Marvin Lumber and Cedar Company d/b/a Marvin Windows and Doors v. Al Chan
Claim Number: FA1205001442493
Complainant is Marvin Lumber and Cedar Company d/b/a Marvin Windows and Doors (“Complainant”), Minnesota, USA. Respondent is Al Chan (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <integritywindowohio.com>, registered with GoDaddy.com, LLC.
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.
Mr. Maninder Singh as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2012; the National Arbitration Forum received payment on May 4, 2012.
On May 4, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <integritywindowohio.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 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@integritywindowohio.com. Also on May 7, 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.
A timely Response was received and determined to be complete on May 29, 2012.
An Additional Submission was received from Complainant on May 30, 2012 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On May 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant in the present Complaint made following contentions : -
· Complainant, Marvin Windows and Doors, claims to be in the business of manufacturing and distributing high-quality wood and clad wood windows and doors since 1950. It claims that, in the year 1996, Integrity Windows, Inc. was formed as an affiliate under common control of Complainant for manufacturing and distributing a line of fiberglass-clad wood windows and doors, as well as all-fiberglass windows and doors, and further claims to have been in continuous operation ever since. Complainant also claims to have United States Patent and Trademark Office (“USPTO”) registrations for the INTEGRITY mark (e.g., Reg. No. 1,947,296 registered January 9, 1996) it claims to distribute Integrity® brand windows and doors throughout USA and abroad.
· Complainant contends that Respondent operates a website <integritywindowohio.com> (Ex. 5) which was registered by Respondent on February 25, 2008 (Ex.1). The Claimant alleges that Respondent offers for sale and install lower-quality vinyl window products, manufactured by a company called “Polaris”.
· Complainant contends that it came to know in May 2011 that Respondent is infringing Complainant’s mark, INTEGRITY. Complainant claims that Complainant contacted Respondent and requested (Ex. 7) it to cease its unauthorized use of Complainant’s mark INTEGRITY for sale of Complainant’s competitors’ products. Complainant claims that in April, 2012, Complainant sent a reminder letter (Ex. 8) once again requesting Respondent to cease to infringe the use of Complainant’s mark INTEGRITY and also to transfer the disputed domain name to it. Complainant alleges that neither Respondent sent any reply nor did it mend its ways.
· The <integritywindowohio.com> domain name is confusingly similar to the INTEGRITY mark. Complainant claims that the disputed domain name <integritywindowohio.com>, incorporates Complainant’s trademark in its entirety with mere addition of “the descriptive term ‘window’ … which describe[s Integrity’s] products … to [the INTEGRITY] mark fail to adequately distinguish Respondent’s domain name from [Integrity’s] mark.” In this regard, the Complainant has relied upon the following decisions of this Forum :
(i) Andersen Corporation v. Anthony Turner, FA 1382529 (Nat. Arb. Forum May 12, 2011) - holding <andersonwindowsanddoors.org> confusingly similar to the complainant’s registered ANDERSEN mark;
(ii) Marvin Lumber & Cedar Co. v. Integrity Window & Door, FA 1401448 (Nat. Arb. Forum (Sept. 14, 2011) holding <integritywindowsanddoors.com> confusingly similar to complainant’s registered INTEGRITY mark and transferring domain to Complainant; Pella Corp. v. Azra Khan, FA 159400 (July 7, 2003) finding <pellawindows.com> confusingly similar to complainant’s registered PELLA mark.
· The Complainant further contends that similarly the addition of a geographic indicator, “ohio,” does not serve to distinguish Respondent’s domain from Complainant’s registered trademark. To substantiate its viewpoint, the Complainant has relied upon the following decisions of this Forum : -
(i) Nissan N. Am., Inc. v. Peter Kraft, FA 1433586 (Nat. Arb. Forum April 12, 2012) - holding <infinitioftallahassee.com> and <tallahasseeinfiniti.com> confusingly similar to complainant’s registered mark;
(ii) Victoria’s Secret Stores Brand Mgmt., Inc. v. Bruno Spinelli, FA 1355523 (Nat. Arb. Forum Dec. 4, 2010) finding <victoriassecret-brasil.com> confusingly similar to complainant’s registered mark); Nokia Corp. v. Arzanesh Nezhad Hanzali, FA 1271506 (Nat. Arb. Forum Aug. 26, 2009) - holding <nokiaglobal.com> and <irannokia.com> confusingly similar to complainant’s registered mark.
· Complainant contends that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant alleges that it is the exclusive owner of all such rights and interests. To substantiate its view point, Complainant has relied upon the decision of this Forum in Arizona State Parks Board v. Pink Banana Adventures, FA95084 (Nat. Arb. Forum September 25, 2000) – holding that “as the Complainant is the owner of the mark and has the exclusive right to use the mark, the Respondent has no rights or legitimate interest in the domain names”. Complainant claims that Respondent neither has any trademark registrations for any INTEGRITY mark nor has it obtained any license / permission from Complainant to use its mark “INTEGRITY”.
· Complainant alleges that Respondent is using the <integritywindowohio.com> domain name to host a web site which sells products and services in direct competition to Complainant’s products and services. Such use of Complainant’s mark for Respondent’s own commercial gain 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). In this regard, it has relied upon the following decisions of this Forum : -
(i) Caterpillar Inc. v. Pipetech, FA1000030 (Nat. Arb. Forum July 17, 2007) holding that no bona fide offering where respondent used complainant’s mark without authorization to attract Internet users to its web site which offered products of complainant’s competitors;
(ii) Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (same); and also in Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) - holding that no rights or legitimate interests in disputed domain where the respondent purports to resell original equipment of complainant, as well as goods of its competitors, on its website.
· The <integritywindowohio.com> domain name resolves to a website which sells products and services in direct competition with Complainant’s products and services. Respondent is attempting to attract, for commercial gain, Internet users to its website by creating confusion as to the source, sponsorship or affiliation of the disputed domain name. In this regard, Complainant has relied upon the following decisions of this Forum : -
(i) Andersen, FA 1382529 at *6 – holding that because Respondent is engaged in selling lesser-quality products manufactured by direct competitors of Complainant, it must be concluded Respondent is intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site. See id. It is reasonable to assume that customers intending to purchase genuine Integrity® window products may find Respondent’s web site instead and purchase the competing products offered via Respondent’s site under Complainant’s mark.
(ii) Andersen Corp. v. Buffalo Flash Design / Dani Sumner, FA 1377074 (Nat. Arb. Forum April 11, 2011).
· The disputed domain name is capable of creating a likelihood of confusion as to Complainant’s source, sponsorship and affiliation with the <integritywindowohio.com> domain name and resulting website, because the disputed domain name contains Complainant’s mark in its entirety and words describing Complainant’s business. Respondent is using the <integritywindowohio.com> domain name is for its own commercial benefit, and accordingly, such use constitutes bad faith registration and use under Policy 4(b)(iv). The Complainant has relied upon the following decisions of this Forum in –
(i) Caterpillar Inc. v. Pipetech, FA 1000030 (Nat. Arb. Forum July 17, 2007); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) - holding respondent’s use of the saflock.com domain name to offer goods competing with complainant’s goods evidenced bad faith registration and use pursuant to Policy 4(b)(iv);
(ii) Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the fossilwatch.com domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods);
(iii) Andersen Corp. v. Design Price Buy Inc., FA 1261838 (Nat. Arb. Forum June 16, 2009) holding bad faith registration where respondent used domain confusingly similar to complainant’s mark to sell complainant’s window products. Respondent presumably profits from such use. Andersen v. Design Price Buy, FA 1261838 at *5. “Respondent’s use of a confusingly similar domain name to sell various goods and services, including the products of Complainant’s competitors, constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use under Policy 4(b)(iii).”
(iv) Caterpillar Inc. v. Pipetech, FA 1000030 (Nat. Arb. Forum July 17, 2007);
(v) EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) – holding that bad faith where the respondent’s sites pass users through to the respondent’s competing business;
(vi) Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) - holding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy 4(b)(iii).
· Complainant alleges that its prior registration of the INTEGRITY trademark with USPTO shows that the Respondent was aware of Complainant’s rights in the mark. Given that Respondent is engaged in direct competition with Complainant, it can be inferred Respondent had actual notice as well. Registration of a confusingly similar domain name despite constructive knowledge of another’s rights is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy 4(a)(iii). In this regard, the Complainant relies upon the following decisions of this Forum in –
(i) See State Farm Mut. Auto. Ins. Co. v. Brenden Rice, FA 1002761 (Nat. Arb. Forum July 25, 2007);
(ii) Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) - holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”);
(iii) Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) - holding that “It is no defense 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.” Marvin, FA 1401448 at *7 (transferring <integritywindowsanddoors.com> to Complainant).
· Complainant claims that as a result of its considerable efforts and resources, it has built up extensive goodwill in its trademarks, and the public has come to recognize the INTEGRITY marks as signifying a source of origin for the window and door products Complainant manufactures. Respondent’s disputed domain name creates confusion, misleads internet consumers, and damages Integrity. Respondent’s activities violate both ICANN Policy and the Lanham Act, tarnish Complainant’s mark, and harm its business.
B. Respondent
Respondent in his response to the Complaint made the following contentions : -
· Respondent claims to have registered the trade name “integrity window and door” with the state of Ohio since Nov. 22, 2005 (see Exh.1). Respondent further claims to have obtained the disputed domain name <integritywindowohio.com> on Feb 25, 2008 for the purpose of promoting the business operations of Integrity Window and Door, trade name of Integrity Home Improvement and maintained the same at Godaddy.com.
· Respondent contends that the disputed domain name <integritywindowohio.com> is not identical or confusingly similar to the INTEGRITY mark of the Complainant.
· The domain name has never been offered for sale or rent to Complainant or a competitor of Complainant, in any manner or for any price, its sole purpose is the promotion of the Integrity Window and Door business entity operating from and within the Greater Cleveland, Ohio area.
· The domain name in dispute was not obtained to attract Internet users who were searching for Complainant’s sites or products but rather quickly and clearly identifies its products and their manufacturers.
· Complainant asserts Respondent’s web site displays images of windows and doors, which is likely to confuse Internet users into believing Respondent is in some way connected to Complainant. While images of windows and doors are displayed on the web site, they are readily identified by the manufacturers’ names, and are clearly not offerings of the Complainant’s products.
· Respondent has been operating under the INTEGRITY WINDOW AND DOOR mark in the State of Ohio since 2005.
· Respondent claims that it does not intentionally or knowingly infringe the “goodwill” or “trademarks” of Complainant. It claims that any potential confusion resulting from similarity in domain names are quickly clarified by the content of the respective sites. There is no reference to any products by Complainant. Complainant’s site identifies itself as a manufacturer of unique fiberglass products and provides facility for the viewer to locate a retailer of their product. Respondent does not and has never sold fiberglass products of any kind. Respondent claims that its business has been a bone fide offering of windows, doors and siding (primarily replacement).
· There is no similarity between the trademark and website of the complainant and that of the respondent. Respondent does not at all use ‘red diamond’ as an essential feature to its domain name or anywhere in its website.
· Respondent’s use of the <integritywindowohio.com> domain name demonstrates its rights or legitimate interests in the <integritywindowohio.com> domain name;
· The <integritywindowohio.com> domain name is used to promote Respondent’s business and to conduct legitimate business online.
· Respondent did not register and is not using the <integritywindowohio.com> domain name in order to sell or rent the disputed domain name.
· Respondent’s registration and use of the <integritywindowohio.com> domain name was not meant to take commercial advantage of Internet users’ mistakes as a result of causing confusion as to the source of the disputed domain name.
C. Additional Submissions
A. Complainant:
· Complainant in its additional submissions claims that Respondent in its Response, has argued lack of similarity between Complainant’s trademark and the disputed domain, stating that the disputed domain name and the associated website do not contain the red diamond which, they claim, is an essential part of the Complainant’s mark. Complainant thereafter argues that in doing so, Respondent has correctly described Complainant’s registered design mark, which “consists of a red diamond before the word INTEGRITY.” The Response of Respondent, however, ignores Complainant’s prior registration of the unqualified word mark, INTEGRITY, which has been infringed by the Respondent’s subsequent use of the confusingly similar domain name <integritywindowohio.com>. Hence, there can be no doubt that the disputed domain is confusingly similar to Complainant’s federally registered trademark.
· Complainant further contends that Respondent appears to argue that he is commonly known by the disputed domain. However, he fails to meet his burden on this point. In this regard, Complainant has relied upon the following decisions : -
(i) Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) holding that where the Complainant has asserted the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion);
(ii) G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) – holding that “Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”.
· Complainant contends that The WHOIS database identifies Respondent as Al Chan. Respondent does not allege that Al Chan is commonly known by the disputed domain. Rather, Respondent in his response has stated that the operator of the website associated with the disputed domain is Cary Slabaugh, and thereby invites the Panel to infer Mr. Slabaugh is the proprietor of an Ohio entity known as Integrity Home Improvement, LLC. In its support, Respondent has submitted a Certificate issued by the State of Ohio, indicating that an Ohio limited liability company, Integrity Home Improvement, LLC, is also known as “Integrity Window and Door”. While these submissions appear to indicate that Mr. Slabaugh and/or Integrity Home Improvement, LLC have infringed the pre-existing federally registered trademark of Complainant by incorporating the INTEGRITY mark wholesale into the Integrity Window and Door trade name, they do not indicate either person is commonly known by the disputed domain: <integritywindowohio>, or “Integrity Window Ohio”.
· Complainant also contends that Respondent in his response has also submitted certain “customary business forms” of the “Integrity Window Co.” That these forms include the disputed domain in connection with the business’ street address and telephone number does not prove Respondent is commonly known by the disputed domain. Respondent would presumably not argue, for example, these documents show it is commonly known as “(216) 521-0050” – the facsimile number also displayed on the forms above the disputed domain. If these documents demonstrate anything, it is only that Respondent is operating a website which offers competing products via a web site associated with a domain in which Respondent has no rights or legitimate interest.
· Even if it is presumed that Respondent were actually doing business as “Integrity Window Ohio,” the misappropriation of a trademark in a domain name may not be justified merely though the use of that same mark in a trade name. In this regard, Complainant relies upon the following decisions of this Forum : -
(i) Caterpillar Inc. v. Ron Feimer, Case No. FA070600100898 (July 28, 2007) (transferring aftermarketcat.com) – holding that Respondent conveniently overlooks the fact that Complainant’s registration of the INTEGRITY mark for use in connection with non-metal windows and doors dates back to 1993. Respondent cannot claim rights or legitimate interest in a confusingly similar domain name registered fifteen years later, via which it offers for sale competing products. Where, as here, “the Complainant is the owner of the mark and has the exclusive right to use the mark, the Respondent has no rights or legitimate interest in the domain names”.
(ii) Arizona State Parks Board v. Pink Banana Adventures, FA 95084 (Nat. Arb. Forum September 25, 2000); and also Marvin Lumber & Cedar Co. v. Integrity Window & Door, FA 1401448 at *6-7 – holding that “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).”
· With regard to bad faith use by Respondent of Complainant’s mark/name, Complainant contends that Respondent in his response appears to suggest that the content of its web site, which displays images of windows and doors which are not, and are not identified as, genuine INTEGRITY windows, is indicative of its good faith registration and use of the disputed domain. This argument of Respondent goes to the issue of confusing similarity, rather than registration and use in bad faith. Complainant further contends that even if it is admitted that according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the consensus view among UDRP panelists is that the “content of a web site … is irrelevant in the finding of confusing similarity… The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.” Respondent’s offer to display a “mutually agreed upon ‘disclaimer’ in the lower portion of his home / landing page that the site does not represent nor sell products by the Complainant” merely underscores Respondent’s own recognition of the confusing similarity between the disputed domain and Complainant’s registered trademark.
B. Respondent :
· Respondent in his additional submissions has averred that "INTEGRITY" is a common noun in regular and frequent use the English language, and is defined as adherence to moral and ethical principles; soundness of moral character; honesty. Can a word “integrity” and its use in a domain name, be the exclusive property of one entity? What about the use of "advanced", "quality", "assured" or other such common words in the English language? Should any single entity have exclusive rights to the use of such words? Respondent counters that "Integrity" is used in countless domain names throughout the internet and is incorporated into trademarks and business identities worldwide. Any confusion is the result of use of a very common place noun.
· Respondent contends that a perusal of Exhs. 7 & 8 of the complaint, reveals that there is no question regarding as to who is the owner and operator of <integritywindowohio.com>. Respondent, Al Chan, functions as web designer (in an agent relationship to Integrity Windows Ohio) and does not claim any rights on his own behalf, rather states that the principal, Cary Slabaugh, owner operator of an Ohio LLC entity known as Integrity Home Improvement, LLC, is registered by the state of Ohio in it's use of the trade name "Integrity Window and Door" and is logically and reasonably using the domain name <integritywindowohio.com>" without the intent to confuse the public or internet users.
· Cary Slabaugh, Integrity Home Improvement LLC "trademarked by the State of Ohio as Integrity Window and Door" is of good reputation and is commonly known as "Integrity Window and Door" via advertising, customer testimonials and referals, local licenses, insurance, signage, Angies list, etc.
· Mr. Cary Slabaugh of Integrity Window and Door acted as reasonable person when obtaining the name in dispute for his domain and should retain the right to the use of the domain name <integritywindowohio.com>.
· Respondent contends that Complainant in the original has asserted that “Respondent’s website displays images of windows and doors, which is likely to confuse Internet users into believing Respondent is in some way connected to Complainant.” In the additional submission it is suggested that the content of a website is irrelevant in confusing similarity. Respondent contends that the website associated with the disputed domain name is used in good faith for the promotion of the above referenced Ohio LLC, it is in fact intended to provide commercial benefit of its owner / operator.
· The Panel observes that Complainant has claimed the user of the word “INTEGRITY” for its business of windows and doors for last more than 50 years. Complainant has obtained USPTO registrations for the INTEGRITY mark since January 9, 1996, which it uses for manufacture and distribution of windows and doors. The Panel also observes that the Respondent has registered the disputed domain name <integritywindowohio.com> on February 25, 2008 incorporating Complainant’s registered mark “INTEGRITY” suffixing the descriptive term ‘window’ and the geographic name of a place “ohio”. Complainant contends that <integritywindowohio.com> domain name is confusingly similar to the INTEGRITY mark.
· Complainant alleges that Respondent’s domain names uses its trademark name and has contents that discredits and disrupts Complainant’s business. Indeed, trademark infringement law prevents only unauthorized usage of a trademark in connection with a commercial transaction in which the trademark is being used to confuse potential customers.
· The designer of the disputed domain name has been shown as Al Chan. It has been contended that he is not the owner and would be in the relationship of an agent of Cary Slabaugh, owner operator of an Ohio LLC entity known as Integrity Home Improvement, LLC. The registration of the mark “INTEGRITY” by the Complainant with the USPTO is of 1996. It has been used by the Complainant for last 50 years for manufacture and distribution of its products of windows and doors.
· The Panel finds that the disputed domain name – <integritywindowohio.com> registered by the Respondent is confusingly similar to the trademark “INTEGRITY” of the Complainant; Respondent has no rights or legitimate interests in relation to the domain name; and the domain name is being used in bad faith.
· The Panel also finds that domain name – <integritywindowohio.com> deserves to be transferred to Complainant and Respondent is not entitled to use this domain name. The Complaint deserves to be allowed forthwith and the Panel decides accordingly. However, in terms of the ICANN Policy and the requirements thereunder, the formal observations / findings of the Panel are as under.
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.
· Complainant asserts that it has rights in the INTEGRITY mark which it uses in connection with the manufacturing and distributing of high-quality wood and clad wood windows and doors since 1950. Complainant provides that it has registrations for the INTEGRITY mark (e.g., Reg. No. 1,947,296 registered January 9, 1996) with the USPTO. Therefore, the Panel finds that Complainant has rights in the INTEGRITY mark under Policy 4(a)(i). The Panel finds strength from the following decisions of this Forum : -
(i) Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) - holding that the complainants had established rights in marks where the marks were registered with a trademark authority;
(ii) Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy 4(a)(i).
· The Panel observes that the Respondent contends that the disputed domain name <integritywindowohio.com> is not confusingly similar to the INTEGRITY mark. Respondent contends that because one of Complainant’s USPTO registrations for the INTEGRITY mark includes a diamond picture at the front of the mark and there is no diamond symbol in the <integritywindowohio.com> domain name that there is no confusion. The Panel does not agree with the Respondent’s contention that the disputed domain name <integritywindowohio.com> is not confusingly similar to the INTEGRITY mark pursuant to Policy 4(a)(i).
· The Panel finds that Complainant also asserts that Respondent’s <integritywindowohio.com> domain name is confusingly similar to the INTEGRITY mark. Complainant contends that Respondent simply took Complainant’s mark and added a descriptive term, generic term, and generic top-level domain (“gTLD”) to create the disputed domain name, <integritywindowohio.com>. The Panel finds that Respondent’s addition of the descriptive term “window” fails to distinguish the <integritywindowohio.com> domain name from the INTEGRITY mark. In this regard the Panel finds the following decisions to be relevant : -
(i) Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) - holding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark;
(ii) Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) - holding 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 also finds that Respondent’s addition of the geographic term “ohio” fails to differentiate the disputed domain name from Complainant’s mark. In this regard, the Panel refers to the following decisions which are relevant to the present Complaint: -
(i) Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) - holding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark;
(ii) Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) – holding that “…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”.
· The Panel finds that the Respondent’s addition of the gTLD “.com” is irrelevant to a determination of confusing similarity. In this regard, the Panel refers to the following decisions of this Forum : -
(i) Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) – holding that “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy 4(a)(i) analysis.”;
(ii) Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) – holding that “The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”.
· The Panel would re-emphasize certain very significant factual aspects in this behalf. Complainant is in the business of manufacture and distribution of windows and doors for last 50 years. The word INTEGRITY for its business has also been registered with USPTO since 1996. The registration of LLC with the State of Ohio, in the view of the Panel, would have no bearing on the aspect of confusing similarity.
· Therefore, the Panel finds that the Respondent’s <integritywindowohio.com> domain name is confusingly similar to Complainant’s INTEGRITY mark pursuant to Policy 4(a)(i).
· The Panel observes that the Complainant has a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy 4(a)(ii), and hence the burden to prove that Respondent has rights or legitimate interests in the disputed domain name. In this regard, the Panel finds strength from the following decisions of this Forum : -
(i) 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;
(ii) AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) – holding that “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.”
· The Panel does not agree with the contention of Respondent that it is not using the <integritywindowohio.com> domain name in a way which obviates a lack of rights or legitimate interests. It is also not understood that where was the occasion for the Respondent to use the word INTEGRITY for its products, i.e. doors and windows, which according to the respondent were being manufactured by Polaris Technologies and other legitimate and well-known companies.
· The Panel also finds that Complainant contends that Respondent does not have rights or legitimate interests in the <integritywindowohio.com> domain name. Complainant asserts that Respondent’s use of the INTEGRITY mark is unauthorized and illegitimate because Complainant has exclusive ownership and interest in the mark. Additionally, the Panel may note that the WHOIS record for the <integritywindowohio.com> domain name lists “Al Chan” as the domain name registrant.
· The Panel observes that earlier panels in their decisions have found the information offered by Complainant and the WHOIS record to be compelling evidence of whether a respondent is commonly known by a disputed domain name. In this regard, it finds strength from the decision of this Forum IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) - holding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <integritywindowohio.com> domain name under Policy 4(c)(ii).
· The Panel agrees with the contention of Complainant that Respondent’s use of the disputed domain name <integritywindowohio.com> also demonstrates its lack of rights and legitimate interests. The Panel also finds force in the contention of Complainant that the user of the disputed domain name by the Respondent is clearly with a view to sell products and services in direct competition with those that Complainant offers in connection with the INTEGRITY mark. Therefore, the Panel finds that Respondent’s use of the disputed domain name <integritywindowohio.com> is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). In this regard, the Panel refers to the decision of this Forum in 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.
· The Panel agrees with the contention of Respondent intended to have the <integritywindowohio.com> domain name attract internet users for commercial gain by creating confusion as to the source, sponsorship, or affiliation of the disputed domain name. The Panel accepts the contention of the Complainant that Respondent’s display of images of windows and doors on the <integritywindowohio.com> domain name’s resolving website is intended to cause confusion by falsely implying that the disputed domain name is in some way affiliated with Complainant.
· There is also significant force in the argument of Complainant that because Respondent is a competitor of Complainant, and using the <integritywindowohio.com> domain name to sell competing products, the diverting of Internet users is clearly meant to generate commercial gain as a result of the confusion created and the resulting mistakes by Internet users. There is no substance in the argument of Respondent that since it had never offered for sale or rent and/or registered or being used the disputed domain name <integritywindowohio.com> to later sell it to Complainant or its competitors and therefore, its registration should be held to be in good faith. This argument ofRespondent is specifically rejected.
· The Panel finds that Respondent registered and is using the disputed domain name in bad faith. In this regard, the Panel relies upon the following decisions : -
(i) MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) - holding bad faith under Policy 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark;
(ii) Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) - holding bad faith under Policy 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market.
· Having regard to the fact that Complainant had obtained USPTO registration in the year 1996 for the mark INTEGRITY, there is substance in the argument of Complainant of constructive knowledge of Respondent of such federal registration. Respondent, therefore, must be taken as being aware of the above-mentioned federal registration in favour of the Complainant in the year 2005 when the respondent had obtained the registration of the disputed domain name. This also leaves no doubt with the Panel that the registration and use of the disputed domain name and that Respondent had registered the disputed domain name <integritywindowohio.com> in bad faith according to Policy 4(a)(iii).
· In this regard th Panel refers to and relies upon the decision of this Forum in Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) – holding "That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy 4(a)(iii)."
· The Panel finds that Respondent has registered and is using the disputed domain name in bad faith
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <integritywindowohio.com> domain name be TRANSFERRED from Respondent to Complainant.
(MANINDER SINGH)
Panelist
Dated: 07.06.2012
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