FPI Fireplace Products International Ltd. v. Rick Eudaley c/o New Energy Distributing, Inc.
Claim Number: FA0910001289623
Complainant is FPI
Fireplace Products International Ltd. (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regencyfireplace.com>, registered with Brandon Gray Internet Services, Inc. d/b/a Namejuice.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 22, 2009.
On October 27, 2009, Brandon Gray Internet Services, Inc. d/b/a Namejuice.com confirmed by e-mail to the National Arbitration Forum that the <regencyfireplace.com> domain name is registered with Brandon Gray Internet Services, Inc. d/b/a Namejuice.com and that Respondent is the current registrant of the name. Brandon Gray Internet Services, Inc. d/b/a Namejuice.com has verified that Respondent is bound by the Brandon Gray Internet Services, Inc. d/b/a Namejuice.com 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 November 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 24, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <regencyfireplace.com> domain name is confusingly similar to Complainant’s REGENCY mark.
2. Respondent does not have any rights or legitimate interests in the <regencyfireplace.com> domain name.
3. Respondent registered and used the <regencyfireplace.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, FPI Fireplace Products International Ltd.,
manufactures and sells fireplaces and associated products. Complainant registered the REGENCY mark with
the United States Patent and Trademark Office (“USPTO”) on March 23, 2004 (Reg.
No. 2,824,702). Other than its trademark
registrations in several countries, the earliest being issued on February 3,
Respondent, Rick Eudaley c/o New Energy Distributing, Inc., registered the <regencyfireplace.com> domain name on March 4, 2000. The <regencyfireplace.com> domain name resolves to a website where fireplaces products in competition with Complainant’s own products are being sold.
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 has established rights in
the REGENCY mark for purposes of Policy ¶ 4(a)(i) through its trademark registration
with the USPTO (Reg. No. 2,824,702 issued March 23, 2004). See
Complainant contends that Respondent’s <regencyfireplace.com> domain name is confusingly similar to its REGENCY mark. The disputed domain name differs from Complainant’s mark in two ways: (1) the term “fireplace,” which describes Complainant’s products, has been added to the end of the mark; and (2) the generic top-level domain (“gTLD”) “.com” has been added. The Panel finds that the addition of a term that describes a complainant’s business does not sufficiently distinguish a domain name from an incorporated mark for the purposes of Policy ¶ 4(a)(i). The Panel also finds that the addition of a gTLD also does not reduce the likelihood of confusion between the domain name and the mark, because every domain name must contain a top-level domain. Therefore, the Panel finds that these changes do not minimize or eliminate the resulting likelihood of confusion, and so Respondent’s <regencyfireplace.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). Respondent has not responded to the Complaint in this case. See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); 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”).
Complainant contends that Respondent is not commonly known by the <regencyfireplace.com> domain name nor has it ever been the owner or licensee of the REGENCY mark. The WHOIS record for the disputed domain name lists Respondent as “Rick Eudaley c/o New Energy Distributing, Inc.” Because of this evidence, along with the fact that Respondent has failed to show any evidence contrary to Complainant’s contentions, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant alleges that the <regencyfireplace.com> domain name resolves to a website that sells fireplace products in competition with Complainant. The Panel finds that the use of the <regencyfireplace.com> domain name to promote a competitor of Complainant is neither 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 Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the disputed domain name on March 4, 2000, before the evidence in the record shows that Complainant began using the REGENCY mark to promote its fireplace products. Therefore, based on the evidence in the record, the Panel finds that there is no evidence that Respondent registered the <regencyfireplace.com> domain name in bad faith at that time, because Respondent’s registration of the disputed domain name predates Complainant’s proven use of the mark. Thus, the Panel finds that Respondent did not register the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark).
The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <regencyfireplace.com> domain name REMAIN with Respondent.
John J. Upchurch, Panelist
Dated: December 15, 2009
National Arbitration Forum
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