Andersen Corporation v. Design Price Buy Inc.
Claim Number: FA0905001261838
Complainant is Andersen
Corporation (“Complainant”), represented by William D. Schultz, of Merchant & Gould, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <andercenter.com>, registered with Godaddy.com, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 11, 2009.
On May 8, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <andercenter.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. 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 May 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 1, 2009 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.
On June 4, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant owns the ANDERSEN mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 910,533, issued March 30, 1971).
Complainant uses the ANDERSEN mark in connection with the marketing of its window and door products.
Respondent is not authorized to use Complainant’s ANDERSEN mark.
Respondent registered the <andercenter.com> domain name on December 15, 2008.
Respondent uses the disputed domain name to resolve to a website offering Complainant’s goods and services for sale.
Respondent attempts to pass itself off as a distributor of Complainant, copying content on Complainant’s commercial website and incorporating it in the resolving website at the <andercenter.com> domain name.
Respondent’s <andercenter.com> domain name is confusingly similar to Complainant’s ANDERSEN mark.
Respondent does not have any rights to or legitimate interests in the <andercenter.com> domain name.
Respondent registered and uses the <andercenter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established its rights in its ANDERSEN mark pursuant
to Policy ¶ 4(a)(i) based on its registration of the
mark with the USPTO. See
Microsoft Corp. v. Burkes, FA 652743 (Nat.
Arb. Forum Apr. 17, 2006): “Complainant has established rights in the
MICROSOFT mark through registration of the mark with the USPTO.” See also
Complainant alleges that Respondent’s <andercenter.com>
domain name is confusingly similar to its ANDERSEN mark. The disputed domain name incorporates the core
of Complainant’s mark and adds the generic term “center.” This addition does not remove the disputed
domain name from the realm of confusing similarity with Complainant’s ANDERSEN
mark. See Arthur Guinness Son & Co. (
Moreover, the disputed domain name contains “andercen” which is phonetically nearly identical to Complainant’s ANDERSEN mark. See Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004):
Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).
See also VeriSign, Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that similarities between the pronunciation and spelling of the domain name <venesign.com> and a complainant’s mark, VERISIGN, are so close that confusion can arise in the mind of a consumer).
Finally, we conclude that the presence of the top-level domain “.com” is irrelevant for purposes of a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel finds that Respondent’s <andercenter.com> domain name is confusingly similar to Complainant’s ANDERSEN mark, so that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case that Respondent lacks rights to and legitimate interests in the disputed domain names. The burden then shifts to Respondent to show that it does have such rights or legitimate interests. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000):
Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.
Complainant has satisfied its obligation to make out a prima facie case in these proceedings. Respondent, for its part, has failed to respond to the allegations against it. From this failure to respond, we may presume that Respondent lacks any rights to or legitimate interests in the disputed domain name 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.
We nonetheless elect to review the record before us to determine if there is in it any basis for concluding that Respondent has rights or legitimate interests in the disputed domain name cognizable under the Policy.
We begin by observing that Complainant asserts, and Respondent does not deny, that Respondent is not authorized to use Complainant’s ANDERSEN mark. Moreover, the pertinent WHOIS information lists Respondent only as “Design Price Buy Inc.,” which suggests that Respondent is not commonly known by the <andercenter.com> domain name. Therefore, and in the absence of evidence to the contrary, we conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the pertinent WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name for purposes of the Policy where there was no evidence in the record showing that that respondent was commonly known by that domain name, including the pertinent WHOIS information, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
We also note that Complainant asserts, and Respondent does not deny, that the disputed domain name is being used to resolve to a commercial website offering Complainant’s products for sale. Complainant also alleges that Respondent is attempting to pass itself off as an authorized distributor of Complainant’s products, which, again, Respondent does not deny. We therefore conclude that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the subject domain pursuant to Policy ¶ 4(c)(i) or (iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a respondent attempted to pass itself off as a complainant online, in a blatantly unauthorized use of that complainant’s mark, which is evidence that that respondent had no rights to or legitimate interests in a disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007):
Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).
Complainant has thus satisfied the proof requirements of Policy ¶ 4(a)(ii).
Complainant alleges that Respondent is engaged in bad faith registration and use of its domain name pursuant to Policy ¶ 4(b)(iii). We agree because Respondent’s use of a domain name confusingly similar to Complainant’s mark, which resolves to a commercial website offering Complainant’s products for sale, likely disrupts Complainant’s business. Therefore, we conclude that Respondent has engaged in bad faith registration and use of the contested domain pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002): “Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).” See also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that a respondent acted in bad faith by using a disputed domain name to attract Internet users to a website that competed with a complainant’s business).
Bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iv) can also be inferred based on Respondent’s use of a confusingly similar domain name to attract Internet users to a website that offers Complainant’s products for sale. We may presume that Respondent profits from such use. Therefore, we conclude that Respondent has engaged in bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003): “The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.” See also Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that a respondent’s use of the <compaq-broker.com> domain name to sell a complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”).
Complainant has thus satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <andercenter.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 16, 2009
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