AWI Licensing Company v. Shijiazhuang aimeisi building materials limited company / shen xiaoyong
Claim Number: FA1307001509344
Complainant is AWI Licensing Company (“Complainant”), represented by David M. Perry of Blank Rome LLP, Pennsylvania, USA. Respondent is Shijiazhuang aimeisi building materials limited company / shen xiaoyong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aimstrongceiling.com>, registered with XIN NET TECHNOLOGY CORPORATION.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2013; the National Arbitration Forum received payment on July 19, 2013. The Complaint was submitted in both English and Chinese.
On July 11, 2013, XIN NET TECHNOLOGY CORPORATION confirmed by e-mail to the National Arbitration Forum that the <aimstrongceiling.com> domain name is registered with XIN NET TECHNOLOGY CORPORATION and that Respondent is the current registrant of the name. XIN NET TECHNOLOGY CORPORATION has verified that Respondent is bound by the XIN NET TECHNOLOGY CORPORATION 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 August 5, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 26, 2013 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@aimstrongceiling.com. Also on August 5, 2013, the Chinese language 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 September 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 allegations:
1. Respondent registered the <aimstrongceiling.com> domain name on March 19, 2013.
2. Complainant is one of the world’s leading providers of ceilings and ceilings products. Complainant has use the ARMSTRONG mark since at least 1910 and has acquired good will throughout the world. Complainant has a its own domain name, <armstrong.com>, through which it is represented and markets its business. See Complainant’s Exhibit D.
3. Complainant contends it has rights in the ARMSTRONG mark, used in connection with ceilings and ceiling-related products. Complainant is the owner of registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 523,396 registered April 4, 1950).
4. Respondent’s <aimstrongceiling.com> domain name is confusingly similar to Complainant’s ARMSTRONG mark. The disputed domain name includes Complainant’s mark, misspelled by one letter. The disputed domain name also includes to descriptive term “ceiling,” which refers directly to Complainant’s business.
5. Respondent has no rights or legitimate interests in the <aimstrongceiling.com> domain name.
6. Respondent registered and is using the <aimstrongceiling.com> domain name in bad faith.
B. Respondent did not submit a Response in this proceeding.
1. Respondent’s <aimstrongceiling.com> domain name is confusingly similar to Complainant’s ARMSTRONG mark.
2. Respondent does not have any rights or legitimate interests in the <aimstrongceiling.com> domain name.
3. Respondent registered or used the <aimstrongceiling.com> domain name 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 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 contends it has rights in the ARMSTRONG mark, used in connection with ceilings and ceiling-related products. Complainant states it is the owner of registrations with the USPTO for the ARMSTRONG mark (e.g., Reg. No. 523,396 registered April 4, 1950). The Panel notes that Respondent operates from China. Past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the ARMSTRONG mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant next alleges that Respondent’s <aimstrongceiling.com> domain name is confusingly similar to Complainant’s ARMSTRONG mark. Complainant states that the disputed domain name includes Complainant’s mark, misspelled by one letter. The disputed domain name also includes the descriptive term “ceiling,” which refers directly to Complainant’s business. The Panel also notes that the disputed domain name includes the generic top level domain (“gTLD”) “.com.” First, the Panel finds that misspelling Complainant’s mark by one letter does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Next, the Panel finds that the addition of the descriptive term “ceiling” does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). Lastly, the Panel finds that the addition of a gTLD is irrelevant to a confusing similarity analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s <aimstrongceiling.com> domain name is confusingly similar to Complainant’s ARMSTRONG mark pursuant to Policy ¶ 4(a)(i).
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.”).
Complainant claims Respondent has no rights or legitimate interests in the <aimstrongceiling.com> domain name. Complainant states that Respondent has never been commonly known by the disputed domain name. The Panel notes that the WHOIS records lists “chen dan” as the domain name registrant. Past panels have looked to the WHOIS record to determine whether the Respondent is commonly known by the disputed domain name. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Therefore, because the WHOIS record indicates that Respondent is not commonly known by the <aimstrongceiling.com> domain name, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that the <aimstrongceiling.com> domain name resolves to a website that competes with Complainant’s business while incorporating logo designs and a Chinese derivation of Complainant’s ARMSTRONG mark. Complainant asserts that Respondent is attempting to redirect consumers to its competing business. Past panels have found that utilizing a disputed domain name to compete directly with a complainant does not constitute a bona fide offering a goods or services or a legitimate noncommercial or fair use. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Therefore, the Panel finds that Respondent’s use of the <aimstrongceiling.com> domain name to operate a competing business does not constitute a bona fide offering a goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant claims Respondent registered and is using the <aimstrongceiling.com> domain name in bad faith. Complainant contends that Respondent is attempting to create a likelihood of confusion with Complainant’s business and directly competing with Complainant’s business to obtain commercial gain. Past panels have found that utilizing a disputed domain name to compete directly with a complainant constitutes bad faith registration and use. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant). Therefore, the Panel finds that Respondent’s use of the <aimstrongceiling.com> domain name to compete with Complainant constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant contends that Respondent had knowledge of Complainant’s ARMSTRONG mark at the time Respondent registered the <aimstrongceiling.com> domain name because Respondent was required by a Domain Name Dispute Resolution Center panel to transfer another domain name, <aimstrong.cn>, to Complainant less than a month before it registered the disputed domain name in this case. See Complainant’s Exhibit C. Constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). The Panel here concludes that Respondent had actual notice of Complainant's mark, and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aimstrongceiling.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 13, 2013
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