Trex Company, Inc. v. santiago valencia
Claim Number: FA2110001968511
Complainant is Trex Company, Inc. (“Complainant”), represented by Lois B. Duquette of McNees Wallace & Nurick LLC, Pennsylvania, USA. Respondent is santiago valencia (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trexdeckcontractors.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 11, 2021; the Forum received payment on October 11, 2021.
On October 12, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <trexdeckcontractors.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 October 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 2021 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@trexdeckcontractors.com. Also on October 14, 2021, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant’s business focus is on composite lumber consisting of encapsulated wood fiber in a polymer matrix. TREX composite material is used in a variety of products namely decking, gates, exterior railing and fencing products, and trim moldings as well as numerous other related goods and services.
Complainant has rights in the TREX mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <trexdeckcontractors.com> domain name is confusingly similar to Complainant’s TREX mark. Respondent incorporates the mark in its entirety and adds the terms “deck” and “contractors” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <trexdeckcontractors.com> domain name as Respondent is not commonly known by the at-issue domain name nor did Complainant authorize Respondent to use the TREX mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent redirects internet users to a third-party website that offers services competing with Complainant’s offering.
Respondent registered and used the <trexdeckcontractors.com> domain name in bad faith as Respondent redirects internet users away from Complainant to a competitor. Respondent has been subject to a prior UDRP decision thereby showing a pattern of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the TREX trademark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the TREX trademark.
Respondent uses the <trexdeckcontractors.com> domain name redirects to a website offering services that compete with Complainant’s services.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar or identical to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its TREX trademark. Complainant’s USPTO registration is sufficient to demonstrate Complainant’s rights in a mark pursuant to Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <trexdeckcontractors.com> domain name contains Complainant’s TREX trademark followed by the terms “deck” and “contractors” with all followed by a domain name-necessary top-level name, here “.com”. The slight differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <trexdeckcontractors.com> domain name from Complainant’s TREX trademark under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <trexdeckcontractors.com> domain name is confusingly similar or identical to Complainant’s mark. See PADI Americas, Inc. v. MPM Administration, FA 1783415 (Forum May 22, 2018) (finding the <padivacations.com> domain name to be confusingly similar to the complainant’s PADI mark: “the inclusion of the suggestive term “vacations” in the at-issue domain name only adds to any confusion between the domain name and Complainant’s trademark since the term suggests Complainant’s travel related services.”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Navistar Int'l Corp. v. Rahmany, FA 150500 (Forum June 8, 2015) (finding that the respondent was not commonly known by a disputed domain name where a complainant had not authorized that respondent to incorporate its mark in a domain name).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Santiago Valencia” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <trexdeckcontractors.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <trexdeckcontractors.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent uses the confusingly similar <trexdeckcontractors.com> domain name to redirect internet traffic to a website that offers services that compete with those services offered by Complainant. On browsing to <trexdeckcontractors.com> internet users are delivered to the website of a general contractor unaffiliated with Complainant that offers outdoor living remodels, decks, fences, retaining walls and other services and products. The contractor utilizes TREX branded composite material in its product offerings as well as alternative materials such as wood. Respondent’s use of the confusingly similar domain name to redirect internet traffic to Complainant’s competitor indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”), see also MoneyGram International, Inc. v. Domain Admin / Whois Privacy Corp., FA1698585 (Forum Nov. 28, 2016) (“Where a domain name redirects Internet users to a rotating series of webpages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <trexdeckcontractors.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present and compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent uses its confusingly similar domain name to misdirect internet users seeking Complainant to the website of a competing third party. Using the confusingly similar domain name to inappropriately exploit Complainant’s trademark and thereby enhance internet traffic to one of Complainant’s competitors demonstrates Respondent’s bad faith registration and use of the at-issue domain name under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (finding that the respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also, Amazon.com, Inc. v. Shafir, FA 196119 (Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
Furthermore, Respondent has recently suffered a prior adverse UDRP decision involving Complainant’s TREX trademark. See Trex Company, Inc. v. santiago Valencia, FA2107001954123 (Forum Aug. 4, 2021). Respondent’s pattern of domain name abuse suggests, per Policy ¶ 4(b)(ii), that Respondent registered and uses <trexdeckcontractors.com> in bad faith regarding the instant case. See The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administratory / Fundacion Private Whois / Domain Admin / Whois Privacy Corp, FA1408001576648 (Forum Jan. 12, 2015) (“The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Policy ¶ 4(b)(ii). Therefore the Panel finds bad faith under the provision.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trexdeckcontractors.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 9, 2021
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