Marvin Lumber and Cedar Co. / Marvin Lumber and Cedar Co., Inc. / Marvin Lumber and Cedar Co., LLC. d/b/a Marvin Windows and Doors v. Springs Hosting
Claim Number: FA2011001920193
Complainant is Marvin Lumber and Cedar Co. / Marvin Lumber and Cedar Co., Inc. / Marvin Lumber and Cedar Co., LLC. d/b/a Marvin Windows and Doors (“Complainant”), Minnesota, US. Respondent is Springs Hosting (“Respondent”), represented by Cedric Jerome Krzywonski, Colorado, US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marvinwindowdoorparts.com>, registered with eNom, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 10, 2020; the Forum received payment on November 10, 2020.
On November 11, 2020, eNom, LLC confirmed by e-mail to the Forum that the <marvinwindowdoorparts.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@marvinwindowdoorparts.com. Also on November 19, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 30, 2020.
On December 4 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Beatrice Onica Jarka as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
According to the Complaint Exs. C.1 – 3., the Complainant contends that:
- The Complainant runs a window and door manufacturing and distributing business. Complainant claims rights in the MARVIN mark through its registrations with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. 3,849,838, registered Sept. 21, 2010; Reg. 3,849,839, registered Sept. 21, 2010).
- The disputed domain name <marvinwindowdoorparts.com> domain name is confusingly similar to Complainant’s MARVIN mark as it incorporates the mark in its entirety and adds the descriptive words “window”, “door”, and “parts”, along with the “.com” generic top-level domain (“gTLD”).
- The Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by this domain name, nor has the Complainant authorized or licensed Respondent to use its MARVIN mark in the disputed domain name.
- Moreover, the Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to divert internet users to the disputed domain name’s resolving website, where Respondent advertises competitor products and services alongside Complainant’s.
- The Respondent registered and uses the <marvinwindowdoorparts.com> domain name in bad faith as by this registration and use it disrupts Complainant’s business for commercial gain by advertising and selling competing products and services on the disputed domain name’s resolving website. Respondent registered the disputed domain name with the actual knowledge of Complainant’s rights in the MARVIN mark.
B. Respondent
By its timely Response, the Respndent asserts that:
- The Respondent is an elderly, disabled “handyman” trying to help others and make a living with a trade it has practiced for over three decades.
- The Respondent is not knowledgeable as to online affairs. Respondent does not sell Complainant’s windows or doors, but refers many customers to the disputed domain name. Respondent is open to settling the problems outlined in this proceeding simply and fairly.
- The Respondent does not use the <marvinwindowdoorparts.com> domain name in bad faith. Respondent did not register the disputed domain name to sell it, to prevent the owner from using its trademark, nor to disrupt Complainant’s business for commercial gain.
- Respondent purchased the domain name righfully. Complainant had thirty years, since the inception of the internet, to purchase the domain name and did not. Respondent only tried to sell its <huntsports.com> domain name, no other domain names.
- The Respondent argues it has rights and legitimate interests in the disputed domain name, since Respondent services, restroes, and repairs windows and doors.
- The Complainant, by instituting this proceeding, is harassing Respondent by threatening Respondent’s livelihood. Respondent reiterates its willingness to compromise or reach an agreement on the disputed domain name.
- Respondent argues Complainant’s framing of its attempt to sell its <huntsports.com> domain names is incorrect and misleading.
- Respondent concedes that the disputed domain name play into a finding of confusingly similarity, but Respondent sells actual Marvin parts, not any windows or doors.
- Respondent would be open to selling only “Marvin an Integrity” parts and make all necessary changes to the website to eliminate conflicting or confusing aspects of the website.
The Panel may note that disputed domain name was registered on September 3, 2013
The Complainant Marvin Windows and Doors (“Marvin”), has been in the business of manufacturing and distributing high-quality windows and doors since at least 1950, and has been in continuous operation ever since. The Complainant registered the MARVIN mark in the United States on September 21, 2010 and since at least the 1950’s has continuously used the MARVIN mark in connection with its products and services. Without the consent or authorization of the Complainant, the Respondent has registered and used a domain name which incorporates MARVIN mark as its lead-in word - together with the use of the words ‘window,’ ‘door,’ and ‘parts,’ to advertise and sell windows and doors and fenestration related parts and hardware. In addition to purporting to sell parts and hardware for Marvin products the site prominently boasts that it offers parts and hardware from competing brands. The Panel finds that this registration and use of the disputed domain name confusingly similar with the Complainant’s MARVIN mark cannot constitute a bona fide offering of goods and services and had been done in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that the Respondent has rights in the MARVIN mark under Policy ¶ 4(a)(i), rights obtained through the registrations of the said mark with the USPTO. (e.g. Reg. 3,849,838, registered Sept. 21, 2010; Reg. 3,849,839, registered Sept. 21, 2010). See Compl. Exs. C.1 – 3. Registration with the USPTO is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel agrees with the Complainant’s contentions that Respondent’s <marvinwindowdoorparts.com> domain name is confusingly similar with the Complainant’s mark MARVIN as it incorporates Complainant’s mark in its entirety and adds descriptive words along with the “.com” gTLD. Adding descriptive words that relate to a Complainant’s business, along with the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). The disputed domain name incorporates Complainant’s mark in its entirety and adds the descriptive words “window”, “door”, and “parts”, along with the “.com” gTLD.
The Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Therefore, the Panel finds the disputed domain name is confusingly similar to the Complainant’s mark under Policy ¶ 4(a)(i).
The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent is not commonly known by the <marvinwindowdoorparts.com> domain name, nor has Complainant authorized Respondent to use its MARVIN mark in the disputed domain name. Under Policy ¶ 4(c)(ii), evidence showing a materially different registrant name, including relevant WHOIS information, may demonstrate that a respondent is not commonly known by a disputed domain name. See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name.”). Respondent identifies as “Cedric J Krzwonski”, while the WHOIS of record identifies the registrant organization as “Springs Hosting”. See Response; see also Registrar Verification Email. Initially, Complainant sent a cease-and-desist letter to an organization called “Hunt Sport”, directed at an individual name “Cedric Krzywonski”. See Compl. Ex. F.2. Complainant claims Respondent is the same registrant of numerous online domain names, none of which are linked to any businesses linked to the MARVIN mark. See Compl. Exs. H and J. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The Complainant argues that the Respondent does not use the <marvinwindowdoorparts.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Attempting to divert internet users to the disputed domain name’s resolving website, where a respondent advertises and sells competing goods is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). The disputed domain name’s resolving website purports to offer parts and installation services for Complainant’s products, as well as other competing companies and products. See Compl. Ex. B.
One the other side, the Respondent argues it has rights and legitimate interests in the <marvinwindowdoorparts.com> domain name. Under Policy ¶¶ 4(c)(i) or (iii), operating a disputed domain’s resolving website according to the services laid out in the domain name, and providing information relating to a complainant and its services are generally considered bona fide offerings of goods or services, or legitimate noncommercial or fair uses.
On this matter, the Complainant argues that the Respondent’s inclusion of a disclaimer on the <marvinwindowdoorparts.com> domain name is not enough to grant it rights or legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), use of a disclaimer may not mitigate the initial interest confusion and diversion of internet users seeking a complainant’s services to the disputed domain name’s resolving website. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant). Complainant argues that Respondent’s disclaimer on the disputed domain name’s resolving does not mitigate confusion, but attempts to obfuscate Respondent’s relationship with Complainant with trivial information. See Compl. Ex. B.
This Panel agrees with the Complainant’s argumentation and finds that the use of the disputed domain name by the Respondent does not qualify as a ‘bona fide offering of goods and services’ (and thus a legitimate interest in a domain name, as the Respondent acting as a reseller of the Complainant’s products must meet, inter alia, the criteria from Oki Data Americas Inc. v. Asdinc.com, WIPO Case No. D2001-0903 settled UDRP practice, namely: (1) the use of the website to sell only the trademarked goods and (2) the website’s accurate and prominent disclosure of the registrant’s relationship with the trademark holder. It is obvious that none of the criteria are fulfilled by the Respondent.
Therefore, the Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Under this element, the Complainant argues that Respondent registered and uses the <marvinwindowdoorparts.com> domain name in bad faith by disrupting Complainant’s business for commercial gain. Attempting to divert internet users seeking Complainant’s services to the disputed domain name’s resolving website, where Respondent offers either Complainant’s products or services, or counterfeits, alongside competing products and services is generally considered bad faith disruption for commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See Lambros v. Brown, FA 198963 (Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)); Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant). The Panel may recall Complainant’s screenshots of the disputed domain name’s resolving website, which purports to offer Complainant’s products for sale alongside competing products. See Compl. Ex. B.
Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv). Complainant argues that Respondent registered the <marvinwindowdoorparts.com> in bad faith, as it had constructive or actual knowledge of Complainant’s rights in the MARVIN mark at the time of registration. While constructive knowledge is generally insufficient is establishing bad faith under Policy ¶ 4(a)(iii), actual knowledge may be sufficient, and may be demonstrated by Respondent registering a domain name that incorporates a registered, well known mark. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). The Panel may recall Complainant’s registered rights in the MARVIN mark. See Compl. Exs. C.1 – 3. The Panel recalls that the disputed domain name incorporates Complainant’s mark in its entirety. Therefore, the Panel finds Respondent registered the disputed domain name with bad faith actual knowledge under Policy ¶ 4(a)(iii).
Although, the Respondent argues throughout its response that it did not register the disputed domain name in bad faith, but only to merely offer its expertise in repair and installation of Complainant’s parts, among others, this Panel does not find persuasive its argumentation considering the findings of the Panel in this decision under the second element of the Policy.
Therefore, the Panel finds that the Respondent registered and used the disputed domain name with bad faith under Policy ¶ 4(a)(iii),
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marvinwindowdoorparts.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Beatrice Onica Jarka Panelist
Dated: December 16, 2020
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