JELD-WEN, inc. v Wan-Fu China, Ltd.
Claim Number: FA0801001141847
Complainant is JELD-WEN, inc. (“Complainant”), represented by John
C. McElwaine, of Nelson Mullins
Riley & Scarborough, LLP,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <jeldwendoors.com>, registered with Domaindoorman, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 31, 2008.
On February 5, 2008, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <jeldwendoors.com> domain name is registered with Domaindoorman, LLC and that Respondent is the current registrant of the name. Domaindoorman, LLC has verified that Respondent is bound by the Domaindoorman, 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 February 6, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 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 postmaster@jeldwendoors.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 4, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <jeldwendoors.com> domain name is confusingly similar to Complainant’s JELD-WEN mark.
2. Respondent does not have any rights or legitimate interests in the <jeldwendoors.com> domain name.
3. Respondent registered and used the <jeldwendoors.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 markets its products on its websites <jeld-wen.com> and <jeldwen.com>. Complainant registered the JELD-WEN mark with the United States Patent and Trademark Office (“USPTO”) on April 1, 1986 (Reg. No. 1,388,339).
Respondent registered the <jeldwendoors.com> domain name on September 15, 2007. Respondent is using the disputed domain name to advertise links to Complainant’s competitors in order to obtain revenue from click-through fees. Moreover, numerous other UDRP panels have transferred disputed domain names that were found to be infringing on third-parties’ trademarks from Respondent. See, e.g. Bond v. Wan-Fu China, Ltd., FA 1094208 (Nat. Arb. Forum Nov. 20, 2007); Treasure Island Media, Inc. v. Wan-Fu China, Ltd., FA 989793 (Nat. Arb. Forum June 21, 2007); H-D Michigan, Inc. v. Wan-Fu China, Ltd., FA 992015 (Nat. Arb. Forum June 26, 2007); and Morgan Stanley v. Wan-Fu China, Ltd., FA 1081669 (Nat. Arb. Forum Nov. 16, 2007).
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 has registered the JELD-WEN mark with the USPTO,
and therefore established rights to the mark under Policy ¶ 4(a)(i). See
Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26,
2006) (finding that the complainant had established rights in the PENTIUM,
CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
The <jeldwendoors.com> domain name is confusingly similar to Complainant’s JELD-WEN mark because it incorporates Complainant’s entire mark and adds only a generic term which clearly relates to Complainant’s business. Furthermore, the exclusion of the hyphen from the mark does not sufficiently distinguish the disputed domain name from Complainant’s mark. Finally, because all domain names are required to have a top-level domain, Respondent’s use of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the JELD-WEN mark. Therefore, the Panel finds that the <jeldwendoors.com> domain name is confusingly similar to Complainant’s JELD-WEN mark pursuant to 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 Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark).
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, 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 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 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name because Respondent failed to answer the Complaint; however, the Panel will examine all evidence in the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c). 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).
Complainant contends that Respondent is not commonly known by the disputed domain name and has never been authorized to use the JELD-WEN mark. Moreover, the WHOIS information does not indicate that Respondent is commonly known by the <jeldwendoors.com> domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant contends Respondent is using the disputed domain
name to advertise links to websites selling products competing with
Complainant’s business. The Panel
concludes that such use is not a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that the respondent’s use of the disputed domain name to
redirect Internet users to a financial services website, which competed with
the complainant, was not a bona fide
offering of goods or services); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends Respondent is using the <jeldwendoors.com>
domain name for commercial gain by advertising links to the websites of
Complainant’s competitors. Complainant
contends Respondent is commercially benefiting by receiving click-through fees. The Panel finds the disputed domain name to
be capable of creating confusion as to Complainant’s source, sponsorship,
affiliation or endorsement of the website that resolves from the disputed
domain name. Therefore, the Panel finds
that Respondent’s use of the disputed domain name is evidence of registration
and use in bad faith under Policy ¶ 4(b)(iv).
See T-Mobile
USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7,
2006) (holding that the registration and use of a domain name confusingly
similar to a complainant’s mark to direct Internet traffic to a commercial
“links page” in order to profit from click-through fees or other revenue
sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Yahoo! Inc. v. Web Master, FA
127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate
its search engine, a name that infringes upon Complainant’s mark, Respondent is
found to have created circumstances indicating that Respondent, by using the
domain name, has intentionally attempted to attract, for commercial gain,
Internet users to Respondent’s website by creating a likelihood of confusion
with Complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of the website or of a product or service on the website as
proscribed in Policy ¶ 4(b)(iv).”).
The Panel also finds
Respondent’s use of the disputed domain name to display links to websites that
sell competing products constitutes registration and use in bad faith under
Policy ¶ 4(b)(iii). See St. Lawrence Univ.
v. Nextnet Tech, FA 881234 (Nat.
Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet
users seeking information on Complainant’s educational institution to competing
websites, Respondent has engaged in bad faith registration and use pursuant to
Policy ¶ 4(b)(iii).”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”).
Moreover, Respondent has engaged in a pattern of registering
domain names in order to prevent the owner of the trademark from reflecting the
mark in a corresponding domain name. See, e.g., Bond v. Wan-Fu China, Ltd.,
FA 1094208 (Nat. Arb. Forum Nov. 20, 2007); Treasure Island Media, Inc. v. Wan-Fu China, Ltd., FA 989793 (Nat. Arb. Forum June 21, 2007). The Panel finds such conduct as evidence to
establish bad faith pursuant Policy ¶ 4(b)(ii).
See 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); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29,
2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii)
where the respondent had been subject to numerous UDRP proceedings where panels
ordered the transfer of disputed domain names containing the trademarks of the
complainants).
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 <jeldwendoors.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: March 17, 2008
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