Clopay Building Products Company, Inc. v Sp Merger / Sam Patels

national arbitration forum

DECISION

Clopay Building Products Company, Inc. v. Sp Merger / Sam Patels

Claim Number: FA1104001384398

PARTIES

Complainant is Clopay Building Products Company, Inc. (“Complainant”), represented by William D. Schultz of Merchant & Gould P.C., Minnesota, USA. Respondent is Sp Merger / Sam Patels (“Respondent”), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <clopaygaragedoors.net>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

Terry F. Peppard as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 18, 2011; the National Arbitration Forum received payment on April 18, 2011.

On April 18, 2011, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <clopaygaragedoors.net> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAIN-REGISTRY.COM and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAIN-REGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.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 April 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 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@clopaygaragedoors.net. Also on April 19, 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 May 10, 2011, 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

Complainant is a manufacturer and marketer of residential garage doors and garage door products.

Complainant has used the CLOPAY mark for the sale of its garage doors continuously since 1964.

Complainant also holds a trademark registration for its CLOPAY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,264,511, issued July 17, 2007).

Respondent registered the <clopaygaragedoors.net> domain name on October 10, 2009.

The disputed domain name resolves to a website with content lifted from Complainant’s official website, including Complainant’s CLOPAY mark and references to Complainant’s products, as well as content related to products of Complainant’s business competitors.

Respondent’s <clopaygaragedoors.net> domain name is confusingly similar to Complainant’s CLOPLAY mark.

Respondent is not commonly known by the contested <clopaygaragedoors.net> domain name.

Complainant has not granted Respondent permission to use the CLOPAY trademark in the disputed domain name.

Respondent does not have any rights to or legitimate interests in the domain name <clopaygaragedoors.net>.

Respondent registered and uses the <clopaygaragedoors.net> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

(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.

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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:

i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii. Respondent has no rights or legitimate interests in respect of the domain name; and

iii. the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established rights in the CLOPAY trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that a complainant had registered its mark with national trademark authorities, a panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).

Respondent’s <clopaygaragedoors.net> domain name is confusingly similar to Complainant’s CLOPAY trademark. The disputed domain name employs the entire CLOPAY mark and merely adds the descriptive words “garage doors,” which are descriptive of Complainant’s business, and the generic top-level domain (“gTLD”) “.net.” The inclusion in the contested domain name of descriptive words which relate to Complainant’s business of manufacturing garage doors does not remove the disputed domain name from the realm of confusing similarity. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where the disputed domain name <kohlerbaths.com> contained a complainant’s mark in its entirety, merely adding the descriptive term “baths,” an allusion to that complainant’s business).

Similarly, the affixation of a gTLD to Complainant’s mark in forming the contested domain name does not distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). 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).

The Panel therefore finds that Respondent’s <clopaygaragedoors.net> domain name is confusingly similar to Complainant’s CLOPAY trademark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant contends that Respondent has no rights to or legitimate interests in the <clopaygaragedoors.net> domain name. Once a complainant has made out a prima facie case in support of its allegations under this head of the Policy, the burden shifts to a respondent to show that it does have such rights or legitimate interests. See, for example, Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008).

Here, Complainant has made out a prima facie case in support of its claims on the point of Respondent’s rights to and legitimate interests in the contested domain name. Respondent, for its part, has failed to submit a response to the Complaint. We are therefore free to presume that Respondent lacks rights to and legitimate interests in the contested domain name under 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 a respondent failed to respond to a complaint filed under the Policy).

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 contested domain name which are cognizable under the Policy.

We first observe that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the <clopaygaragedoors.net> domain name, and that Complainant has not granted Respondent permission to use the CLOPAY trademark in the disputed domain name. Moreover, the pertinent WHOIS information identifies the registrant of the subject domain name only as “Sp Merger / Sam Patels,” which does not resemble the disputed domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights 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 is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record).

We next note that Complainant alleges, without objection from Respondent, that Respondent’s domain name resolves to a website featuring Complainant’s mark, as well as content and pictures from Complainant’s official website, as well as references to Complainant products and content related to products offered by Complainant’s competitors in the garage door industry. Respondent’s use of the contested domain name in the manner alleged is an evident attempt to pass itself off as Complainant, and 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 Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (a panel finding that a respondent’s attempt to pass itself of as a complainant online 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) where that respondent used the disputed domain name to present Internet users with a website that was nearly identical to that complainant’s website); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a respondent’s attempt to pass itself off as a complainant online, in a blatantly unauthorized use of that complainant’s mark, was evidence that that respondent had no rights to or legitimate interests in a disputed domain name).

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

Registration and Use in Bad Faith

Respondent’s registration and use of the <clopaygaragedoors.net> domain name in the manner alleged in the Complaint disrupts Complainant’s business. This behavior is evidence that Respondent’s registration and use of the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that a respondent acted in bad faith by attracting Internet users to a website that competed with a complainant’s business); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because that respondent used the disputed domain name to advertise goods and services of a complainant’s commercial competitors, thereby disrupting that complainant’s business)

It is undisputed that the contested domain name redirects Internet users to a website which displays content pulled directly from Complainant’s official site, as well as content relating to Complainant’s commercial competitors. Internet users searching for information about Complainant are therefore likely to become confused as to the possibility of Complainant’s sponsorship of, or affiliation with, the resolving website. Respondent attempts to profit from this confusion by driving Internet traffic to its own website. Respondent’s registration and use of the <clopaygaragedoors.com> domain name in this manner constitutes evidence of bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant’s website to its own site, likely profiting in the process); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that a respondent’s use of a disputed domain name to advertise car dealerships that competed with a complainant’s business would likely confuse Internet users as to the possible sponsorship of or affiliation with those competing dealerships, which was evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv)).

For these reasons, the Panel finds that Complainant has met the proof requirements of Policy ¶ 4(a)(iii).

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

Accordingly, it is Ordered that the <clopaygaragedoors.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.

Terry F. Peppard, Panelist

Dated: May 18, 2011