JELD-WEN, inc. v. jeldwengaragedoorlongisland.com Private Registrant / jeldwengaragedoorslongisland.com Private Registrant / jeldwengaragedoornassau.com Private Registrant / jeldwengaragedoorsnassau.com Private Registrant / jeldwengaragedoornewyork.com Private Registrant / jeldwengaragedoorsnewyork.com Private Registrant / jeldwengaragedoorsuffolk.com Private Registrant / jeldwengaragedoorssuffolk.com Private Registrant
Claim Number: FA1101001370032
Complainant is JELD-WEN, inc. (“Complainant”), represented by Steven E. Klein of Stoel Rives LLP, Oregon, USA. Respondent is jeldwengaragedoorlongisland.com Private Registrant / jeldwengaragedoorslongisland.com Private Registrant / jeldwengaragedoornassau.com Private Registrant / jeldwengaragedoorsnassau.com Private Registrant / jeldwengaragedoornewyork.com Private Registrant / jeldwengaragedoorsnewyork.com Private Registrant / jeldwengaragedoorsuffolk.com Private Registrant / jeldwengaragedoorssuffolk.com Private Registrant (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jeldwengaragedoorlongisland.com>, <jeldwengaragedoorslongisland.com>, <jeldwengaragedoornassau.com>, <jeldwengaragedoorsnassau.com>, <jeldwengaragedoornewyork.com>, <jeldwengaragedoorsnewyork.com>, <jeldwengaragedoorsuffolk.com>, and <jeldwengaragedoorssuffolk.com>, registered with New Dream Network, LLC d/b/a DreamHost.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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 28, 2011; the National Arbitration Forum received payment on January 28, 2011.
On February 2, 2011, New Dream Network, LLC d/b/a DreamHost.com confirmed by e-mail to the National Arbitration Forum that the <jeldwengaragedoorlongisland.com>, <jeldwengaragedoorslongisland.com>, <jeldwengaragedoornassau.com>, <jeldwengaragedoorsnassau.com>, <jeldwengaragedoornewyork.com>, <jeldwengaragedoorsnewyork.com>, <jeldwengaragedoorsuffolk.com>, and <jeldwengaragedoorssuffolk.com> domain names are registered with New Dream Network, LLC d/b/a DreamHost.com and that Respondent is the current registrant of the names. New Dream Network, LLC d/b/a DreamHost.com has verified that Respondent is bound by the New Dream Network, LLC d/b/a DreamHost.com 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 February 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2011 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@jeldwengaragedoorlongisland.com, postmaster@jeldwengaragedoorslongisland.com, postmaster@jeldwengaragedoornassau.com, postmaster@jeldwengaragedoorsnassau.com, postmaster@jeldwengaragedoornewyork.com, postmaster@jeldwengaragedoorsnewyork.com, postmaster@jeldwengaragedoorsuffolk.com, and postmaster@jeldwengaragedoorssuffolk.com. Also on February 7, 2011, 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 March 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <jeldwengaragedoorlongisland.com>, <jeldwengaragedoorslongisland.com>, <jeldwengaragedoornassau.com>, <jeldwengaragedoorsnassau.com>, <jeldwengaragedoornewyork.com>, <jeldwengaragedoorsnewyork.com>, <jeldwengaragedoorsuffolk.com>, and <jeldwengaragedoorssuffolk.com> domain names are confusingly similar to Complainant’s JELD-WEN mark.
2. Respondent does not have any rights or legitimate interests in the <jeldwengaragedoorlongisland.com>, <jeldwengaragedoorslongisland.com>, <jeldwengaragedoornassau.com>, <jeldwengaragedoorsnassau.com>, <jeldwengaragedoornewyork.com>, <jeldwengaragedoorsnewyork.com>, <jeldwengaragedoorsuffolk.com>, and <jeldwengaragedoorssuffolk.com> domain names.
3. Respondent registered and used the <jeldwengaragedoorlongisland.com>, <jeldwengaragedoorslongisland.com>, <jeldwengaragedoornassau.com>, <jeldwengaragedoorsnassau.com>, <jeldwengaragedoornewyork.com>, <jeldwengaragedoorsnewyork.com>, <jeldwengaragedoorsuffolk.com>, and <jeldwengaragedoorssuffolk.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, JELD-WEN, inc., provides window and door manufacturing and related services and industries. Complainant is a comprehensive source for wood, vinyl, and aluminum windows; wood and molded wood fiber interior doors; and wood, steel, wood composite and fiberglass exterior doors, including garage doors. Complainant owns trademark registrations for the JELD-WEN mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,388,339 issued April 1, 1986 and
Reg. No. 3,067,184 issued March 14, 2006.
Respondent, jeldwengaragedoorlongisland.com Private Registrant / jeldwengaragedoorslongisland.com Private Registrant / jeldwengaragedoornassau.com Private Registrant / jeldwengaragedoorsnassau.com Private Registrant / jeldwengaragedoornewyork.com Private Registrant / jeldwengaragedoorsnewyork.com Private Registrant / jeldwengaragedoorsuffolk.com Private Registrant / jeldwengaragedoorssuffolk.com Private Registrant, registered the <jeldwengaragedoorlongisland.com>, <jeldwengaragedoorslongisland.com>, <jeldwengaragedoornassau.com>, <jeldwengaragedoorsnassau.com>, <jeldwengaragedoornewyork.com>, <jeldwengaragedoorsnewyork.com>, <jeldwengaragedoorsuffolk.com>, and <jeldwengaragedoorssuffolk.com> domain names on June 14, 2010. The disputed domain names are not currently in active use and do not resolve to any content-filled website.
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.
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant owns trademark registrations for the JELD-WEN mark with the USPTO:
Reg. No. 1,388,339 issued April 1, 1986 and
Reg. No. 3,067,184 issued March 14, 2006.
The Panel finds that these USPTO trademark registrations provide conclusive proof of Complainant’s rights in the JELD-WEN mark for the purposes of Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); 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 alleges that the <jeldwengaragedoorlongisland.com>, <jeldwengaragedoorslongisland.com>, <jeldwengaragedoornassau.com>, <jeldwengaragedoorsnassau.com>, <jeldwengaragedoornewyork.com>, <jeldwengaragedoorsnewyork.com>, <jeldwengaragedoorsuffolk.com>, and <jeldwengaragedoorssuffolk.com> domain names are all confusingly similar to Complainant’s JELD-WEN mark because all consist of Complainant’s mark, omitting the hyphen, combined with the descriptive terms “garage” and “door” or “doors” and one of the following geographic terms: “long island,” “nassau,” “new york,” or “suffolk.” Additionally, each disputed domain name contains the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding descriptive or geographic terms to Complainant’s mark does not distinguish the disputed domain names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). The Panel also finds that omitting a hyphen and attaching a gTLD do not affect the essential character and confusing similarity of the disputed domain names. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark). The Panel thus concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s JELD-WEN mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant is required by Policy ¶ 4(a)(ii) to put forth a prima facie case in regard to this assertion. Subsequently, the burden shifts to Respondent to demonstrate that it does possess rights and legitimate interests in the disputed domain name. In the instant proceedings, the Panel concludes that Complainant has sufficiently established a prima facie case. Respondent’s failure to respond results in an inference by the Panel that Respondent lacks any rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int’l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s failure to respond not only results in its failure to meet its burden, but also will be evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel elects to consider the evidence presented in light of the Policy ¶ 4(c) factors, however, in order to make an independent determination on whether Respondent has any rights and legitimate interests in the disputed domain names.
Complainant asserts that it has never licensed or authorized Respondent to register or use any domain names incorporating Complainant’s JELD-WEN mark. While the WHOIS information for the disputed domain names seems to suggest an association between the disputed domain names and Respondent, Complainant argues that this fact alone, without other supporting or corroborating evidence, fails to prove that Respondent is commonly known by the disputed domain names. In the absence of other evidence, the Panel finds that Respondent is not commonly known by the disputed domain names and consequently lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Complainant argues that Respondent’s disputed domain names do not currently resolve to active websites displaying content. The Panel finds that Respondent’s failure to actively use the disputed domain names supports a finding of Respondent’s lack of rights and legitimate interests as it is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names 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)).
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant alleges that Respondent is not using the disputed domain names for any active purpose or to resolve to any website with active content. Complainant asserts, and the Panel agrees, that Respondent’s inactive holding of the disputed domain names indicates that the disputed domain names were registered and are being used in bad faith under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
The Panel finds 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 <jeldwengaragedoorlongisland.com>, <jeldwengaragedoorslongisland.com>, <jeldwengaragedoornassau.com>, <jeldwengaragedoorsnassau.com>, <jeldwengaragedoornewyork.com>, <jeldwengaragedoorsnewyork.com>, <jeldwengaragedoorsuffolk.com>, and <jeldwengaragedoorssuffolk.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 16, 2011
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