adopted in, inter alia, Zee Telefilms Ltd. and Wimpole Holdings Ltd. (presently known as Zee Multimedia Worldwide Ltd.) v. Rahul Dholakia and Oznic.com, WIPO Case No. D2001-0624; and Asprey & Garrard Limited and Garrard Holdings Limited v. www.24carat.co.uk/domainnames.html, WIPO Case No. D2001-1501).”
In this case, both Halstead C&W Corporation and Tower IPCO Company have a legal entitlement to the Trade Mark on which this Complaint is based. Unhelpfully, the Complaint does not specify to which of the Complainants the Disputed Domain Name should be transferred if the Complaint is successful. As such, if the Complaint is successful, the Panel will order that the Disputed Domain Name is to be transferred to one of the Complainants, and the Complainants should advise the Registrar which of them will receive the transfer.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainants must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name is identical to the Trade Mark. The Disputed Domain Name incorporates the Trade Mark in its entirety, with no additional terms.
The Complainants succeed on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainants must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainants are required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainants have made out a prima facie case. This finding is based on the following:
– The Panel accepts the Complainants’ submission that the Respondent is not a licensee of the Complainants, and is not otherwise authorized by the Complainants to use the Disputed Domain Name.
– There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or common law trade mark rights in relation to the Disputed Domain Name.
– The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name features a PPC link page. These links relate to tiling and building materials, and direct Internet users to other businesses which operate in the Complainants’ industry. In the circumstances, this is not a bona fide use of the Disputed Domain Name under the Policy.
– The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. As submitted by the Complainants, it is likely that the Respondent is profiting from the PPC advertising on the website at the Disputed Domain Name.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainants has not been rebutted.
In light of the above, the Complainants succeed on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainants must establish that the Respondent has registered and is using the Disputed Domain Name in bad faith.
While the creation date of the Disputed Domain Name is June 12, 2003, the Panel accepts the Complainants’ submission that the Respondent acquired the Disputed Domain Name at some point between January 15, 2015 and April 6, 2015. This is approximately 3 years after the Complainants’ claimed first use of the Trade Mark and 2 years after the Trade Mark registration was filed in Canada. Given that the Disputed Domain Name is identical to the Trade Mark, the Panel considers it probable that the Respondent had knowledge of both the Complainants and the Trade Mark at the time he acquired the Disputed Domain Name. The Panel can reasonably infer that the Respondent sought to make use of the reputation of the Complainants and registered the Disputed Domain Name in bad faith.
This conclusion is reinforced by the content of the website at the Disputed Domain Name, being PPC links relating to the industry in which the Complainants operate. The Panel considers that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on his website. This is an indicator of bad faith under paragraph 4(b)(iv) of the Policy.
In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainants have succeeded on the third element of the Policy.
7. Decision
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, <toptile.com>, be transferred to one of the Complainants, the choice of which to be submitted by the Complainants to the Registrar.
John Swinson
Sole Panelist
Date: June 20, 2018
