Albert Lee, Inc. v. Winsum Wong
Claim Number: FA1207001453019
Complainant is Albert Lee, Inc. (“Complainant”), represented by Scott G. Warner of Garvey Schubert Barer, Washington, USA. Respondent is Winsum Wong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <albertleeappliances.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2012; the National Arbitration Forum received payment on July 11, 2012.
On July 12, 2012, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <albertleeappliances.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 July 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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@albertleeappliances.com. Also on July 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 August 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Factual Grounds
a. Albert Lee Appliance's Rights in the Domain albertleeappliances.com.
Complainant has used the name ALBERT LEE in commerce since 1939 when the company opened "Albert Lee Furniture." In 1975, Albert Lee Furniture became "Lee Enterprises Inc.," doing business as "Albert Lee Furniture and Appliance." In March 2002, its corporate name was changed to "Albert Lee, Inc." In August 2003, it registered the assumed business name of "Albert Lee Appliance" with the Washington State Department of Licensing. Since then, the company has been known as ALBERT LEE APPLIANCE ("ALA") and remains a family-owned business, now in its third-generation under Albert Lee Sr., then Albert Lee, Jr. and Albert Lee, III. ALA is the largest independent dealer of appliances in the State of Washington state based on sales volume and product selection. ALA distinguishes itself in the market by specializing in the sale of premium quality appliances. ALA has made out of state sales since 1995 and started advertising to out of state consumers March 2010. (excerpt from March 2010 issue of Alaska Airlines Magazine).
Consumers and the community at large associate the marks ALBERT LEE and ALBERT LEE APPLIANCE (the "Marks") with a single source of appliances, and specifically with ALA. ALA has spent approximately $1,500,000 per year promoting the ALA Marks in association with the sale of appliances since 2002. The ALBERT LEE name is well-known in the community. Since 2010, ALA has been the title sponsor of Seattle's Seafair. Albert Lee, Inc. provided a national sponsorship for the Albert Lee Appliance unlimited hydroplane boat from 2009 until 2010, and has been a sponsor of the boat for Washington since that time.
Seafair is a month-long summer festival held annually since 1950 in the greater City of Seattle. It encompasses a wide variety of neighborhood events leading up to several major city wide celebrations. The crowning event of Seattle's Seafair, which attracted an estimated 2,000,000 total visitors and 150,000 for the hydroplane races alone in 2011, is the award of the ALBERT LEE Cup to the winner of the unlimited hydroplane race. See http://en.wikipedia.org/wiki/Seafair; see also http://www.seafair.com/caldetl.aspx?ID=32&dt=8/6/2011&v=d&EvDateiD=32; http://seafair.com/AnEvent.aspx?ID=12&SeciD=897 ; http://www.answers.com/topic/seafair-2010-calendar;
http://seattletimes.nwsource.com/html/take2/2015844786 live from seafair sunday.html. In addition to the thousands of local attendees, the "Albert Lee Cup" hydroplane races are seen by hundreds of thousands of television viewers, rivaling the audience for a regular season Seattle Seahawks football game. See http://www.h1unlimited.com/2011/08/big-fast-seafair-field-pursues-villwock/.
ALA registered the domain www.albertleeappliance.com on April
14, 1999.
,
ALA registered the ALBERT LEE trademark in Washington state on January
10,2012 and the ALBERT
LEE APPLIANCE trademark
in Washington state on February
3, 2012. ALA has filed for federal
registration as well.
b. Respondent Adds 's' to ALA's Mark and Registers www.albertleeappliances.com.
Oversee Domain Management, LLC ("ODM"), a company in the business of selling parked domain names with a bank of over 600,000 domain names, registered the Disputed Domain in October 2007. See http://overseedomainmanagement.com/; see also Whois history for www.albertleeappliances.com. ALA contacted ODM on February 28, 2011 and requested that it transfer the Disputed Domain. ODM did not do so, instead cancelling its automatic renewal of the Disputed Domain in December 2011 without notifying ALA. As a result, ALA did not know the Disputed Domain became available. Before ALA could register the Disputed Domain, a subsequent registrant stepped in and registered the Disputed Domain on March 9, 2012. In April 2012, ALA first learned the Domain had been released and registered by this subsequent registrant, who used Whois Privacy Services to protect its identity. Prior to July 11, 2012, the Domain contact was listed as Eli Pearlman, an internet attorney in Los Angeles, who is past general counsel for Findology Interactive Media, Inc., an online advertising consultant that specializes in internet advertising feeds. See Linkedin Full Profile of Eli Pearlman; see also http://findology.com/. ALA contacted Mr. Pearlman on April 11, 2012 to request that the owner transfer the Domain to ALA, as required under the Uniform Domain Name Dispute Resolution Policy ("UDRP"). Mr. Pearlman responded two days later, rejecting ALA's request and maintaining that the owner had legitimate rights to the Domain.
Legal Grounds
To recover the Disputed Domain, ALA must prove three things: (1) the Domain is identical or confusingly similar to a trademark to which ALA has rights; (2) the Current Owner has no rights or legitimate interests in the Domain; and (3) the Domain was registered and used in bad faith.
a. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Disputed Domain (www.albertleeappliances.com) is confusingly similar to ALA's Marks (ALBERT LEE and ALBERT LEE APPLIANCE). The Respondent has simply added an "s," which is insufficient to distinguish a domain from a mark. Aeropostale Procurement Co., Inc. v. Above.com, FA 1111001416026 (Nat. Arb. Forum Dec. 28, 2011) ("Complainant asserts that Respondent's <aeropostales.com> domain name differs from Complainant's mark only in the addition of the extra letter "s" and the generic top-level domain ("gTLD") ".com.". The Panel finds that adding a single letter into Complainant's mark fails to differentiate the disputed domain name from Complainant's mark." (citing Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), ("The mere addition of a single letter to the complainant's mark does not remove the respondent's domain names from the realm of confusing similarity in relation to the complainant's mark pursuant to Policy 4(a)(i).")." See also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17. 2003), (holding that the <zamazon.com> domain name was confusingly similar to the complainant's AMAZON.COM mark); Lance Lambros v. William Brown, FA0310000198963 (Nat. Arb. Forum November 19, 2003); "LTD." added to mark in domain name is insufficient to distinguish a domain from a mark; Mead Johnson & Co., LLC v. Nodex Inc./Richard Hong, FA 1111001417917 (Nat. Arb. Forum Jan. 3, 2012), ("The Panel finds that the addition of a single letter and the gTLD ".com" does not sufficiently differentiate the disputed domain name from Complainant's mark under Policy4(a)(i).").
ALA's rights in the Marks are well established. ALA holds state registrations for the Marks, which creates the same rights as USPTO registration. Rex Hospital, Inc. d/b/a Rex Healthcare v. Web Advertising, Corp, FA 0804001177522 (Nat. Arb. Forum May 27, 2008), ("The Panel finds that state registration creates the same rights, for purposes of the Policy, as if Complainant registered its mark through the United States Patent and Trademark Office ("USPTO").")(citing Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003) (finding evidence that the complainant had established rights in the BILLINGS GAZETTE mark through registration with the Montana and Wyoming state trademark officials); Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002), (finding that the complainant's trademark registrations in Pennsylvania and New Jersey operated as evidence that the complainant had sufficient standing to bring a claim under the UDRP). ALA's state registrations establish its rights in the Marks.
ALA registered the Marks prior to Respondent's registration of the Disputed Domain. Respondent may argue that ALA did not register the Marks with Washington State until after the prior domain registrant, ODM, registered the Disputed Domain, but ODM's prior registration of the domain is irrelevant because ALA has priority in the Marks. ALA first used the name ALBERT LEE in commerce in 1939 and the name ALBERT LEE APPLIANCES in 1994. see photo of prior Seattle store front. ALA used both Marks consistently since those dates, decades before ODM's October 2007 registration and Respondent's March 2012 registration of the Disputed Domain. Prior use of the Marks trumps subsequent registration of the Disputed Domain:
"Respondent argues that it registered the disputed domain name several years prior to the date on which Complainant filed for and thereafter received Complainant's trademark, and therefore Complainant had no rights for purposes of paragraph 4(a)(1) of the Policy at the time Respondent registered the disputed domain name. However, the Panel finds this argument unpersuasive. The Panel finds that Complainant did have trademark rights for purposes of the Policy as of the date on which Respondent registered the disputed domain name, October 4, 2004. This decision is based upon two factors. Firstly, this decision is based on the date of first use for fabric and paper flags within Complainant's trademark registration, which is August 30, 1993. Secondly, this decision is based on the evidence supplied by Complainant about its continuous use of Complainant's trademark in commerce since 1993, including without limitation Complainant's use of its domain name <gettysbergflag.com> since 1999, which was five years in advance of Respondent's registration of the disputed domain name."
Gettysburg Flag Works, Inc. v. Precision Marketing Solutions, Inc. and Jeffrey Reynolds, FA1179369 (Nat. Arb. Forum June 10, 2008), (citing Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004); Allard Enterprises, Inc., v. Advanced Programming Resources, Inc., 146 F. 3d 350, 46 U.S.P.Q. 2d 1865 (6th Cir. 1998) ("One of the bedrock principles of trademark law is that trademark or service mark ownership is not acquired by federal or state registration. Rather, ownership rights of flow only from prior appropriation in actual use in the market"); SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000); Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001). As in Gettysburg, ALA's use of the Marks for decades before ODM's and Respondent's registrations of the Disputed Domain establishes ALA's rights in the Marks.
Finally, ALA's rights in the Marks are established by the fact that ALBERT LEE is ALA's founder's personal name. See http://www.albertleeappliance.com/index.cfrnlen/pg-About-us. "Personal names that have been registered as trademarks are generally protected under the UDRP. While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name." WIPO Overview 2.0 available at http://www.wipo.int/amc/en/domains/searchloverview2.0/. Mr. Lee's name is distinctive because no other business uses the name in association with the sale of appliances. Because the Marks incorporate ALA's founder's personal name, which is unique in the appliance industry, ALA has rights in the Mark.
b. The Respondent has no rights or legitimate interests in the domain name.
"Since it is difficult to prove a negative (i.e. that Respondent lacks any rights or legitimate interests in the mark)- especially where the Respondent, rather than the Complainant, would be best placed to have specific knowledge of such rights or interests - and since Paragraph 4(c) describes how a Respondent can demonstrate rights and legitimate interests, a Complainant's burden of proof on this element is light." Croatia Airlines d.d. v. Modern Empire Internet Ltd., D2003-0455. Once a complainant makes a prima facie showing that a respondent lacks rights or legitimate interests in a disputed domain name, the burden shifts to the respondent. Id.
Respondent uses the Disputed Domain solely to redirect customers to ALA's competitor's which is not a legitimate use of the Disputed Domain. A feeder site is not a bona fide offering of goods or services:
"Respondent's <hhrgregg.com> domain name resolves to a website offering links to Complainant competitors in the home appliance and electronics market. The Panel finds that offering links to Complainant's competitors does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(i) and Policy ¶4(c)(iii), respectively."
Gregg Appliances, Inc. v. Manila Industries, Inc. I Domain Admin, FAl386772 (Nat. Arb. Forum June 7, 2011) (citing Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005), (finding that the respondent's use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services; Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006), (finding that the respondent's use of domain names confusingly similar to the complainant's WAL-MART mark to divert Internet users seeking the complainant's goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services). Because Respondent makes no legitimate use of the Disputed Domain, it cannot meet its burden of showing a right or legitimate interest in the Disputed Domain Name.
Additionally, Respondent has no rights or legitimate interest in the Disputed Domain Name, for the following reasons:
• Complainant has never authorized Respondent to use the ALBERT LEE APPLIANCE mark for a domain name or any other purpose.
• There is no evidence that Respondent is known under the Disputed Domain Name.
This case does not involve a common term that might be used for many purposes, but rather a term that is used in only with reference to the Complainant.
• There is no evidence that Respondent intends to use the Disputed Domain Name for a legitimate business. Nor is there any evidence that Respondent has made any preparation to use the Disputed Domain Name for any bona fide offering of goods or services.
• Respondent is not using the Disputed Domain Name for any non-commercial or fair use. Indeed, Respondent does not appear to have made any use of the Disputed Domain Name beyond redirecting users to ALA's competitors' websites.
• Respondent's personal name is not Albert Lee.
• Respondent is not commonly known by the name Albert Lee (WHOIS information does not list any entity/person referred to as Albert Lee) (see Aeropostale Procurement Co., Inc. v. Above.com (Nat. Arb. Forum Dec. 28, 2011).
Respondent should therefore be ordered to transfer the domain name to Complainant.
c. Respondent registered and uses the Disputed Domain in bad faith.
Bad faith is evidenced by circumstances indicating that a Respondent has registered or acquired a domain name "primarily for the purpose of selling, renting or otherwise transferring the domain name registration" to a complainant who is the owner of the trademark at issue. Policy, 4(b)(i). Respondent obtained registration of the Disputed Domain, which incorporates ALA's Marks (and Mr. Lee's name), although it has no association with the mark, and it has made no use of the Disputed Domain other than to use it as a feeder site to ALA's competitors.
It is not necessary for a respondent to make an actual offer to sell a domain name for the panel to find that the domain name was registered in bad faith. It is sufficient that respondent has failed to make a good faith use of the domain name for a substantial period of time. Mandich v. Brown, No. D00-0004, Further, "Panelists have frequently held that passive holding of a domain name can be considered bad faith use under the Policy if other indications of bad faith are present." Quinault Indian Nation v. RDA Management Inc., WIPO Case. No. D2001-1406; see also Tulalip Tribes, WIPO Case No. D2007-1106 (finding bad faith based in part on Respondent's lack of need to use the TULALIP mark to promote Snohomish County generally). To date, the
Disputed Domain Name offers only links to ALA's competitor's.
Respondent's use of the Disputed Domain to redirect customers in competition with Complainant is evidence of bad faith:
"Respondent is using the <searoutlet.com> domain name which was registered on November 27, 2005 to redirect Internet users to Respondent's website featuring links to third-party websites that either advertise Complainant or are in direct competition with Complainant's business. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy 'if 4(b)(iii).
Sears Brand, LLC v. Er Bai Wu c/o N/A, FA 1292218 (Nat. Arb. Forum December 17, 2009) (citing Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July
24, 2006), Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant's competitors represents bad faith registration and use under Policy 'if 4(b)(iii)); see also Pleasant Hill Farm, Inc. v. Keyword Marketing, Inc., FA 1007970 (Nat. Arb. Forum July 25, 2007), ("Respondent has registered and is using the <plesanthillgrain.com> domain name, which is confusingly similar to Complainant's PLEASANT HILL GRAIN mark, to redirect Internet users to Respondent's website displaying links to the websites of Complainant's competitors. The Panel finds that Respondent's use of the disputed domain name to offer links to competing websites constitutes disruption, which is evidence of bad faith registration and use under Policy 'if 4(b)(iii)."). Respondent's use of the Disputed Domain falls squarely within the definition of bad faith describe by the National Arbitration Forum panels.
Respondent's use of Complainant's personal name to compete with Complainant is further evidence of bad faith. "Furthermore, Respondent used the disputed domain name in competition with Complainant. Respondent even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with. Respondent's use of the website for this disruptive purpose evidences bad faith registration and use pursuant to Policy 4(b)(iii) & (iv)." Lance Lambros v. William Brown, FA 198963 (Nat. Arb. Forum November 19, 2003) (citing Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000); see also H-D Mich., Inc. v. Petersons Auto. a/k/a Larry Petersons, FA 135608 (Nat. Arb. Forum Jan. 8, 2003).
For the reasons stated above, the Disputed Domain (www.albertleeappliances.com) should be transferred to Complainant Albert Lee Appliance.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order transferring or cancelling a domain name:
(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 does not own a federal trademark registration for its ALBERT LEE or ALBERT LEE APPLIANCE marks. Complainant need not own a trademark registration for it to establish rights in a mark under Policy ¶4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
Complainant has used the ALBERT LEE name and mark since 1939. Complainant’s corporate name was changed to Albert Lee, Inc. in March 2002 and in August of 2003 Complainant began using the assumed business name of ALBERT LEE APPLIANCE. Complainant also owns trademark registrations with the State of Washington Secretary of State for the ALBERT LEE and ALBERT LEE APPLIANCE marks on January 10, 2012 and February 3, 2012, respectively. Complainant has applied for trademark registrations with the USPTO for the ALBERT LEE and ALBERT LEE APPLIANCE marks. Complainant is a family owned business that is now in its third-generation under Albert Lee Sr., Albert Lee, Jr., and Albert Lee III. Complainant is the largest independent dealer of appliances in the State of Washington based on sales volume and product selection and has made out of state sales since 1995. Complainant spends approximately $1,500,000 per year on promoting its marks and products, has been a titles sponsor of Seattle’s Seafair, and has provided a national sponsorship for the Albert Lee Appliance unlimited hydroplane boat. Based upon this evidence and the arguments of Complainant, the Panel finds Respondent has adequately established rights in its ALBERT LEE and ALBERT LEE APPLIANCE marks under Policy ¶4(a)(i). See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant argues the <albertleeappliances.com> domain name is confusingly similar to Complainant’s ALBERT LEE APPLIANCE mark where the disputed domain name merely adds the trailing letter “s.” The disputed domain name also removes the spaces between the terms of the mark and adds the generic top-level domain (“gTLD”) “.com.” Since spaces are not part of the character set of domain names, their removal must be disregarded. Likewise, every domain name requires a gTLD or a ccTLD. Therefore, the existence of the “.com” extension must be disregarded. To do otherwise would eviscerate the UDRP. The Panel finds Respondent’s <albertleeappliances.com> domain name is confusingly similar to Complainant’s ALBERT LEE APPLIANCE mark under Policy ¶4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶4(a)(i)).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 has not authorized Respondent to use the ALBERT LEE APPLIANCE mark for a domain name or any other purpose. Complainant also claims Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name now identifies “Winsum Wong” as the domain name registrant (it was previously Whois Privacy Services Pty Ltd when this proceeding was commenced). Based upon this and all other evidence on record, the Panel finds Respondent is not commonly known by 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).
Complainant claims Respondent is using the disputed domain name to host a series of hyperlinks to redirect customers to Complainant’s competitors. Complainant argues such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s domain name resolves to a website featuring a search engine and links under various headings such as, “KitchenAid® Refrigerators,” “Busby Appliance Removal,” “Sears Appliances,” “Maytag Appliances,” and “Appliances Wholesale.” The Panel finds Respondent’s use of the <albertleeappliances.com> domain name does not amount to 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 United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant contends Respondent is using the <albertleeappliances.com> domain name to redirect Internet users and potential customers away from Complainant and to its competitors in the appliance industry. Complainant argues Respondent does this in bad faith. Several prior panels have found that, where a respondent is using a disputed domain name as a links directory website featuring third-party links to a complainant’s competitors, such use is done in bad faith under Policy ¶4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”); see also H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶4(b)(iii).”). Based upon Complainant’s arguments and prior UDRP precedent, the Panel finds Respondent registered and is using the <albertleeappliances.com> domain name in bad faith under Policy ¶4(b)(iii).
In addition, the disputed domain name was originally held by a privacy service when this proceeding was commenced (it was re-registered into the beneficial owner’s name once the proceedings were started). As this Panel has said before, there is no reason to hold a domain name in a nominee’s name in a commercial context. While this Panel can envision all kinds of reasons to hold domain names in a nominee’s name in a personal context, those reasons do not apply in a commercial context. Owning a domain name in a privacy service raises the rebuttable presumption bad faith registration and use in a commercial context. Respondent has taken no steps to rebut that presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <albertleeappliances.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, August 8, 2012
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