Andersen Corporation v. Buffalo Flash Design / Dani Sumner
Claim Number: FA1103001377074
Complainant is Andersen Corporation (“Complainant”), represented by William D. Schultz of Merchant & Gould P.C., Minnesota, USA. Respondent is Buffalo Flash Design / Dani Sumner (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <andersonwindowprices.com>, registered with ENOM, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 9, 2011; the National Arbitration Forum received payment on March 9, 2011.
On March 10, 2011, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <andersonwindowprices.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 March 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 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@andersonwindowprices.com. Also on March 10, 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 April 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <andersonwindowprices.com> domain name is confusingly similar to Complainant’s ANDERSEN mark.
2. Respondent does not have any rights or legitimate interests in the <andersonwindowprices.com> domain name.
3. Respondent registered and used the <andersonwindowprices.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Andersen Corporation, formed in 1903 as a manufacturer of wood windows and doors. Complainant owns the ANDERSEN mark and uses the mark in the promotion and sales of its window and door products. Complainant holds numerous trademarks for its ANDERSEN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 910,533 issued March 30, 1971).
Respondent, Buffalo Flash Design / Dani Sumner, registered the <andersonwindowprices.com> domain name on October 15, 2009. The disputed domain name resolves to a website which professedly describes and details Complainant’s window products and features links to third-party websites in direct Competition with complainant’s window business.
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.
Complainant maintains that it has demonstrated its rights it the ANDERSEN mark. In Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), the panel found that complainants had established rights in marks where the marks were registered with a trademark authority. See also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Here, Complainant has numerous trademark registrations for its ANDERSEN mark with the USPTO (e.g., Reg. No. 910,533 issued March 30, 1971). The Panel concludes that Complainant has established its rights in the ANDERSEN mark via registration with a trademark authority under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <andersonwindowprices.com> domain name is confusingly similar to its ANDERSEN mark. The disputed domain name incorporates the mark entirely and differentiates from the mark only by the substitution of one letter (“o” instead of “e”), the addition of the descriptive words “window prices”, and the affixation of the generic top-level domain (“gTLD”) “.com.” The Panel finds that the misspelling of a word by a single letter does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Also, the Panel determines that the additions of the descriptive words, which illustrate Complaint’s business in window sales, does not avoid a finding of confusing similarity. See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”). Finally, the Panel finds that the addition of a gTLD does not properly distinguish the disputed domain name from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s ANDERSEN mark according to Policy ¶ 4(a)(i).
The Panel finds that the elements of Policy ¶ 4(a)(i) have been met.
Complainant alleges that Respondent lacks rights and legitimate interests in the <andersonwindowprices.com> domain name. In Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), the panel determined that a 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. Here, Complainant has presented a prima facie case in support of its claims against Respondent. Respondent did not submit a timely response to the Complaint. This permits the Panel to assume that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). However, the Panel chooses to look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <andersonwindowprices.com> domain name. The WHOIS information presents Respondent as “Buffalo Flash Design/Dani Sumner,” which is not similar to the disputed domain name. Complainant further alleges that Respondent is using its ANDERSEN mark within the domain name without Complainant’s authorization or permission. The Panel concludes that Respondent is not commonly known by the disputed domain names, pursuant to Policy ¶ 4(c)(ii), as there is no evidence to indicate otherwise. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent registered and uses the <andersonwindowprices.com> domain name to redirect Internet users to its website which attempts to pass itself off as affiliated with Complainant by featuring information about Complainant’s window products. The resolving website also features links to third-party commercial sites which directly compete with Complainant’s window sales. The Panel finds that Respondent’s use of the confusingly similar domain name to pass itself off as a website associated with Complainant and to direct Internet users to competing websites 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 Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was 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)).
Complainant asserts that Respondent attempted to sell the disputed domain name at <sedo.com>. The Panel finds that Respondent’s offer to sell <andersonwindowprices.com> to the general public is further evidence that Respondent has no rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant maintains that Respondent offered to sell the <andersonwindowprices.com> domain name to the public at <sedo.com>. The Panel finds that such motivation to dispose of the disputed domain name indicates bad faith registration and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Complainant also maintains that Respondent’s registration and use of the disputed domain name disrupts its business in window sales. Respondent uses the <andersonwindowprices.com> domain name to operate a website which attempt to pass itself off as being associated with Complainant, offers information on Complainant’s window products, and displays link to Complainant’s competitors. Those intending to buy Complainant’s window products may find Respondent’s website instead and purchase similar products from one of the competing websites as a result. Internet users may also believe that the information, reviews, and content displayed on the resolving site has been verified by Complainant. The Panel finds that Respondent’s use of the domain name to purposefully hold itself out as being associated with Complainant and to direct users to competing websites does disrupt Complainant’s business, which constitutes bad faith use and registration under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel infers that Respondent likely receives click-through from the aforementioned links. Respondent’s disputed domain name hosts a website purporting to offer information under Complainant’s mark and about Complainant’s window products, as well as featuring links to competing websites. Internet users looking for information on Complainant and product pricing may find Respondent’s website instead. There is a strong likelihood that users may become confused as to Complainant’s sponsorship of, or affiliation with, the information featured and the third-party links. Respondent ultimately tries to profit from this confusion through the receipt of click-through fees. The Panel finds that such use of the <andersonwindowprices.com> domain name constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See 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.’”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <andersonwindowprices.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 11, 2011
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