Perma Chink Systems, Inc. v. American Log Homes
Claim Number: FA0708001067428
Complainant is Perma Chink Systems, Inc (“Complainant”), represented by Terry
Hofrichter, 17635 NE 67th Court, Redmond, WA 98052. Respondent is American Log Homes (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <permachink.org> and <perma-chink.net>, registered with Godaddy.com, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On August 22, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <permachink.org> and <perma-chink.net> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 September 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 26, 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@permachink.org and postmaster@perma-chink.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <permachink.org> and <perma-chink.net> domain names are identical to Complainant’s PERMA-CHINK mark.
2. Respondent does not have any rights or legitimate interests in the <permachink.org> and <perma-chink.net> domain names.
3. Respondent registered and used the <permachink.org> and <perma-chink.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Perma Chink Systems, Inc., holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the PERMA-CHINK mark (Reg. No. 1,663,436 issued November 5, 1991), in connection with Complainant’s manufacturing and sale of log home sealant.
Respondent registered the <permachink.org> and <perma-chink.net>
domain names on
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.
Complainant asserts rights in the PERMA-CHINK mark through
registration with the USPTO. The Panel
finds that Complainant’s timely registration and subsequent extensive use of
the mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum
The <permachink.org> and <perma-chink.net>
domain names that Respondent registered contain Complainant’s mark
in its entirety and add the generic top-level domains (“gTLD”) “.org” and
“.net.” Additionally, the <permachink.org> domain name omits the
hyphen between the terms “perma” and “chink.”
The Panel finds that such alterations to Complainant’s registered
mark fail to sufficiently distinguish the disputed domain names from the mark
pursuant to Policy ¶ 4(a)(i). See Chernow
Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding
“that the use or absence of punctuation marks, such as hyphens, does not alter
the fact that a name is identical to a mark"); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330
(Nat. Arb. Forum
The Panel finds that Complainant
satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this
proceeding that it has rights to and legitimate interests in the mark contained
in misspelled form in the disputed domain name.
Complainant asserts that Respondent has no such rights to or legitimate
interests in the <permachink.org> and <perma-chink.net>
domain names. Once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to show that it does possess
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). In this case, Complainant has made out a prima facie case under Policy ¶
4(a)(ii). See Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
The <permachink.org> and <perma-chink.net> domain names resolve to a website that offers Internet users links to third-party, commercial websites, some of which offer goods and services that compete directly with Complainant’s business. The Panel finds that such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate, noncommercial use pursuant to Policy ¶ 4(c)(iii). See Compaq Info. Techs. Group v Jones, FA 99091 (Nat. Arb. Forum Oct. 4, 2001) (finding that the respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to a commercial website as part of that website’s affiliate program, where the resultant website contained banner ads as well as various links to offers for free merchandise, including merchandise from the complainant's competitor); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant also asserts that Respondent is not commonly
known by the <permachink.org> and <perma-chink.net>
domain names. The Panel
finds, absent contrary evidence, that Respondent is not commonly known by the
disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum
The Panel finds that Complainant satisfied
Policy ¶ 4(a)(ii).
Complainant alleges that Respondent acted in bad faith by registering and using domain names that are identical to Complainant’s mark. Respondent’s disputed domain names resolve to a website that offers links to Complainant’s competitors’ websites. The Panel finds that such use amounts to a disruption of Complainant’s business, which supports a finding of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See 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); see also 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)).
Respondent’s <permachink.org> and <perma-chink.net>
domain names resolve to websites featuring third-party links to
websites of Complainant’s competitors.
Presumably, Respondent receives click-through revenue from its
diversionary use of the disputed domain names.
The Panel finds that Respondent’s use amounts to an attraction for
commercial gain, which evinces registration and use in bad faith pursuant to
Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000)
(finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the
complainant’s mark on its website and offering identical services as those
offered by the complainant); see also Associated Newspapers Ltd. v.
Domain Manager, FA 201976 (Nat. Arb. Forum
Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain
name provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”).
The Panel finds that Complainant satisfied 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 <permachink.org> and <perma-chink.net> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 16, 2007
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