Pella Corporation v. PrivacyProtect.org / Domain Admin
Claim Number: FA1202001427714
Complainant is Pella Corporation (“Complainant”), represented by Patricia I. Reding of Faegre Baker Daniels LLP, Minnesota, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pellastormdoors.com>, registered with Registermatrix.com Corp.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2012; the National Arbitration Forum received payment on February 2, 2012.
On February 16, 2012, Registermatrix.com Corp. confirmed by e-mail to the National Arbitration Forum that the <pellastormdoors.com> domain name is registered with Registermatrix.com Corp. and that Respondent is the current registrant of the name. Registermatrix.com Corp. has verified that Respondent is bound by the Registermatrix.com Corp. 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 February 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 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@pellastormdoors.com. Also on February 17, 2012, 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 March 16, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <pellastormdoors.com> domain name is confusingly similar to Complainant’s PELLA mark.
2. Respondent does not have any rights or legitimate interests in the <pellastormdoors.com> domain name.
3. Respondent registered or use the <pellastormdoors.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
a) Complainant has rights in the PELLA mark;
b) Complainant has multiple registrations for the PELLA mark (e.g., Reg. No. 811,964 registered August 2, 1966) with the United States Patent and Trademark Office (“USPTO”);
c) Complainant has registered the PELLA mark (Reg. No. 640,948 registered September 16, 1994) with IP Australia (“IPA”);
d) Complainant uses its mark in connection with the manufacture of windows, doors, and related products including storm doors;
e) Respondent registered the <pellastormdoors.com> domain name on February 4, 2005;
f) The <pellastormdoors.com> domain name is confusingly similar to the PELLA mark;
g) Respondent is not commonly known by the <pellastormdoors.com> domain name;
h) The <pellastormdoors.com> domain name resolves to a website displaying links to third-party websites that compete with Complainant;
i) Respondent registered and is using the disputed domain name in order divert Internet users away from Complainant;
j) Respondent registered and is using the disputed domain name to take commercial advantage of Internet users’ mistakes as to the source of the <pellastormdoors.com> domain name; and
k) Respondent had constructive knowledge of Complainant’s rights in the PELLA mark prior to its registration and use of the <pellastormdoors.com> domain name.
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.
(4) 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.”).
Complainant contends that it has rights in the PELLA mark. Complainant asserts that it has registered the PELLA mark (e.g., Reg. No. 811,964 registered August 2, 1966) multiple times with the USPTO. Complainant provides that it registered the PELLA mark (Reg. No. 640,948 registered September 16, 1994) with the IPA. Panels have found that the registration of a mark with a national trademark authority is sufficient to determine that a complainant owns rights in a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s national trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also 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). The Panel therefore finds that Complainant has rights in the PELLA mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that the <pellastormdoors.com> domain name is confusingly similar to the PELLA mark. The Panel finds that Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is required of a domain name and therefore irrelevant to a Policy ¶ 4(a)(i) analysis. See 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); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel also finds that Respondent’s addition of the descriptive term “storm doors,” which describes a large part of Complainant’s business, fails to differentiate the disputed domain name from Complainant’s mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel finds that Respondent’s addition of a gTLD and a descriptive term failed to distinguish the disputed domain name from the PELLA mark and thus that the <pellastormdoors.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant argues that Respondent is not a licensee or predecessor of interest of Complainant. The WHOIS record for the disputed domain name lists “PrivacyProtect.org / Domain Admin” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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); 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 asserts that the <pellastormdoors.com> domain name is not used in a way which confers rights or legitimate interests in the disputed domain name. Complainant contends that the disputed domain name resolves to a website which provides links to Complainant’s competitors under headings such as “Storm Doors” and “Replacement Windows.” Panels have found that the display of competing links on a disputed domain name is not a protected use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name as it finds that Respondent’s use of the <pellastormdoors.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith. Complainant asserts that Respondent’s registration and use of the <pellastormdoors.com> domain name was intended to disrupt Complainant’s flow of business under the PELLA mark by diverting Internet users from Complainant’s website to its own, where it displays links to Complainant’s competitors. Panels have found that the display of links to a complainant’s competitors on a disputed domain name’s resolving website is disruptive. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent’s registration and use of the disputed domain name are a product of bad faith because it is disruptive pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent’s bad faith is also demonstrated by Respondent’s intent to take commercial advantage of Internet users’ confusion caused by Respondent as to the source of the disputed domain name. Complainant asserts that the <pellastormdoors.com> domain name resolves to a website which displays links to competitors of Complainant’s under headings such as “Custom French Doors” and “Exterior Doors.” Complainant alleges that Respondent receives compensation for the display of these links. The Panel infers that Respondent does commercially gain from the display of these links. The Panel finds bad faith as it finds that Respondent registered and is using the disputed domain name to create confusion as to the source of the disputed domain name and then take commercial advantage of Internet users’ mistakes caused by this confusion under 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 Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant asserts that its trademark registrations for the PELLA mark were sufficiently distinctive or famous well before the registration of the disputed domain name. Complainant therefore argues that Respondent has constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pellastormdoors.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 26, 2012
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