national arbitration forum

 

DECISION

 

Pella Corporation v. homegroup / Domain Administrator

Claim Number: FA1112001419244

 

PARTIES

Complainant is Pella Corporation (“Complainant”), represented by Patricia I. Reding of Faegre & Benson LLP, Minnesota, USA.  Respondent is homegroup / Domain Administrator (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pelladoors.com>, registered with eNom, Inc.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2011; the National Arbitration Forum received payment on December 12, 2011.

 

On December 9, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <pelladoors.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 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@pelladoors.com.  Also on December 13, 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 January 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <pelladoors.com> domain name is confusingly similar to Complainant’s PELLA mark.

 

2.    Respondent does not have any rights or legitimate interests in the <pelladoors.com> domain name.

 

3.    Respondent registered and used the <pelladoors.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Pella Corporation, is a designer and manufacturer of various models of windows and doors.  Complainant advertises its products under the PELLA mark.  Complainant owns several trademark registrations with United States Patent and Trademark Office ("USPTO") for its PELLA mark (e.g., Reg. No. 811,964 registered August 2, 1966). 

 

Respondent, homegroup / Domain Administrator, registered the <pelladoors.com> domain name on October 11, 2004.  Respondent’s domain name resolves to a website featuring many third-party links, including those that resolve to Complainant’s competitors in the window and door industry. 

 

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 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.

 

Identical and/or Confusingly Similar

 

Complainant presents several trademark registrations that it owns with the USPTO for its PELLA mark (e.g., Reg. No. 811,964 registered August 2, 1966).  The Panel finds that Complainant has submitted sufficient evidence to establish rights in the PELLA mark under Policy ¶ 4(a)(i).  See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office). 

 

The second issue to resolve under a Policy ¶ 4(a)(i) analysis is whether the disputed domain name is identical or confusingly similar to Complainant’s asserted mark.  Complainant contends that Respondent’s <pelladoors.com> domain name is confusingly similar to Complainant’s PELLA mark.  The Panel notes that the domain name contains Complainant’s entire mark in addition to the descriptive term “doors” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of the term “doors” only adds to the confusingly similar nature of the domain name and that the gTLD is irrelevant under Policy ¶ 4(a)(i).  See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); 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).  Therefore, the Panel finds that Respondent’s <pelladoors.com> domain name is confusingly similar to Complainant’s PELLA mark under Policy ¶ 4(a)(i). 

 

The Panel finds that Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights and legitimate interests in the <pelladoors.com> domain name.  Complainant is required to make a prima facie case in support of these allegations under Policy ¶ 4(a)(ii).  Once Complainant has produced a prima facie case, the burden of proof shifts to Respondent to show that it possesses rights or legitimate interests in the disputed domain name. See 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.”).  The Panel finds that Complainant has produced a prima facie case.  Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <pelladoors.com> 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). However, the Panel has decided to evaluate the evidence on record according to the Policy ¶ 4(c) factors in making its determinations under Policy ¶ 4(a)(ii). 

 

Complainant states that “Respondent is not and never has been, a licensee of Complainant or of Complainant’s predecessors in interest.”  The Panel also notes that the WHOIS information does not indicate that Respondent is commonly known as the <pelladoors.com> domain name, as the registrant is “homegroup / Domain Administrator.”  Based upon this information and the lack of a Response from Respondent, the Panel concludes that Respondent is not commonly known by the disputed domain name under 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 Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Complainant has submitted screen shot evidence to show what Respondent’s resolving website contains and displays.  According to this evidence Respondent is using the domain name to house various third-party links to competing window and doors businesses under headings such as, “Replacement Window Sale,” “Renewal by Andersen Sale,” “Patio Doors Available,” and many others.  The Panel assumes that Respondent commercially profits from displaying such links on its website.  Therefore, the Panel finds that Respondent’s use of the <pelladoors.com> domain name does not amount to 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant 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)).

 

The Panel finds that Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

Complainant has presented evidence to show that Respondent is using the disputed domain name to resolve to a website featuring many third-party links to competing window and door companies.  The Panel finds that such use inherently disrupts Complainant’s business as Internet users are diverted to these competing companies.  Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); 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).

 

Further, Complainant contends that Respondent is likely profiting from its hosting of a website containing third-party links to Complainant’s competitors.  The Panel finds that this is likely given the nature of the links contained on Respondent’s website and the fact that no other content is present that would indicate another purpose for the domain name.  Because Respondent has chosen to use Complainant’s mark in its domain name to capture Internet users who are seeking Complainant’s website the Panel finds that Respondent has registered and used the <pelladoors.com> domain name in violation of Policy ¶ 4(b)(iv).  See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

 

Complainant claims that at the time Respondent registered the <pelladoors.com> domain name, the PELLA mark was distinctive and famous enough to give Respondent constructive notice of Complainant’s rights in the mark.  Generally speaking under the UDRP, constructive notice has not been sufficient for a panel to find bad faith under Policy ¶ 4(a)(iii), whereas actual knowledge is sufficient for such a finding. 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 Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well.  Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed.  Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the RADIO & RECORDS mark.  Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”). Under the circumstances discussed above in reference to Respondent’s use of the disputed domain name, the Panel finds that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii) as it had actual knowledge of Complainant and its rights in the PELLA mark. 

 

The Panel finds that Policy ¶ 4(a)(iii) is satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <pelladoors.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  January 24, 2012

 

 

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