JELD-WEN, inc. v. Flush Inc.
Claim Number: FA1112001418629
Complainant is JELD-WEN, inc. (“Complainant”), represented by Steven E. Klein of Stoel Rives LLP, Oregon, USA. Respondent is Flush Inc. (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jwparts.com> and <jeldwenparts.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2011; the National Arbitration Forum received payment on December 6, 2011.
On December 7, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <jwparts.com> and <jeldwenparts.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 December 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@jwparts.com and postmaster@jeldwenparts.com. Also on December 9, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 January 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <jwparts.com> domain name is confusingly similar to Complainant’s JW mark.
Respondent’s <jeldwenparts.com> domain name is confusingly similar to Complainant’s JELD-WEN mark.
2. Respondent does not have any rights or legitimate interests in the <jwparts.com> and <jeldwenparts.com> domain names.
3. Respondent registered and used the <jwparts.com> and <jeldwenparts.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, JELD-WEN, inc., manufactures windows and doors. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for both the JELD-WEN (e.g. Reg. No. 1,388,339 registered April 1, 1986) and JW marks (e.g. Reg. No. 4,005,416 registered August 2, 2011).
Respondent, Flush Inc., registered the <jwparts.com> domain name on September 14, 2011and the <jeldwenparts.com> domain name on October 14, 2010. The <jwparts.com> domain name resolves to a website purporting to sell Complainant’s products, displaying Complainant’s marks across the top of the page. The <jeldwenparts.com> domain name resolves to a parked website featuring pay-per-click links to unrelated third-party sites.
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.
Previous panels have agreed that registration of a mark with a federal trademark authority is sufficient to establish rights in the mark for the purposes of Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Complainant holds registrations with the USPTO for both the JELD-WEN (e.g. Reg. No. 1,388,339 registered April 1, 1986) and JW marks (e.g. Reg. No. 4,005,416 registered August 2, 2011). The Panel holds that these registrations confer rights in the marks to Complainant pursuant to Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
Complainant contends that the <jwparts.com> domain name is confusingly similar to Complainant’s JW mark under Policy ¶ 4(a)(i). The disputed domain name includes the generic term “parts” and affixes the generic top-level domain name (“gTLD”) “.com.” UDRP precedent indicates that neither of these additions to Complainant’s mark is sufficient to remove a disputed domain name from the realm of confusing similarity. See Oki Data Am. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (finding that the <okidataparts.com> domain name is confusingly similar to the complainant’s OKIDATA mark because “…the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); 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 concludes that Respondent’s <jwparts.com> domain name is confusingly similar to Complainant’s JW mark under Policy ¶ 4(a)(i), and that
Complainant also contends that the <jeldwenparts.com> domain name is confusingly similar to Complainant’s JELD-WEN mark under Policy ¶ 4(a)(i). This disputed domain name also includes the generic term “parts” and affixes the generic top-level domain name (“gTLD”) “.com.” Neither of these changes defeats a claim of confusing similarity. See Oki Data Am. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (finding that the <okidataparts.com> domain name is confusingly similar to the complainant’s OKIDATA mark because “…the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); 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 <jeldwenparts.com> domain name also removes the hyphen from Complainant’s JELD-WEN mark. This minor alteration to Complainant’s mark is also insufficient to distinguish Complainant’s mark under Policy ¶ 4(a)(i). See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark). Respondent’s <jeldwenparts.com> domain name is confusingly similar to Complainant’s JELD-WEN mark under Policy ¶ 4(a)(i).
.
The Panel opines that Policy ¶ 4(a)(i) has been satisfied.
From the outset, Complainant shoulders the initial burden of presenting a prima facie case. Complainant has satisfied its burden in the instant case. Once this burden has been satisfied, the burden then shifts to Respondent. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Some panels have found that a Respondent’s failure to submit a Response is per se evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). Despite this, the Panel will continue to examine the record in the interest of fairness in order to determine whether such rights or legitimate interests do exist under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by either disputed domain pursuant to Policy ¶ 4(c)(ii), arguing that neither domain name contains any portion or variation of Respondent’s name or any name closely relating to Respondent. In fact, the WHOIS information identifies Respondent as “Flush Inc.,” which the Panel agrees is not at all similar to the <jwparts.com> and <jeldwenparts.com> domain names. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Complainant further states it has never licensed or otherwise authorized Respondent to register or use any domain name incorporating Complainant’s marks. Respondent has failed to present the Panel with any evidence that it is in fact commonly known by the disputed domain name. This forces the Panel to conclude that Respondent is not commonly known by either disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also RMO, Inc. v. Burbidge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Complainant contends that neither site is being used in accordance with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii).The <jwparts.com> domain name resolves to a website purporting to sell Complainant’s products, displaying Complainant’s marks across the top of the page. Previous panels have refused to recognize rights or legitimate interests where a disputed domain name is being used to sell Complainant’s goods without Complainant’s consent. See Pitney Bowes Inc. v. Stank, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). The Panel holds that the <jwparts.com> is being used without rights or legitimate interests under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The <jeldwenparts.com> domain name resolves to a parked website featuring pay-per-click links to unrelated third-party sites. Previous panels have also refused to recognize rights or legitimate interests where a disputed domain name is being used to house pay-per-click links to unrelated third-party sites. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also 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)). The Panel holds that the <jeldwenparts.com> domain name is also being used without rights or legitimate interests under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel opines that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s registration and use of the <jwparts.com> domain name, which resolves to a website purporting to sell Complainant’s products, represents bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). Through its operation of the confusingly similar domain name, Respondent seeks to draw Internet users to its site who had intended to visit Complainant’s official site. Once these visitors arrive at Respondent’s site, they are able to buy what purport to be Complainant’s products. Some number of visitors will inevitably purchase products from Respondent, when their original intent was to buy the same products from Complainant. The Panel finds this to represent bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Complainant further alleges that Respondent’s registration and use of both disputed domain names exhibits bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). The Panel infers that Respondent derives a commercial benefit from the operation of each site, whether it be through selling Complainant’s products at the <jwparts.com> domain name or collecting click-through revenues at the <jeldwenparts.com> domain name. Respondent’s use of a confusingly similar domain name for each site suggests an intent to create confusion among Internet users as to whether Respondent’s sites are affiliated with or endorsed by Complainant. Respondent uses this confusion to wrongfully associate itself with Complainant’s business, benefitting from Complainant’s good will. The Panel finds that Respondent’s creation of confusion as to its affiliation with Complainant in order to realize a commercial gain constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant also contends that Respondent could not have registered and used the disputed domain names without actual or constructive knowledge of Complainant and its rights in the JW and JELD-WEN marks. While constructive notice is typically not enough to support a finding of bad faith registration and use, the Panel may nonetheless find bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel finds that Complainant has submitted sufficient evidence to support the conclusion that that Respondent has actual knowledge of Complainant's mark. Respondent, therefore, has registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel opines that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jwparts.com> and<jeldwenparts.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 10, 2012
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