national arbitration forum

 

DECISION

 

DAP Brands Company and DAP Products Inc. v. Eco-Bond Adhesives

Claim Number: FA0910001290713

 

PARTIES

Complainant is DAP Brands Company and DAP Products Inc. (“Complainant”), represented by Kathryn E. Smith, of Wood, Herron & Evans, LLP, Ohio, USA.  Respondent is Eco-Bond Adhesives (“Respondent”), Wisconsin, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <dapadhesives.com> and <dapproducts.com>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 22, 2009.

 

On October 22, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <dapadhesives.com> and <dapproducts.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names.  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 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 postmaster@dapadhesives.com and postmaster@dapproducts.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On November 18, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

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.

 

FINDINGS

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 October 14, 1958).  Complainant’s products are marketed and sold in over 60,000 retail outlets.  Complainant has used the DAP mark continuously in commerce since at least as early as 1957.

 

Respondent, Eco-Bond Adhesives, registered the disputed domain names on February 26, 2009. The disputed domain names resolve to a website that features links to third-party websites, many of which sell products that compete with Complainant’s products.  The disputed domain names used to redirect to the <ecobondadhesives.com> website, which sold adhesive products in direct competition with Complainant’s products.  Furthermore, 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. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Respondent, Eco-Bond Adhesives, registered the disputed domain names on February 26, 2009.  The Panel finds that Complainant has established sufficient rights in the DAP mark through its many registrations of the mark with the USPTO (e.g., Reg. No. 668,204 issued October 14, 1958) pursuant to Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).

 

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. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).  The Panel also finds that the addition of the gTLD “.com” does not sufficiently distinguish a domain name from the incorporated mark for the purposes of Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).  Therefore, the Panel finds that because the changes to the DAP mark do not sufficiently distinguish the disputed domain names from Complainant’s mark, Respondent’s disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

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 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 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.

 

Registration and Use in Bad Faith

 

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).  See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith). 

 

Complainant contends that Respondent is using the disputed domain names (initial registration: February 26, 2009) to host a website advertising competitors of Complainant, and previously to redirect Internet users to Respondent’s own competitive business website, both of which have inevitably disrupted Complainant’s business.  Complainant therefore contends that Respondent’s actions are evidence of Respondent’s registration and use of the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii).  The Panel agrees and finds that Respondent’s competitive use of the disputed domain names indicates that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also S. Exposure v. S.  Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent). 

 

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 Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)); see also 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.’”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

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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