U.S. Green Building Council v. L.E.E.D. Depot, Inc.
Claim Number: FA1012001365527
Complainant is U.S. Green Building Council (“Complainant”), Washington D.C., USA. Respondent is L.E.E.D. Depot, Inc. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leeddepot.us>, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 30, 2010; the Forum received a hard copy of the Complaint on December 30, 2010.
On December 30, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <leeddepot.us> 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 disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 11, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 31, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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" 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:
1. Respondent’s <leeddepot.us> domain name is confusingly similar to Complainant’s LEED mark.
2. Respondent does not have any rights or legitimate interests in the <leeddepot.us> domain name.
3. Respondent registered and used the <leeddepot.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, U.S. Green Building Council, promotes environmentally and socially responsible ways to design, build and operate buildings, communities and real estate and provides a wide range of goods and services in the field of green building. Complainant is comprised of more than 18,000 member companies and organizations, 140,000 LEED Professional Credential holders, and 78 regional chapters. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the LEED mark (Reg. No. 2,763,993 issued Sept. 16, 2003).
Respondent, L.E.E.D. Depot, Inc., registered the <leeddepot.us> domain name on June 1, 2008. The disputed domain name resolves to a website that purports to offer consulting services for those seeking to meet the requirements of Complainant’s proprietary LEED rating system.
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(f), 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the LEED mark (Reg. No. 2,763,993 issued Sept. 16, 2003). The Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) in the LEED mark through its registration of the mark with the USPTO. 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 [UDRP] ¶ 4(a)(i).”); see also 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.”).
Complainant argues that Respondent’s <leeddepot.us> domain name is confusingly similar to Complainant’s LEED mark because the disputed domain name adds only the generic term “depot” and the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that adding a generic term to Complainant’s mark in the disputed domain name does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under [UDRP] 4(a)(i).”); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). The Panel finds that the addition of a ccTLD is irrelevant in distinguishing between a disputed domain name and a mark. See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”); see also Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name [<Barbie.us>] is identical to the trademark “Barbie” as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”). Therefore, the Panel concludes Respondent’s <leeddepot.us> domain name is confusingly similar to Complainant’s LEED mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <leeddepot.us> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record according to the Policy ¶ 4(c) factors to determine whether Respondent has rights or legitimate interests in the disputed domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Domtar, Inc. v.Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <leeddepot.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant alleges that it has never granted Respondent permission to use the LEED mark. Although the WHOIS information for the <leeddepot.us> domain name identifies the registrant as “L.E.E.D. Depot, Inc.,” the Panel finds that such information is insufficient to establish that Respondent is commonly known by the disputed domain name without additional supporting evidence. Accordingly, pursuant to Policy ¶ 4(c)(iii), the Panel finds that Respondent does not have rights and legitimate interests in the disputed domain name. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name”).
Complainant contends that Respondent uses the <leeddepot.us> domain name to resolve to a commercial website promoting and offering Respondent’s consulting services, products, and building and design services. Complainant thus argues, and the Panel agrees, that Respondent’s use of the <leeddepot.us> domain name is not consistent with the Policy ¶ 4(c)(ii) requirement of a bona fide offering of goods or services or the Policy ¶ 4(c)(iv) requirement of a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent intentionally uses Complainant’s LEED mark in the <leeddepot.us> domain name in order to attract Internet users seeking Complainant to Respondent’s website by creating a likelihood of confusion as to the source, sponsorship or affiliation of Respondent’s website. Because Respondent’s website is a commercial website offering its goods and services to consumer, Respondent likely aims to commercially profit from this confusion and diversion under Complainant’s mark. The Panel finds that Respondent’s activities therefore show bad faith registration and use according to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <leeddepot.us> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: February 5, 2011
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