Johnson County Siding & Window Co., Inc. v. Diamond Contracting, Inc.
Claim Number: FA1205001443590
Complainant is Johnson County Siding & Window Co., Inc. (“Complainant”), represented by Christopher M. DeBacker, Missouri, USA. Respondent is Diamond Contracting, Inc. (“Respondent”), Kansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jocosidingandwindows.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
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 11, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <jocosidingandwindows.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 21, 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@jocosidingandwindows.com. Also on May 21, 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 David A. Einhorn 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.
2. Respondent failed to submit a Response in this proceeding.
The Panel notes that Respondent registered the <jocosidingandwindows.com> domain name on January 19, 2012.
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.”).
Complainant claims common law rights to the term JOHNSON COUNTY SIDING & WINDOW. However, the documentary evidence provided by Complainant in support of this allegation shows use of this term as a trade name, not as a trademark. The use of a trade name by Complainant is insufficient to establish rights under ¶ 4(a)(i) of the Policy. See, The Woodlands Dermatology Assoc., P.A. v. Perri FA 1410742 (Nat. Arb. Forum Nov. 28, 2011) (finding that the Policy makes clear that its rules are intended only to protect trademarks, not mere trade names). Similarly, Complainant provides no evidence of trademark usage of the term JOCO SIDING & WINDOW, other than Complainant’s bare and unsubstantiated allegation that it has referred to itself and its services under this abbreviated name. This bare allegation is insufficient to document any trademark usage at all, much less use sufficient to prove the secondary meaning required for the establishment of common law rights.
Complainant’s Kansas state registration is not cognizable in this proceeding. This is particularly so as the Kansas application was filed after Respondent obtained its domain name registration. Complainant has provided evidence of use of the term covered by that registration, i.e., JOHNSON COUNTY SIDING & WINDOW CO., INC. “BRING VALUE & QUALITY HOME” with an Arched Window Design, dating back to March 31, 2010, the first use date cited in the Kansas state trademark application. However, Complainant does not provide evidence, or even allege, that this mark has acquired secondary meaning. In any event, Respondent’s domain name <jocosidingandwindows.com> is not “identical or confusingly similar” to Complainant’s mark within the meaning of ¶ 4(a)(i), even if Complainant had established common law rights. The domain name does not contain Complainant’s Arched Window Design, which is a strong component of the mark. Nor does the domain name include the slogan, “BRING VALUE & QUALITY HOME”, which is also part and parcel of this mark. These major distinctions are in addition to the use of the abbreviation “joco”, in place of the geographical reference “Johnson County” in the mark.
For all of the above reasons, Complainant has not satisfied ¶ 4(a)(i) of the Policy. Thus, there is no need for this Panel to determine whether Respondent has rights or legitimate interests in the domain name, or whether Registrant registered or used the domain name in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <jocosidingandwindows.com> domain name REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: June 25, 2012
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