Allied Steel Buildings Inc. v. Above.com Domain Privacy
Claim Number: FA1209001462807
Complainant is Allied Steel Buildings Inc. (“Complainant”), represented by John P. McNeill of Law Office of John P. McNeill, P.C., North Carolina, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alliedsteelbuildings.com>, registered with Above.com Pty Ltd.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 17, 2012; the National Arbitration Forum received payment on September 17, 2012.
On September 23, 2012, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <alliedsteelbuildings.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.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 September 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@alliedsteelbuildings.com. Also on September 24, 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 October 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <alliedsteelbuildings.com> domain name, the domain name at issue, is confusingly similar to Complainant’s ALLIED STEEL BUILDINGS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the ALLIEDSTEEL BUILDINGS mark, used in connection with metal steel structures and pre-engineered metal buildings, and registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,284,432 registered August 28, 2007). The <alliedsteelbuildings.com> domain name is identical to the ALLIEDSTEEL BUILDINGS mark. The domain name simply removes a space from the mark and adds the generic top-level domain (“gTLD”) “.com,” both of which found to have been irrelevant technical changes. Respondent is not commonly known by the disputed domain name. The WHOIS record identifies the domain name registrant as “Above.com Domain Privacy.”
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The <alliedsteelbuildings.com> domain name resolves to a parked website where pay-per-click links are displayed. Of these links, many are competitive with Complainant’s offerings in the prefab building, metal building, and similar industries. The disputed domain name is disruptive to Complainant’s business because it diverts potential customers away from Complainant’s business by pushing them toward Respondent’s website.
Respondent did not submit a Response but registered the <alliedsteelbuildings.com> domain name on September 16, 2010.
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 has rights in the ALLIEDSTEEL BUILDINGS mark, used in connection with metal steel structures and pre-engineered metal buildings and owns the registration with the USPTO for the ALLIEDSTEEL BUILDINGS mark (Reg. No. 3,284,432 registered August 28, 2007). Regardless of the location of the parties, panels have found that the registration of a mark is evidence of having rights in that mark. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Accordingly, Complainant has rights in the ALLIEDSTEEL BUILDINGS mark pursuant to Policy ¶ 4(a)(i).
The <alliedsteelbuildings.com> domain name is identical to the ALLIEDSTEEL BUILDINGS mark. The domain name simply removes a space from the mark and adds the generic top-level domain (“gTLD”) “.com.” These changes are irrelevant technical changes with no bearing on an analysis under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Therefore, Respondent’s <alliedsteelbuildings.com> domain name is identical to the ALLIEDSTEEL BUILDINGS mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not commonly known by the disputed domain name. The WHOIS record identifies the domain name registrant as “Above.com Domain Privacy.” In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel held that the WHOIS record is often determinative of whether a respondent is commonly known by a disputed domain name. Accordingly, Respondent is not commonly known by the <alliedsteelbuildings.com> domain name under Policy ¶ 4(c)(ii).
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant has provided evidence that the <alliedsteelbuildings.com> domain name resolves to a parked website where pay-per-click links are displayed. Of these links, many are competitive with Complainant’s offerings in the prefab building, metal building, and similar industries and are listed under headings such as “PRE-MADE STEEL BUILDINGS” and “Metal Buildings.” Therefore, Respondent uses the <alliedsteelbuildings.com> domain name for neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 Policy ¶ 4(a)(ii) has been established.
The disputed domain name is disruptive to Complainant’s business as the domain name diverts potential customers away from Complainant’s business by pushing them toward Respondent’s website. The disputed domain name resolves to a parked website where Respondent displays links to various third-party websites, some of which are competitive with Complainant’s business. The panel in David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007), held that the registration and use of a disputed domain name to display competitive links is disruptive and demonstrates bad faith under Policy ¶ 4(b)(iii). Respondent’s registration and use of the <alliedsteelbuildings.com> domain name is disruptive and competitive with Complainant, and the Panel finds that Respondent acted in bad faith pursuant to Policy ¶ 4(b)(iii). It appears clear that Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the ALLIEDSTEEL BUILDINGS mark as to the source, sponsorship, or affiliation of the website.
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alliedsteelbuildings.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 25, 2012
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