Haag Engineering Co. v. GoodRoof Construction LLC.
Claim Number: FA1206001450020
Complainant is Haag Engineering Co. (“Complainant”), represented by Scott T. Griggs of Griggs Bergen LLP, Texas, USA. Respondent is GoodRoof Construction LLC. (“Respondent”), Oklahoma, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <haagcertified.com>, <haagcertifiedinspector.com>, <haagcertifiedroofer.com>, <haagroof.com>, <haagroofer.com>, <haagroofing.com>, and <haagroofingcontractor.com>, registered with GoDaddy.com LLC.
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 June 21, 2012; the National Arbitration Forum received payment on June 21, 2012.
On June 22, 2012, GoDaddy.com LLC confirmed by e-mail to the National Arbitration Forum that the <haagcertified.com>, <haagcertifiedinspector.com>, <haagcertifiedroofer.com>, <haagroof.com>, <haagroofer.com>, <haagroofing.com>, and <haagroofingcontractor.com> domain names are registered with GoDaddy.com LLC and that Respondent is the current registrant of the names. 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 June 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 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@haagcertified.com, postmaster@haagcertifiedinspector.com, postmaster@haagcertifiedroofer.com, postmaster@haagroof.com, postmaster@haagroofer.com, postmaster@haagroofing.com, and postmaster@haagroofingcontractor.com. Also on June 26, 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 July 25, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant hereby specifies the trademarks and service marks on which this Complaint is based and, for each mark, describes the goods or services, with which the mark is used:
HAAG, U.S. Reg. No. 3,869,292 for engineering services, namely, failure and damage analysis, testing and research in the engineering fields of civil, construction, structural, mechanical, metallurgical and electrical, in International Class 042. First Use: 1925.
HAAG, U.S. Reg. No. 3,869,293 for educational services, namely, conducting workshops, seminars and classes in the field of construction, structural, mechanical, metallurgical and electrical failure and damage analysis and in the field of civil, construction, structural, mechanical, metallurgical and electrical engineering, in International Class 041. First Use: 1989.
HAAG, U.S. Reg. No. 3,869,294 for publications, namely booklets, manuals, brochures and educational materials in the field of engineering that involve construction, structural, mechanical, metallurgical, and electrical failure and damage analysis and in the field of civil, construction, structural, mechanical, metallurgical, and electrical engineering, in International Class 016. First Use: 1987.
HAAG, U.S. Reg. No. 3,875,616 for measuring apparatus, namely shingle gauges; technical measuring, testing and checking apparatus and instruments for measuring, testing and checking construction, structural, mechanical, metallurgical and electrical failures and damages; technical measuring, testing and checking apparatus and instruments for measuring, testing and checking construction, structural, mechanical, metallurgical, and electrical failures and damages for research purposes in the engineering fields of civil, construction, structural, mechanical, metallurgical, and electrical, in International Class 009. First Use: 1994.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds in accordance with UDRP Rule 3(b)(ix). All three elements of the Policy are alleged and proved by the Complainant herein below per UDRP Para. 4(a).
Complainant is a multi-faceted company which performs forensic engineering throughout the world in the fields of civil, structural, architectural, electrical, mechanical engineering and education. The Complainant operates a state-of-the-art Research/Testing laboratory which specializes in materials testing. Complainant’s education department allows its engineers to share their scientifically-based approach to damage assessment through publications and tools, and seminars. Complainant also provides companies with the most critical phase after a loss – the onsite damage assessments. Complainant services the legal industry, the insurance industry, corporations, manufacturers, private companies, and individuals.
As part of Complainant’s educational programs, Complainant owns and operates The Haag Certified Roof Inspector (Commercial or Residential) Programs that help inspectors quickly and accurately inspect roofs for damage, and correctly evaluate that damage. Complainant’s expert engineers teach Complainant’s clients scientifically-based damage evaluation techniques. Being “Haag Certified” lends credibility to findings, and helps Complainant’s clients support their conclusions.
Complainant’s business was started in 1924 and Complainant’s growth results directly from Complainant’s long-standing commitment to quality while expanding technical knowledge and services. Complainant is proud to continue that tradition today. The Administrative Panel (the “Panel”) is invited to learn more about Complainant online at www.haagengineering.com and www.certifiedroofinspector.com.
[a.] The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights under UDRP Rule 3(b)(ix)(1) and UDRP Policy ¶4(a)(i).
Complainant establishes rights in the HAAG mark through four separate USPTO HAAG trademark registrations – itemized in Section 6(c) of this Complaint – and continuous extensive use since 1925, which establishes use of the mark for over 85 years and sufficiently establishes rights in the mark pursuant to Policy ¶4(a)(i). See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“complainant’s federal trademark registrations establish Complainant’s rights in the BLIZZARD mark.”).
The disputed domain names each contain Complainant’s HAAG mark in its entirety and add one of the following descriptive terms, in addition to the generic top-level domain (“gTLD”) “.com”: “certified,” “certified inspector,” “certified roofer,” “roof,” “roofer,” “roofing,” or “roofing contractor;” each of directly relates to Complaint’s business.
Complainant submits that the addition of a gTLD and descriptive terms relating to Complainant’s business to a protected mark indicate that Respondent’s disputed domain names are confusingly similar to Complainant’s protected mark pursuant to Policy ¶4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); See also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
Complainant respectfully submits that Policy ¶4(a)(i) has been satisfied.
[b.] The Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain names that is/are the subject of the complaint under UDRP Rule 3(b)(ix)(2) and UDRP Policy ¶4(a)(ii).
Respondent’s WHOIS information does not indicate that Respondent is commonly known by the disputed domain names. To the contrary, WHOIS and physical address information show that the Respondent is commonly known by one of the following names:
GoodRoof Construction LLC
4400 Will Rodgers Parkway, Suite 207
Oklahoma City, Oklahoma 73108
Mason Deshields LLC d/b/a GoodRoof Construction Company – Keller Division
4400 Will Rodgers Parkway, Suite 207
Oklahoma City, Oklahoma 73108
On information and belief, both of these companies are roofing companies which have business overlap with Respondent, particularly in the fields of structural engineering and roofing and damage assessment of roofs. In addition, Respondent and Mason Deshields LLC d/b/a GoodRoof Construction Company – Keller Division are not authorized or licensed by Complainant to use the HAAG mark for any purpose. Thus, Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Each of Respondent’s domain names resolves to a website offering through click through advertising products and services that compete with Complainant’s business.
Complainant submits that such use is 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). See 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 under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
Furthermore, each of Respondent’s domain names resolves to a website featuring advertisements for the registrar. Complainant submits that such use of the disputed domain names is neither a bona fide offering of goods or services in accordance with Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See De La Rue Holdings PLC v. Video Images Prods. L.L.C., FA 196054 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent was not using the <delaru.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the respondent was using the domain name to “subject unsuspecting users to a barrage of unsolicited [pop-up] advertisements,” presumably for commercial benefit); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (holding that the respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain names).
Complainant respectfully submits that Policy ¶4(a)(ii) has been satisfied.
[c.] The domain names should be considered as having been registered and being used in bad faith under UDRP Rule 3(b)(ix)(3) and UDRP Policy ¶4(a)(iii).
Respondent is using the domain names to redirect Internet users to a website featuring products and services in competition with Complainant. This constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy ¶4(a)(iii). See S. Exposure v. S. Exposure Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant’s marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant’s business).
On information and belief, Respondent benefits commercially when consumers are redirected to Respondent’s confusing similar domain names. Respondent is therefore capitalizing on the likelihood that consumers will confuse the source of the disputed domain names as being affiliated with Complainant. This is further evidence of bad faith registration and use under Policy ¶4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
Complainant respectfully submits that Policy ¶4(a)(iii) has been satisfied.
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 cancelling or transferring 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 presented evidence it owns the United States Patent & Trademark Office (“USTPO”) registrations for the HAAG mark (e.g., Reg. No. 3,869,292 filed September 24, 2009; registered November 2, 2010) which give Complainant rights in the mark. Complainant uses its mark in connection with engineering services, including structural, construction, mechanical, and testing services. The panels in Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), and Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) have held the registration of a mark with a federal trademark authority is sufficient evidence to establish a complainant’s rights in a mark. This Panel agrees and finds Complainant has adequately established its rights in the HAAH mark pursuant to Policy ¶4(a)(i).
Complainant claims the <haagcertified.com>, <haagcertifiedinspector.com>, <haagcertifiedroofer.com>, <haagroof.com>, <haagroofer.com>, <haagroofing.com>, and <haagroofingcontractor.com> domain names are confusingly similar to the HAAG mark. Respondent adds the generic top-level domain (“gTLD”) “.com” and one or more generic or descriptive terms to each of the disputed domain names. Panels have found the addition of a gTLD, a required feature of every domain name, is irrelevant to a Policy ¶4(a)(i) 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). To holder otherwise would eviscerate the UDRP.
The addition of generic and/or descriptive terms relating to Complainant’s business fails to adequately distinguish a disputed domain name from the mark incorporated within it. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i)). Therefore, the Panel finds Respondent’s <haagcertified.com>, <haagcertifiedinspector.com>, <haagcertifiedroofer.com>, <haagroof.com>, <haagroofer.com>, <haagroofing.com>, and <haagroofingcontractor.com> domain names are confusingly similar to the HAAG mark under 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 argues Respondent is not commonly known by the <haagcertified.com>, <haagcertifiedinspector.com>, <haagcertifiedroofer.com>, <haagroof.com>, <haagroofer.com>, <haagroofing.com>, and <haagroofingcontractor.com> domain names. The WHOIS records for the disputed domain names list “GoodRoof Construction LLC” as the domain name registrant. Panels have found that the information contained in a disputed domain name’s WHOIS record is illustrative of whether a Respondent is commonly known by a disputed domain name. See Tercent Inc. v. Lee 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, this Panel finds Respondent is not commonly known by the <haagcertified.com>, <haagcertifiedinspector.com>, <haagcertifiedroofer.com>, <haagroof.com>, <haagroofer.com>, <haagroofing.com>, and <haagroofingcontractor.com> domain names pursuant to Policy ¶4(c)(ii).
Complainant claims to Respondent’s use of the disputed domain names demonstrates Respondent has no rights nor legitimate interests. The <haagcertified.com>, <haagcertifiedinspector.com>, <haagcertifiedroofer.com>, <haagroof.com>, <haagroofer.com>, <haagroofing.com>, and <haagroofingcontractor.com> domain names resolve to websites which feature advertisements to goods and services in competition with those that Complainant offers. The panel in ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), held that the display of competing links on a disputed domain name is not a use which protects the respondent under Policy ¶¶4(c)(i) and 4(c)(iii). This Panel concurs and finds Respondent’s use of the <haagcertified.com>, <haagcertifiedinspector.com>, <haagcertifiedroofer.com>, <haagroof.com>, <haagroofer.com>, <haagroofing.com>, and <haagroofingcontractor.com> domain names is neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant argues Respondent registered and is using the <haagcertified.com>, <haagcertifiedinspector.com>, <haagcertifiedroofer.com>, <haagroof.com>, <haagroofer.com>, <haagroofing.com>, and <haagroofingcontractor.com> domain names in bad faith. The disputed domain names resolve to websites featuring advertisements to products and services competing with Complainant’s offerings under the HAAG mark. Panels have found the registration and such use of a domain name disrupts Complainant’s business, which constitutes bad faith. See 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 ¶4(b)(iii)). Complainant makes this claim. This Panel agrees with Complainant’s assertion and finds Respondent registered and is using the disputed domain names disruptively, which constitutes bad faith under Policy ¶4(b)(iii).
Complainant claims the disputed domain names confuse Internet users regarding the source of the disputed domain name and Respondent is capitalizing on the <haagcertified.com>, <haagcertifiedinspector.com>, <haagcertifiedroofer.com>, <haagroof.com>, <haagroofer.com>, <haagroofing.com>, and <haagroofingcontractor.com> domain names by diverting Internet users away from Complainant’s genuine website. Complainant argues Respondent is attempting to imply that the disputed domain names are affiliated with Complainant, which is not true. Based upon these uncontroverted claims, the Panel finds the disputed domain names were meant to attract Internet users, for commercial gain, by creating a likelihood of confusion as to the source of the disputed domain names. This means Respondent registered and is using the <haagcertified.com>, <haagcertifiedinspector.com>, <haagcertifiedroofer.com>, <haagroof.com>, <haagroofer.com>, <haagroofing.com>, and <haagroofingcontractor.com> domain names in bad faith under Policy ¶4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <haagcertified.com>, <haagcertifiedinspector.com>, <haagcertifiedroofer.com>, <haagroof.com>, <haagroofer.com>, <haagroofing.com>, and <haagroofingcontractor.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, July 25, 2012
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