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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Steelcase Development Corporation v. Manila Industries, Inc.

Case No. D2006-1378

 

1. The Parties

The Complainant is Steelcase Development Corporation, Caledonia, Michigan, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.

The Respondent is Manila Industries, Inc., Santa Ana, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <steelcaseinc.com> is registered with Compana L.L.C.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on 26, 2006. On October 31, 2006, the Center transmitted by email to Compana L.L.C. a request for registrar verification in connection with the domain name at issue. Follow-up reminder requests were sent to Compana L.L.C. on November 7 and 9, 2006. On November 9, 2006, Compana L.L.C. transmitted by email to the Center its partial verification response confirming that the Respondent is listed as the registrant. Further reminders were sent to Compana L.L.C. on November 10, 2006, requesting the contact details for the administrative, billing, and technical contact. A further partial response from Compana L.L.C. was received on November 11, 2006, identifying the registration agreement. Additional follow-up requests seeking to confirm that the domain name would remain in registrar lock and asking whether the registrant had submitted to the jurisdiction of the courts where Compana L.L.C. maintains its principal office were sent on November 20, 28, 29 and 30, 2006, without further response from Compana L.L.C. On November 29, 2006, the Center informed Compana L.L.C. that it would proceed on the assuption that the domain name would remain locked during the pending administrative proceeding and that the domain name registrant had through its registration agreement submitted to the jurisdiction of the courts located where the registrar has its principal office to adjudicate disputes concerning or arising from the use of 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2006. Respondent raised questions concerning the Complaint and Registrar response but did not submit any response itself. Accordingly, the Center notified Respondent of its default on December 27, 2006.

The Center appointed David, W. Quinto as the sole panelist in this matter on January 16, 2007. 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 Steelcase Development Corporation has manufactured and sold office furniture, accessories and related goods and services since 1912. Beginning in 1920, Complainant has continuously sold office furniture, accessories and related goods and services throughout the United States of America using the STEELCASE mark. Beginning in 1950, Complainant obtained U.S. registrations for its STEELCASE mark in various classes and for various products.

Complainant owns 14 valid and subsisting U.S. federal registrations for marks incorporating STEELCASE and all but one of the registrations have now become incontestable. Complainant has also registered its STEELCASE mark in at least eight other countries and Puerto Rico. Complainant has spent millions of dollars to advertise and promote its goods and services under the STEELCASE name and mark and has sold billions of dollars worth of office furniture, accessories and related goods and services under that name and mark. To sell its goods and services, Complainant utilizes, among other things, a website located at “www.steelcase.com”. Complainant is a subsidiary of Steelcase Inc.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that its parent company, Steelcase Inc., has operated a website at “www.steelcase.com” since at least as early as February 1995, 10 years before Respondent registered its domain name in 2005. Complainant contends that Respondent’s domain name, <steelcaseinc.com>, is identical to Complainant’s parent company’s corporate name and is confusingly similar to Complainant’s STEELCASE mark. Complainant further avers that Respondent is not commonly known by the <steelcaseinc.com> domain name and has acquired no trademark or service mark rights in that name. Complainant further alleges that Respondent had constructive notice of Complainant’s trademark rights by virtue of its long ownership of STEELCASE mark registrations in the United States of America, Respondent’s country of residence.

Complainant further avers that Respondent has “probable actual knowledge” of Complainant’s rights as reflected in the fact that Respondent has used the contested domain name to host a web page containing links to various commercial websites offering office furniture and related goods, including links to Websites offering the products of Complainant’s competitors. Further, Complainant points out that Respondent has frequently engaged in acts of cyberpiracy. See, e.g., Cap Gemini v. Manila Industries Inc., WIPO Case No. D2006-0027 (May 16, 2006) (ordering the transfer of <capgenmi.com> to the complainant); Group Kaitu, LLC, DarkSide Productions, Inc. v. Group Kaitu LLC aka Manila Industries, Inc., WIPO Case No. D2005-1087 (January 20, 2006) (finding that Respondent had engaged in “opportunistic bad faith” by registering various domain names for the purpose of capitalizing on the trademark or service mark value inherent in those names); Valpak Direct Marketing Systems, Inc. v. Manila Industries, Inc. WIPO Case No. D2006-0714 (August 17, 2006) (ordering the transfer of <vallpak.com> to the complainant); KPMG International v. Manila Industries, Inc., WIPO Case No. D2006-0597 (July 13, 2006) (ordering the transfer of four domain names containing the “KPMG” letter string to the complainant); Hummert International Inc. v. Manila Industries, Inc., WIPO Case No. D2006-0777 (August 18, 2006) (ordering the transfer of <hummerts.com> to the complainant); Pioneer Hi-Bred International, Inc. v. Manila Industries, Inc., No. FA0503000444468 (NAF May 7, 2006) (ordering the transfer of <pioneerhybrid.com> to the complainant); Eastman Chemical Co. v. Manila Industries, Inc., No. FA0504000450806 (NAF May 6, 2005) (ordering the transfer of <eastmanchemicals.com> to the complainant); Commemorative Brands, Inc. v. Manila Industries, Inc., No. 709096 (NAF July 5, 2006) (ordering the transfer of two domain names to the complainant); Tahoe Joe’s, Inc. v. Manila Industries, Inc., No. 721976 (NAF July 14, 2006) (ordering the transfer of <tahoejoessteakhouse.com> to the complainant); and River Valley Credit Union, Inc. v. Manila Industries, Inc. No. 772866 (NAF September 25, 2006) (ordering the transfer of <myrivervalleycu.com> to the complainant).

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a) of the Policy, a complainant must show that the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Here, it is undisputed that Complainant has rights in the STEELCASE mark by virtue of its numerous U.S. and foreign registrations and by virtue of its continuous use of that mark in commerce for over 86 years. Further, Respondent’s <steelcaseinc.com> domain name is confusingly similar to the STEELCASE mark in that only the common corporate identifier “inc.” has been added to it. See Pfizer Inc. v. Asia Ventures, Inc. WIPO Case No. D2005-0256 (May 6, 2005) (holding that <pfizerinc.com> was confusingly similar to the complainant’s PFIZER mark); Star Systems, Inc. v. Tek-Werks Inc., WIPO Case No. D2006-0181 (March 23, 2006) (holding that <starsystemsinc.com> was confusingly similar to the complainant’s STAR SYSTEMS mark). Accordingly, Complainant has satisfied the first element.

B. Rights or Legitimate Interests

A complainant must also demonstrate that respondent has no rights or legitimate interests in respect of the domain name. Pursuant to paragraph 4(c) of the Policy, respondent may demonstrate its rights or legitimate interests by showing that it (i) used, or made demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services before receiving notice of the dispute; (ii) has been commonly known by the domain name; or (iii) has made a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to divert customers, or to tarnish the market issue.

Here, Respondent has not used the domain name in connection with a bona fide offering of goods or services. Instead, it has used the domain name to host a web page containing links to various commercial sites, including links to sites offering products in competition with Complainant’s products. See Nikon Corp. v. Technilab, Inc., WIPO Case No. D2000-1774 (February 26, 2001) (holding that the use of the complainant’s mark to sell the complainant’s products and those of its competitors was “an improper use of Complainant’s mark to attract Internet users to Respondent’s site for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the site”).

Further, there are no facts in the record to controvert Complainant’s assertion that Respondent has not been commonly known by the domain name. See Gallup v. Amish Country Store, No. FA0012000096209 (NAF January 23, 2001) (the respondent did not have rights in domain name incorporating another’s mark because the respondent was not known by that mark).

Finally, Respondent has not made a legitimate noncommercial or fair use of the domain name without intent for commercial gain. To the contrary, Respondent’s site is clearly commercial and Respondent is clearly relying on the strength of Complainant’s mark to attract visitors to its website. Accordingly, Complainant has established Respondent’s absence of rights or legitimate interests in respect of the domain name. See Nat’l Ass’n of Professional Baseball Leagues v. Zuccarini, WIPO Case No. D2002-1011 (January 21, 2003).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates a number of circumstances which, if proved, establish badfaith registration and badfaith use. Paragraph 4(b)(ii) provides that one such circumstance is when respondent has registered the domain name to prevent the owner of the trademark from reflecting the mark and a corresponding domain name, provided that respondent has engaged in a pattern of such conduct. Here, the disputed domain name is virtually identical to Complainant’s mark and its parent company’s name and a pattern has been clearly demonstrated, as set forth in section 5(A) of this decision.

Further, Paragraph 4(b)(iv) of the Policy provides that bad-faith registration and bad-faith use may be found when by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

Under Paragraph 4(b)(iv), badfaith use cannot be shown solely by respondent’s intent at the moment of registration. Creo Products, Inc. v. Website in Development, WIPO Case No. D2000-0160 (May 1, 2000). A showing of badfaith registration and badfaith use is required. Bad-faith registration can be shown by the fact that “the respondent was (or was likely to have been) aware of the existence of the complainant or, more particularly, the complainant’s rights in respect of the trademark in question” when Respondent registered its domain name. See Rusconi Editore S.p.A. v. Bestinfo, WIPO Case No. D2001-0656 (July 5, 2001).

Here, the Panel finds that Respondent was on notice of Complainant’s rights by virtue of Complainant’s numerous federal registrations. See Cellular One v. Paul Brien, WIPO Case No. D2000-0028 (March 10, 2000) (“as a matter of United States law, respondent had prior constructive or actual knowledge of EMC’s trademark” because the mark was registered). Further, that Respondent has chosen to use the domain name to link it to sites offering products for sale in competition with Complainant makes it more likely than not that Respondent had actual knowledge of Complainant’s mark and business. Based on the foregoing Complainant has demonstrated that Respondent has registered and is using the disputed domain name in bad faith. Accordingly, Complainant has met its burden.

 

7. Decision

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 <steelcaseinc.com> be transferred to the Complainant.

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David, W. Quinto
Sole Panelist

Dated: January 30, 2007