national arbitration forum

 

DECISION

 

Johnson County Siding & Window Co., Inc. v. Yell Adworks Inc

Claim Number: FA1205001443576

 

PARTIES

Complainant is Johnson County Siding & Window Co., Inc. (“Complainant”), represented by Christopher M. DeBacker, Missouri, USA.  Respondent is Yell Adworks Inc (“Respondent”), Pennsylvania, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jocosidingandpainting.com>, registered with TUCOWS, 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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2012; the National Arbitration Forum received payment on May 11, 2012.

 

On May 14, 2012, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <jocosidingandpainting.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name.  TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 May 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 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@jocosidingandpainting.com.  Also on May 22, 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 June 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 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 <jocosidingandpainting.com> domain name is confusingly similar to Complainant’s JOCO SIDING & WINDOW and JOHNSON COUNTY SIDING & WINDOW marks.

 

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

 

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

 

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

 

FINDINGS

Complainant owns trademark registrations with the state of Kansas for its JOHNSON COUNTY SIDING & WINDOW CO., INC. “BRING VALUE & QUALITY HOME” & DESIGN mark (Reg. No. 18,568 registered March 22, 2012).  Complainant also has common law rights in its JOCO SIDING & WINDOW mark and its JOHNSON COUNTY SIDING & WINDOW marks.  Complainant uses its marks interchangeably in its business as a window and siding construction and contracting service and has used its marks for approximately two decades.  Complainant registered and uses the <jocosiding.com> domain name in its contracting business.

 

Respondent ”Yell Adworks Inc.” registered the <jocosidingandpainting.com> domain name on January 27, 2011.  Respondent uses the  <jocosidingandpainting.com> domain name to resolve to the website of one of Complainant’s competitors doing business in the same geographical area as Complainant.

 

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."

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

The Panel notes that Policy ¶ 4(a)(i) does not require Complainant’s marks to be registered with a government authority in order for Complainant to claim rights in the mark.  The panel in British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000), held that the Policy does not discern between marks that are registered or not registered in relation to domain names and that the Policy applies to unregistered marks.  In Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001), the panel stated that the Policy does not mandate registration of a mark with a trademark authority in order to determine existence of rights in the mark.  

 

Complainant claims to have common law rights in its JOCO SIDING & WINDOW mark and JOHNSON COUNTY SIDING & WINDOW marks.  Complainant provides evidence of its commonplace and continuous use of the marks through its invoices, articles of incorporation, advertisements, business cards, directory listings on local websites, Better Business Bureau listings, and various business transactions.  The Panel notes that the evidence provided refers to Complainant’s alleged JOHNSON COUNTY SIDING & WINDOW mark and not the alleged JOCO SIDING & WINDOW mark.  Complainant provides evidence that it owns a trademark registration with the Kansas Secretary of State for its JOHNSON COUNTY SIDING AND WINDOW CO., INC. “BRING VALUE & QUALITY HOME” & Design mark, which it filed and registered on March 22, 2012.  Complainant alleges that it shortens this state-registered mark to the name “JoCo Siding and Window,” or “JoCo,” which it has used as business names for two decades. The Panel finds that Complainant’s history of use of its JOCO SIDING & WINDOW and JOHNSON COUNTY SIDING & WINDOW marks demonstrate common law rights in the marks pursuant to Policy ¶ 4(a)(i).  See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001)("setting aside the contrary statements about the date of Complainant's first actual use, the mere claim of use is not enough to establish rights.  Use must be in a manner sufficiently public to create some public awareness."); see also Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years).

 

Respondent’s <jocosidingandpainting.com> domain name uses Complainant’s common law mark JOHNSON COUNTY SIDING & WINDOW and replaces the word “window” with another descriptive term “painting,” and replaces the ampersand (“&”) with the word “and.”  The disputed domain name also removes the spaces in between the words in the mark and includes the generic top-level domain “.com.”  Finally, Respondent replaces the “JOHNSON COUNTY” portion of the mark with the obvious abbreviation “JOCO.”  The Panel finds that these changes to the disputed domain name do not change its confusing similarity to Complainant’s JOHNSON COUNTY SIDING & WINDOW mark for the purposes of Policy ¶ 4(a)(i).  See 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); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Douney & Bourke, Inc. v. Chen, FA 1367861 (Nat. Arb. Forum Apr. 20, 2011) (concluding that replacing a symbol in the complainant’s DOONEY & BOURKE mark with the word “and” in the disputed <dooneyandbourkeoutles.org> domain name does not distinguish the domain name from the mark under Policy ¶ 4(a)(i)); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Harrah’s License Co., LLC v. Global Svcs. – This domain may be for sale, FA 1222448 (Nat. Arb. Forum Oct. 14, 2008) (stating that abbreviating the complainant’s mark does not distinguish the domain name from the mark for the purposes of confusing similarity).

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

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 has never been associated with Complainant’s mark and alleges that Respondent is an advertising company through which one of Complainant’s competitors registered and uses the <jocosidingandpainting.com> domain name.  The WHOIS information identifies “Yell Adworks Inc” as the registrant of the disputed domain name, which provides evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding 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); 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 argues that the website corresponding to the <jocosidingandpainting.com> domain name belongs to a direct competitor of Complainant, located in the same geographic area.  Complainant asserts that Respondent “attempt[s] to draw business based upon . . . Complainant’s well-known name.”  The panel in Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003), stated that using a domain name to divert Internet traffic to a website that offered competing services with those that the complainant offered was not use of a domain name in relation with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The panel in Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001), concluded that the respondent’s use of a domain name to host a website offering educational services to the same marked served by the complainant did not support a finding that the respondent had rights or legitimate interests in the disputed domain name.  The Panel finds that, by linking the <jocosidingandpainting.com> domain name to a website offering services that are similar to those offered by Complainant, Respondent is not using the disputed domain name for 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).

 

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

 

Registration and Use in Bad Faith

 

Respondent’s disputed domain name resolves to a webpage that advertises information relating to one of Complainant’s direct competitors and diverts consumers seeking Complainant’s webpage to Respondent’s website. Respondent no doubt profits from drawing Internet users to its website by causing confusion as to Complainant’s affiliation with the disputed domain name.  The panel in Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006), concluded that, by using the disputed domain name to attract Internet users to the corresponding website, which offered competing services, the respondent violated Policy ¶ 4(b)(iv).  In Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003), the panel stated that respondent’s use of the disputed domain name to advertise its competing business establishes bad faith under Policy ¶ 4(b)(iv).  Thus, the Panel finds that, by linking the <jocosidingandpainting.com> domain name to a website that advertises services in competition with Complainant’s business, Respondent demonstrates bad faith.

 

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

 

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 <jocosidingandpainting.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  June 20, 2012

 

 

 

 

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