JELD-WEN, inc. v. randy@atriumaz.com
Claim Number: FA1202001428119
Complainant is JELD-WEN, inc. (“Complainant”), represented by Nathan C. Brunette of Stoel Rives LLP, Oregon, USA. Respondent is randy@atriumaz.com (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jeld-wenaz.com> and <jeld-wenarizona.com>, registered with Go Daddy.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2012; the National Arbitration Forum received payment on February 3, 2012.
On February 6, 2012, Go Daddy confirmed by e-mail to the National Arbitration Forum that the <jeld-wenaz.com> and <jeld-wenarizona.com> domain names are registered with Go Daddy and that Respondent is the current registrant of the names. Go Daddy has verified that Respondent is bound by the Go Daddy 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 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 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@jeld-wenaz.com, postmaster@jeld-wenarizona.com. Also on February 13, 2012, 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 March 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a Response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant owns trademark registrations for its JELD-WEN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,388,339 registered April 1, 1986), and uses it to offer window and door manufacturing and related services.
Respondent formerly used the <jeld-wenaz.com> and <jeld-wenarizona.com> domain names to resolve to a competing website, and now offers both domain names for sale.
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 has provided the Panel with evidence of its registration of the JELD-WEN mark with the USPTO (e.g., Reg. No. 1,388,339 registered April 1, 1986) in support of its claim to rights in the mark. Previous panels have held that registration of a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See 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); see also 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). The Panel finds that Complainant’s registration of the mark with the USPTO is sufficient to confer rights in the mark under Policy ¶ 4(a)(i).
Respondnet’s <jeld-wenaz.com> and <jeld-wenarizona.com> domain names both wholly incorporate Complainant’s mark, and merely add the geographic terms “az” or “arizona” and affixing the gTLD “.com.” Past panels have determined that the attachment of a geographic identifier to a complainant’s mark does not create a distinct domain name under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). The affixation of a gTLD is irrelevant to Policy ¶ 4(a)(i) confusingly similar analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark within the meaning of Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied 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 contends that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). The WHOIS information lists the domain name registrant as “randy@atriumaz.com” for each of the disputed domain names. The Panel finds that there is no similarity between “randy@atriumaz.com” and the <jeld-wenaz.com> and <jeld-wenarizona.com> domain names to support a finding that Respondent is commonly known by either of the disputed domain names. The Panel notes that Respondent has failed to submit a Response and there is no evidence in the record to suggest that Respondent is commonly known by either domain name. Thus, the Panel concludes that Respondent is not commonly known by either disputed domain names under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant alleges that the websites housed at the disputed domain names currently resolve to messages indicating that the domain names are for sale, but previously resolved to a website offering competing door and window products. Past panels have agreed that the use of a confusingly similar domain name to redirect Internet users to a site offering competing products or services illustrates a respondent’s lack of rights or legitimate interests in a disputed domain name. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”). The Panel finds that Respondent’s prior use of the disputed domain names does not constitute 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).
Complainant argues that Respondent’s offering of the disputed domain names for sale to the public further demonstrates Respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii). Previous panels have interpreted a respondent’s willingness to sell a domain name to the public as evidence that the respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name). The Panel accordingly finds that Respondent lacks rights or legitimate interests under Policy ¶ 4(a(ii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s solicitation of a purchaser for the disputed domain names suggests bad faith registration and use under Policy ¶ 4(b)(i). Previous panels have agreed that a respondent’s offer to sell a disputed domain name to the general public is grounds for a finding of bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith).
Respondent’s former use of the disputed domain names to resolve to sites offering products and services that directly compete with those offered by Complainant exhibits Respondent’s attempt to disrupt Complainant’s business under Policy ¶ 4(b)(iii). Respondent’s use of confusingly similar domain names substantially increases the likelihood that consumers will mistakenly visit Respondent’s sites when they had intended to visit Complainant’s and purchase products that directly compete with Complainant’s products. This constitutes bad faith registration and use within the meaning of Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Respondent’s former use of confusingly similar domain names demonstrates intent to create confusion as to Complaint’s endorsement of, or affiliation with, Respondent’s sites. Respondent seeks to use this confusion to drive Internet traffic to its site, which no doubt generates revenue for Respondent. This constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
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 <jeld-wenaz.com> and <jeld-wenarizona.com> domain names be TRANSFERRED form Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 20, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page