Marvin Lumber and Cedar Co. d/b/a Marvin Windows and Doors v. Integrity Windows & Door / Lana Correia
Claim Number: FA1108001401448
Complainant is Marvin Lumber and Cedar Co. d/b/a Marvin Windows and Doors (“Complainant”), Minnesota, USA. Respondent is Integrity Windows & Door / Lana Correia (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <integritywindowsanddoors.com>, registered with Register.Com, Inc.
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.
Hon. Sir Ian Barker as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 2, 2011; the National Arbitration Forum received payment on August 2, 2011.
On August 5, 2011, Register.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <integritywindowsanddoors.com> domain name is registered with Register.Com, Inc. and that Respondent is the current registrant of the name. Register.Com, Inc. has verified that Respondent is bound by the Register.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 August 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 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@integritywindowsanddoors.com. Also on August 8, 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.
A timely Response was received and determined to be deficient on August 30, 2011, because the submitted document exceeded the 10mb file size limit. However, in the interests of justice, the Panelist decided to admit the Response.
On September 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant has been a manufacturer of wood and wood-clad windows and doors since 1950. In 1996, the Complainant formed Integrity Windows Inc. as a subsidiary to manufacture and distribute fiberglass windows and doors throughout the United States.
The Complainant registered the trademark ‘Integrity’ with the United States Patent & Trademark Office on January 9, 1996. Since then, the Complainant’s products have been marketed under that trademark.
The Respondent registered the disputed domain name on March 1, 2011. On its website, the Respondent offers to sell windows and doors manufactured by the Complainant and by some of its competitors.
In May 2011 and in June 2011, the Complainant sent the Respondent ‘cease and desist’ letters to which there were no replies.
The disputed domain name is confusingly similar to the Complainant’s registered trademark. The case is similar to Andersen Corp. v. Turner FA 1382529 (Nat. Arb. Forum May 12, 2011) where a Panel found the domain name <andersonwindowsanddoors.org> confusingly similar to the registered trademark ‘Andersen’.
The Respondent has no rights or legitimate interests in the Complainant’s mark such as would permit the Respondent to reflect the mark in a domain name. The Complainant gave it none. None of the defences available under Paragraph 4(c) of the Policy is available to the Respondent. Although the Respondent identifies itself on the website as ‘Integrity Windows & Doors’, there is no business registered under that name in the state of California.
The disputed domain name was registered and is being used in bad faith. The Respondent’s website, displaying images of windows and doors, is likely to confuse Internet users into believing that the Respondent has some connection with or endorsement from the Complainant. The Respondent is using the Complainant’s mark in an illegitimate way for its own commercial benefit. Since the Respondent is competing with the Complainant in selling doors and windows, it is reasonable to assume that it would have had actual knowledge at the time of registration of the disputed domain name of the Complainant’s mark – or at least constructive knowledge.
The Respondent’s activities tarnish the Complainant’s mark which the Complainant has developed over many years, thus accumulating considerable goodwill for the Complainant as a source of quality window and door products.
B. Respondent
The Respondent’s rather unstructured response – obviously prepared without legal assistance – seems to focus on the proposition that the word ‘integrity’ is a generic expression and that the Respondent is entitled to use this word in connection with its business and to describe its service. The Response included quotations from various books concerning the concept of integrity and subjective interpretations thereof.
The Respondent claims to be a small local community business combating a large business in the form of the Complainant. The principals of the Respondent (Mr and Mrs Correia) have no desire “to infringe on, manipulate, benefit from, obscure unlawful association with the Complainant or its affiliates”.
1. The disputed domain name is confusingly similar to the Complainant’s registered trademark.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name.
3. The disputed domain name has been registered and is being used in bad faith.
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."
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.
The disputed domain name is confusingly similar to the Complainant’s registered trademark. The trademark is incorporated in the disputed domain name in its entirety. The words ‘windows’ and ‘doors’ are merely added descriptive terms which do not negate a finding of confusing similarity under the Policy. The trademarked word is a dominant component of the domain name. The addition of words with an obvious relationship to the Complainant’s business enhance the perception of confusing similarity.
The Respondent’s argument overlooks the fact that the Complainant has a registered trademark for the word ‘Integrity’. Whilst one may wonder how such a generic word achieved trademark registration, the Panel cannot look behind or ‘second-guess’ this registration.
The Complainant need only prove that it has rights in a trademark to which the disputed domain name is confusingly similar. This it has done and therefore Paragraph 4(a)(i) of the Policy has been satisfied.
Under Paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent lacks rights or interests in the disputed domain name. The burden then shifts to the Respondent to show that it comes within one of the limbs of Paragraph 4(c) of the Policy.
The Complainant gave the Respondent no rights to reflect its trademark in a domain name.
The Respondent does not qualify under Paragraph 4(c)(i) of the Policy. Because of the references to the Complainant’s products and to those of its competitors on the Respondent’s website, it cannot be held that there was a bona fide offering of goods or services. The appropriation of the Complainant’s trademark to market products that compete with the Complainant’s products does not qualify under Paragraph 4(c)(ii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003).
The other limbs of Paragraph 4(c) can have no possible application here. Hence, the Complainant has satisfied Paragraph 4(a)(iii) of the Policy.
Because of the fame of the Complainant’s mark in this specialized area and the involvement of the Respondent in the business of selling windows and doors, it is easily inferred that the Respondent well knew of the Complainant and its products – marketed under the trademark – when the Respondent registered the disputed domain name earlier this year.
Because the Respondent’s website clearly creates confusion in the minds of Internet users that it may have some affiliation with the Complainant, Paragraph 4(b)(iv) of the Policy must apply to the situation. The Respondent must gain financially from marketing the Complainant’s products as well as those of the Complainant’s competitors. The Respondent’s use of the Complainant’s trademark clearly can attract internet users to the Respondent’s website. Those users may well feel that the website has some connection with the Complainant.
Paragraph 4(b)(iii) of the Policy may also apply because the Respondent’s advertising of the Complainant’s competitors’ products, must necessarily cause some disruption to the Complainant’s business.
It is no defence for the Respondent to complain that it is just a small business facing the might of a large business. The essential fact is that the Respondent has used the Complainant’s trademark in an unauthorized way and therefore Paragraph 4(a)(iii) of the Policy has been satisfied.
This case is very similar to the Andersen case referred to earlier where a similar conclusion was reached by the Panelist.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <integritywindowsanddoors.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Sir Ian Barker, Panelist
Dated: September 14, 2011
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