DAP Brands Company and DAP Products Inc. v. Eco-Bond Adhesives
Claim Number: FA0910001290713
Complainant is DAP Brands Company and DAP Products Inc. (“Complainant”), represented by Kathryn
E. Smith, of Wood, Herron & Evans, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dapadhesives.com> and <dapproducts.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On October 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 12, 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 and 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dapadhesives.com> and <dapproducts.com> domain names are confusingly similar to Complainant’s DAP mark.
2. Respondent does not have any rights or legitimate interests in the <dapadhesives.com> and <dapproducts.com> domain names.
3. Respondent registered and used the <dapadhesives.com> and <dapproducts.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DAP Brands
Company and DAP Products Inc., is a holding company and operating entity,
respectively, which manufacture and sell sealing and adhesive products under
the DAP mark. Complainant has several
registrations for the DAP mark with the United States Patent and Trademark
Office (“USPTO”) (e.g., Reg. No. 668,204 issued
Adhesives, registered the disputed 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.
Adhesives, registered the disputed domain names on
Complainant contends that
Respondent’s disputed domain names are confusingly similar to its DAP mark. The disputed domain names differ from Complainant’s mark in two ways:
(1) descriptive or generic terms (“adhesives” or “products,” respectively) have
been added to the mark; and (2) the generic top-level domain (gTLD) “.com” has
been added to the mark. The Panel finds that adding a descriptive or
generic term does not sufficiently distinguish a domain name from a mark. See Am. Express
Co. v. MustNeed.com, FA 257901 (Nat.
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 names. 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 or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii), and that Respondent has failed to submit a Response. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).
Complainant contends that Respondent is not commonly known
by either of the disputed
domain names, nor has it ever been the owner or licensee of the DAP mark. The WHOIS listings for the disputed domain
names list Respondent as “Eco-Bond Adhesives,”
and there is no evidence in front of the Panel that is contrary to
Complainant’s contentions. Because there
is no evidence that Respondent has ever been known by any variant on the DAP
mark, the Panel therefore finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶
4(c)(ii). See Am. Online, Inc. v. World
Photo Video & Imaging Corp., FA
109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not
commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as
“Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Wells Fargo & Co. v.
Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum
Complainant states Respondent was previously using the disputed domain name to redirect Internet users to a website that sold adhesive products in direct competition with Complainant’s products. Also, Complainant contends that Respondent is using the disputed domain names to operate a website that contains links to Complainant’s competitors, and that this use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). The Panel does find that neither of Respondent’s uses of the disputed domain names are a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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 also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that
Respondent has on several occasions offered to sell the disputed domain names
to Complainant for far more than the out-of-pocket costs to Respondent. Because the Panel finds that an offer to sell
a disputed domain name for more than out-of-pocket costs is evidence that a
respondent has registered and used a disputed domain name in bad faith pursuant
to Policy ¶ 4(b)(i), the Panel consequently finds that Respondent has
registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant contends that
Respondent is using the disputed domain names
Complainant also contends that Respondent is collecting
“click-through” fees from the companies to which Respondent is currently diverting
Internet users, and that these fees constitute commercial gain which is
evidence of Respondent bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(iv). The Panel agrees and finds that Respondent’s
commercial gain from its use of the disputed domain names is
evidence of its bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(iv). See
The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For
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 <dapadhesives.com> and <dapproducts.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 1, 2009
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