JELD-WEN, inc. v. Alex Farfurnik
Claim Number: FA 1361464
Complainant is JELD-WEN, inc. (“Complainant”), represented by Steven E. Klein of Stoel Rives LLP, Oregon, USA. Respondent is Alex Farfurnik (“Respondent”), Israel.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jeldwenexteriordoors.org>, 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 December 2, 2010; the National Arbitration Forum received payment on December 2, 2010.
On December 3, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <jeldwenexteriordoors.org> domain name is 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 7, 2010, the Forum served upon Respondent the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@jeldwenexteriordoors.org. Also on December 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 2010, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 is a manufacturer of windows and doors, and a source for materials used in the production of windows and doors.
Complainant markets these products under its JELD-WEN trademark.
The JELD-WEN mark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,388,339, issued April 1, 1986).
Respondent registered the disputed domain name <jeldwenexteriordoors.org> on September 19, 2010.
The domain name formerly resolved to a website featuring hyperlinks to third party websites that offered products both similar to and dissimilar from Complainant’s.
The disputed domain name currently fails to resolve to an active website.
Respondent offered to sell the disputed domain name to Complainant for $5,000.00.
1.Respondent’s <jeldwenexteriordoors.org>
domain name is confusingly similar to Complainant’s JELD-WEN mark.
Respondent is not commonly known by the <jeldwenexteriordoors.org> domain name.
Complainant has never authorized or licensed Respondent to use the JELD-WEN marks,
or to register or use any domain names incorporating the JELD-WEN marks.
2.Respondent does
not have any rights to or legitimate interests in the domain name <jeldwenexteriordoors.org>.
3.Respondent
registered and uses the disputed <jeldwenexteriordoors.org> 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:
(1)i.
the domain name registered by Respondent is identical or
confusingly similar to a trademark or service mark in which Complainant has
rights; and
(2)ii. Respondent
has no rights or legitimate interests in respect of the domain name; and
(3)iii. the
domain name has been registered and is being used in bad faith.
Complainant has rights in the JELD-WEN mark pursuant to Policy ¶ 4(a)(i) by virtue of its registration of the mark with the USPTO. See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that a complainant had established rights in its marks for purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that a complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO).
Complainant need not demonstrate rights in its mark acquired in Respondent’s home jurisdiction, it being sufficient that Complainant can demonstrate such rights in some jurisdiction. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of paragraph 4(a)(i) of the Policy that a complainant’s mark is registered in a country other than that of a respondent’s place of business).
Respondent’s <jeldwenexteriordoors.org> domain name is confusingly similar to Complainant’s JELD-WEN mark. Under the Policy, the addition of the two generic terms “exterior” and “doors” does not distinguish the domain name from the mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a 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). This is especially true, where, as here, the generic terms added to the mark in forming the contested domain name are descriptive of Complainant’s business.
Similarly, the addition of the generic-top-level domain “.org” to Complainant’s mark in forming the disputed domain is irrelevant to this analysis. See 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.
Therefore, the Panel finds that the domain name <jeldwenexteriordoors.org> is confusingly similar to Complainant’s JELD-WEN mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in disputed domain name. Once Complainant makes out a prima facie case in support of its allegations under this head of the Policy, the burden shifts to Respondent to prove that it does have rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has made out a sufficient prima facie case on the point of Respondent’s rights to and interests in the contested domain name. Owing to Respondent’s failure to respond to the Complaint filed in this proceeding, we may presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003):
A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are sufficient to satisfy the requirements of the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <jeldwenexteriordoors.org> domain name, and that Complainant has never authorized or licensed Respondent to use the JELD-WEN marks, or to register or use any domain names incorporating the JELD-WEN marks.
On this record, we are compelled to conclude that Respondent is not commonly known by the subject domain name so as to have demonstrated that it has rights to or legitimate interests in the domain under 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 record, including the relevant WHOIS information, 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the domain name).
We also observe that Respondent’s uses of the domain name do not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). It is undisputed on this record that Respondent’s domain name once resolved to a web page displaying hyperlinks to the websites of business competitors of Complainant. Using a domain name confusingly similar to Complainant’s mark in this manner diverts Internet users away from Complainant. In the circumstances here presented, we may comfortably presume that Respondent received click-through fees for the visits of Internet users to the web pages associated with the displayed links. Such diversionary use is not 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a contested domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or whether a respondent is itself profiting commercially from click-through fees); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a contested domain name was not 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)).
Respondent does not deny the allegation of the Complaint that it has offered to sell the instant domain name to complainant for $5,000. Because the amount demanded is demonstrably in excess of Respondent’s costs of acquisition of the domain, this demand establishes that Respondent has no rights to or legitimate interests in the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that a respondent’s offer to sell a contested domain name for more than its out-of-pocket costs provided evidence that that respondent had no rights to or legitimate interests in the domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s offer to sell a domain name to a complainant suggests that a respondent has no rights to or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
There is evidence in the record indicating that Respondent has altered the content of the website resolving from the disputed domain name to remove the links described above, so that the resolving website now has no active content. This inactive holding of the contested domain name is also evidence that Respondent’s use of the domain is not 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). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004):
Respondent is wholly appropriating Complainant’s mark and is not using the … domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
See also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that a respondent’s non-active use of disputed domain names demonstrates that that respondent was not using the domains for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s offer to sell the domain name to Complainant for a sum in excess of Respondent’s out-of-pocket its costs of acquisition indicates bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that a respondent registered and used a domain name in bad faith where it offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that a respondent demonstrated bad faith when it requested monetary compensation beyond its out-of-pocket costs in exchange for the domain name).
Respondent currently fails to make active use of the disputed domain name. This is further evidence of bad faith registration and use of the domain under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000):
[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.
See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that holding an infringing domain name without active use can constitute use in bad faith).
We find therefore that Complainant has met its proof obligations under 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 <jeldwenexteriordoors.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 13, 2011
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