JELD-WEN, inc. v. Domain Park Limited
Claim Number: FA0712001116421
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-wenwindows.com>, registered with Moniker Online Services, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On December 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 2008 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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-wenwindows.com> domain name is confusingly similar to Complainant’s JELD-WEN mark.
2. Respondent does not have any rights or legitimate interests in the <jeld-wenwindows.com> domain name.
3. Respondent registered and used the <jeld-wenwindows.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, JELD-WEN, Inc., is a
comprehensive source for wood, vinyl and aluminum windows; wood and molded wood
fiber interior doors; and wood, steel, wood composite and fiberglass exterior
doors. Complainant registered the
JELD-WEN mark with the United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <jeld-wenwindows.com>
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 registered the JELD-WEN mark with the USPTO, and
has therefore established rights to the mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
The <jeld-wenwindows.com> domain name is confusingly similar to Complainant’s JELD-WEN mark because it incorporates both terms of the registered mark and includes the generic term “windows” which has an obvious connection to Complainant’s business. Moreover, the inclusion of the generic top-level domain (“gTLD”) “.com” does not sufficiently distinguish the disputed domain name from Complainant’s mark because all registered domain names are required to have a top-level domain. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s JELD-WEN mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent has neither rights nor
legitimate interests in the disputed domain name. Complainant must first present a prima facie case establishing that
Respondent lacks all rights and legitimate interests in the disputed domain
name. Once Complainant has met the
burden and made a prima facie case
supporting the assertion that Respondent lacks rights and legitimate interests,
the burden shifts to Respondent to show that it does have rights or legitimate
interests in the disputed domain name.
The Panel finds that Complainant has demonstrated that Respondent lacks
rights and legitimate interests, and thus made a prima facie case pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO
The Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name because Respondent failed to answer the Complaint. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Despite Respondent’s failure to respond, the Panel will examine all evidence in the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent has never been
authorized to use the JELD-WEN mark, and that Respondent is not commonly known
by the disputed domain name. In
addition, the WHOIS information does not indicate that Respondent is commonly
known by the disputed domain name.
Therefore, the Panel finds that Respondent is not commonly known by the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Furthermore, Respondent’s use of the disputed domain name to
advertise links to competing websites does not constitute 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 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); see also 24 Hour Fitness USA,
Inc. v. 24HourNames.com-Quality Domains For
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent is using the <jeld-wenwindows.com> domain name for commercial gain by advertising links to competing websites, thus benefiting from the likely confusion between Complainant’s mark and the disputed domain name. Complainant also contends that Respondent is commercially benefiting by receiving “click-through” fees. The disputed domain name is capable of creating confusion as to Complainant’s source, sponsorship, affiliation or endorsement of the competing links advertised on the website that resolves from the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name constitutes evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See 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.’”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel finds that
Respondent’s use of the disputed domain name to advertise links to competing
products also constitutes registration and use in bad faith under Policy ¶ 4(b)(iii). See Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
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-wenwindows.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 17, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum