Pella Corporation v. Above.com Domain Privacy
Claim Number: FA1107001397607
Complainant is Pella Corporation (“Complainant”), represented by Patricia I. Reding of Faegre & Benson, LLP, Minnesota, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pellacorp.com>, registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES ABOVE.COM PTY LTD.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 7, 2011; the National Arbitration Forum received payment on July 8, 2011.
On July 8, 2011, MELBOURNE IT, LTD. d/b/a INTERNET NAMES ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <pellacorp.com> domain name is registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name. MELBOURNE IT, LTD. d/b/a INTERNET NAMES ABOVE.COM PTY LTD. has verified that Respondent is bound by the MELBOURNE IT, LTD. d/b/a INTERNET NAMES ABOVE.COM PTY LTD. 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 July 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@pellacorp.com. Also on July 11, 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 August 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <pellacorp.com> domain name is confusingly similar to Complainant’s PELLA mark.
2. Respondent does not have any rights or legitimate interests in the <pellacorp.com> domain name.
3. Respondent registered and used the <pellacorp.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pella Corporation, is large manufacturer and distributor of windows, doors, and other home improvement products. Complainant owns a wide array of trademark registrations for the PELLA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 811,964 registered August 2, 1966). Complainant uses the mark as its brand name in the home improvement business.
Respondent, Above.com Domain Privacy, registered the disputed domain name on March 26, 2009. The disputed domain name resolved to a website offering links to Complainant’s competitors in the home improvement industry until the Complainant initially contacted Respondent about this action. At that time, Respondent changed the links on the website to third parties unrelated to Complainant.
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 contends that it has established its rights in the PELLA mark by registering that mark with the USPTO. Complainant has offered what the Panel finds to be sufficient evidence in the form of trademark certificates to verify those registrations. Therefore, the Panel finds that Complainant has established its rights in the PELLA mark under Policy ¶ 4(a)(i) even though it has not registered the mark in Respondent’s country of residence as that is unnecessary under the UDRP. 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant also contends that Respondent’s disputed domain name is confusingly similar to its PELLA mark. The disputed domain name includes the entire mark adding the generic term “corp” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent has retained the distinctive characteristics of Complainant’s PELLA mark in its disputed domain name and that the two are confusingly similar under Policy ¶ 4(a)(i). See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Complainant has offered sufficient evidence in this matter to make what the Panel finds to be a prima facie case indicating Respondent lacks rights or legitimate interests in the disputed domain name. Because of that, Respondent now bears the burden of proving that it does retain rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent has not only failed to rebut Complainant’s prima facie case in this matter, it has failed to file any type of Response whatsoever. That failure allows this Panel to assume Respondent lacks rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will still examine the record in its entirety before making a determination regarding Respondents rights or legitimate interests in the disputed domain name within the framework of Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “Above.com Domain Privacy,” which is a privacy service to hide the actual identity of the domain name owner. No other evidence in the record suggests a relationship between the Respondent and its disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was 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 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).
Complainant also alleges that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. Complainant bases this allegation on both Respondent’s prior and current use. Both uses fail to meet the criteria of a bona fide offering of goods or services or a legitimate noncommercial or fair use. The prior use resolved the disputed domain name to a site offering links to Complainant’s competitors. The current use also offers links, but to third-parties unrelated to Complainant’s business. The Panel finds that neither use constitutes a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)).
Finally, Complainant alleges that Respondent’s attempts to sell the disputed domain name to Complainant indicate that Respondent has no rights or legitimate interests in the disputed domain name. During Complainant’s initial negotiations with Respondent, Complainant received an offer to purchase the disputed domain name from Respondent for $500.00. The Panel finds that Respondent’s willingness to sell the disputed domain name indicates that it does have rights or 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
Complainant argues that Respondent attempted to sell the disputed domain name to Complainant evidencing bad faith registration and use on the part of Respondent. Respondent tendered an offer of sale to Complainant in the amount of $500.00. Given the fact that the sum offered is greater than any out of pocket costs associated with registering the disputed domain name, the Panel finds that Respondent’s willingness to sell the disputed domain name as evidencing that it was registered and used in bad faith under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also 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).”).
Complainant also argues that Respondent’s prior use of the disputed domain name disrupted its business providing affirmative evidence of bad faith registration and use. Respondent initially resolved the disputed domain name to a site offering links to Complainant’s competitors in the home improvement industry. Internet users may arrive at the linked sites and purchase goods from Complainant’s competitors. The Panel finds that using the disputed domain name to offer links to Complainant’s competitors affirmatively indicates bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Finally, Complainant argues that Respondent’s current and prior uses of the disputed domain name were for its own commercial gain constituting bad faith registration and use. Respondent’s current and prior uses both include links to third-parties. Internet users may arrive at Respondent’s website via the confusingly similar domain name and then click on one of the links offered. Presumably, each time this happens Respondent receives a small fee from the owner of the linked site. Whether the link was to Complainant’s competitor or an unrelated third-party is immaterial because the Panel finds that in both instances Respondent is attempting to commercially gain from the confusion created by the disputed domain name constituting bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pellacorp.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 15, 2011
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