Andersen Corporation v. Khairul Mus
Claim Number: FA1107001398706
Complainant is Andersen Corporation (“Complainant”), represented by William D. Schultz of Merchant & Gould P.C., Minnesota, USA. Respondent is Khairul Mus (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emco-storm-doors.com>, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2011; the National Arbitration Forum received payment on July 14, 2011.
On July 15, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <emco-storm-doors.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@emco-storm-doors.com. Also on July 18, 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 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <emco-storm-doors.com> domain name is confusingly similar to Complainant’s EMCO mark.
2. Respondent does not have any rights or legitimate interests in the <emco-storm-doors.com> domain name.
3. Respondent registered and used the <emco-storm-doors.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Andersen Corporation, owns the EMCO mark. Complainant registered its mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,421,492 registered January 16, 2001). The mark is used by Complainant in connection with the manufacture of windows and doors, especially storm doors.
Respondent, Khairul Mus, registered the <emco-storm-doors.com> domain name on January 18, 2011. The disputed domain name resolves to a website which displays links to products competing with those Complainant sells, namely windows and doors.
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 rights in the EMCO mark. The registration of a mark with a federal trademark authority has been found sufficient to demonstrate rights in a mark. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority). These rights fulfill the Policy requirements despite the location of the respondent. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country). Complainant has provided the Panel with evidence of its registration of the EMCO (Reg. No. 2,421,492 registered January 16, 2001) mark with the USPTO. The Panel thus finds that Complainant has established rights in the EMCO mark under Policy ¶ 4(a)(i).
Complainant contends that the <emco-storm-doors.com> domain name is confusingly similar to its EMCO mark. Respondent makes the following changes to the EMCO mark within the disputed domain name: the addition of the descriptive terms “storm” and “doors,” the addition of hyphens between the words in the domain name, and the addition of the generic top-level domain (“gTLD”) “.com.” Previous panels have found that each of these changes is insignificant for the purposes of Policy ¶ 4(a)(i) and they do not negate a finding of confusing similarity. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also 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 finds that, because Complainant’s EMCO mark remains prominent and clearly identifiable within the domain name, the <emco-storm-doors.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case in support of this assertion. Therefore, the burden now shifts to Respondent to prove that these allegations are false. 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)); 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 Policy.”). Respondent’s failure to respond to the Complaint, however, gives the Panel license to infer the truth of Complainant’s statements as is seen by cases such as Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) and Branco do Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000). The Panel will still review the record to determine if Respondent has any rights or legitimate interests in the disputed domain names.
One factor in determining whether a respondent has rights or legitimate interests in a domain name is deducing whether that respondent is commonly known by the disputed domain name in the case. Ascertaining whether a respondent is commonly known by a domain name is done by reviewing all information available, including the WHOIS record for the domain name. 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 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). The WHOIS information for the <emco-storm-doors.com> domain name lists “Khairul Mus” as the domain name registrant. Complainant contends that Respondent is not authorized to be using its mark. There is no additional information on the record suggesting otherwise. Therefore, the Panel finds that Respondent is not commonly known by its <emco-storm-doors.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant further argues that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <emco-storm-doors.com> domain name resolves to a website which displays links to products such as storm doors, sliding glass doors, and windows. When clicked, such links resolve to a directory of Google AdSense listings for companies selling products in competition with Complainant. The display of such competing links on the disputed domain names’ resolving website, the Panel finds, is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See 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)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends next that Respondent’s registration and use of the disputed domain name were done in bad faith because they were done with the intent to disrupt the reasonable flow of Complainant’s business. The display of links to competing services, as seen in Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) and Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), is frequently found to be disruptive to Complainant’s business. The disputed domain name resolves to a website which displays links with headers such as “Interior Sliding Doors,” “Official Window Guide,” and “Wooden Doors.” As a result, the Panel finds that Respondent’s registration and use of the disputed domain name was done to disrupt Complainant’s sale of similar windows and doors pursuant to Policy ¶ 4(b)(iii).
Complainant contends that the bad faith behind Respondent’s registration and use of the disputed domain name is also demonstrated by the motivation for commercial gain through the likelihood of confusion generated by the confusingly similar domain name. Respondent’s <emco-storm-doors.com> domain name has been found to be confusingly similar to Complainant’s EMCO mark. The EMCO mark is used in connection with the sale of windows and doors; the <emco-storm-doors.com> domain name is used to display links to competing products. Therefore, Internet users who arrive at the disputed domain name’s website will, given the similarity of the domain name and the similarity of products offered, believe the <emco-storm-doors.com> domain name is in some way affiliated with or sponsored by Complainant. Once this presumption is established in the minds of Internet users, the users will act on the good will developed in connection with the EMCO mark and click through the links displayed on the disputed domain name. It is from this Internet traffic clicking through the links that the Panel infers that Respondent is receiving compensation. This motivation to take advantage of Internet users’ confusion demonstrates Respondent’s bad faith registration and use of the <emco-storm-doors.com> domain name under Policy ¶ 4(b)(iv). 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)(iv) 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 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emco-storm-doors.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 12, 2011
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