JELD-WEN, inc. v. Domain Drop S.A.
Claim Number: FA0707001043130
Complainant is JELD-WEN, inc. (“Complainant”), represented by John
C. McElwaine, of Nelson Mullins Riley &
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <jeld-wen.org>, registered with Belgiumdomains, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 23, 2007.
On July 21, 2007, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <jeld-wen.org> domain name is registered with Belgiumdomains, LLC and that Respondent is the current registrant of the name. Belgiumdomains, LLC has verified that Respondent is bound by the Belgiumdomains, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 14, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@jeld-wen.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 17, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <jeld-wen.org> domain name is identical to Complainant’s JELD-WEN mark.
2. Respondent does not have any rights or legitimate interests in the <jeld-wen.org> domain name.
3. Respondent registered and used the <jeld-wen.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, JELD-WEN, inc., is a
well known manufacturer of windows, doors and other home products. Complainant has retail outlets located
throughout the
Respondent registered the <jeld-wen.org> domain name on August 1, 2006. Respondent’s disputed domain name resolves to a website that features hyperlinks to various third-party websites, most of which are in direct competition with Complainant, as well as a search engine. Additionally, Respondent has been the respondent in several other UDRP decisions in which the disputed domain names were transferred from Respondent to the respective complainants in those proceedings. See Implus Footcare LLC v. Domain Drop S.A., FA 741848 (Nat. Arb. Forum Aug. 17, 2006); see also LTD Commodities, LLC v. Domain Drop S.A., FA 809759 (Nat. Arb. Forum Nov. 13, 2006); see also Questar Corporation v. Domain Drop S.A., FA 819503 (Nat. Arb. Forum Nov. 20, 2006).
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 Complainant’s trademark registration with the USPTO sufficiently establishes Complainant’s rights in the JELD-WEN mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The Panel finds that Respondent’s <jeld-wen.org> domain name is identical to Complainant’s JELD-WEN mark under Policy ¶ 4(a)(i) as it contains Complainant’s exact mark and merely adds the generic top-level domain “.org.” The addition of the top-level domain does nothing to render the disputed domain unique under Policy ¶ 4(a)(i), as a top-level domain is a required part of all domain names. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to the complainant’s PHILIPS mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first establish that Respondent lacks rights and legitimate interests with respect to the <jeld-wen.org> domain name. Once Complainant makes a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). In the case at bar, the Panel finds that a prima facie case has been established.
Respondent is using the <jeld-wen.org> domain name to display hyperlinks to a variety of third-party websites, most of which are in direct competition with Complainant. The Panel presumes that Respondent is using the disputed domain name to earn click-through fees, and thus finds that Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
Furthermore, Respondent’s WHOIS information does not indicate, and there is nothing in the record that suggests that Respondent is commonly known by the <jeld-wen.org> domain name. Also, Complainant asserts that Respondent is not authorized or licensed to used Complainant’s JELD-WEN mark in any way. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Based on Complainant’s unrefuted allegations, the Panel finds that Respondent receives click-through fees for the hyperlinks displayed on the website that resolves from the <jeld-wen.org> domain name. The Panel also finds that the disputed domain name is capable of creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and correlating website. To commercially benefit from the use of such tactics constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Furthermore, the Panel finds that Respondent is using the <jeld-wen.org> domain name to attract Internet users to a website that features third-party hyperlinks, most of which are in direct competition with Complainant, as well as a search engine. This use qualifies as a disruption of Complainant’s business and constitutes a bad faith registration under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Finally, Respondent has also been the respondent in several other UDRP proceedings in which the disputed domain names were transferred from Respondent to the respective complainants in those proceedings. See Implus Footcare LLC v. Domain Drop S.A., FA 741848 (Nat. Arb. Forum Aug. 17, 2006); see also LTD Commodities, LLC v. Domain Drop S.A., FA 809759 (Nat. Arb. Forum Nov. 13, 2006); see also Questar Corporation v. Domain Drop S.A., FA 819503 (Nat. Arb. Forum Nov. 20, 2006). Thus, the Panel finds bad faith registration and use under Policy ¶ 4(b)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the respondent’s pattern of registering domain names which had inadvertently been permitted to lapse satisfies the provisions of Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jeld-wen.org> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 31, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum