U.S. Structures, Inc. v. Ginger Storm
Claim Number: FA1401001540563
Complainant is U.S. Structures, Inc. (“Complainant”), represented by Sheldon H. Klein of Gray, Plant, Mooty, Mooty & Bennett, P.A., Washington, D.C., USA. Respondent is Ginger Storm (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <archadeck-chicagoland.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 January 23, 2014; the National Arbitration Forum received payment on January 24, 2014.
On January 24, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <archadeck-chicagoland.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 January 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2014 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@archadeck-chicagoland.com. Also on January 27, 2014, 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 February 20, 2014, 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.
A. Complainant’s Contentions
i. Complainant owns the ARCHADECK mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,328,943, registered April 2, 1985).
ii. Complainant is a leading producer of custom-designed and custom-built outdoor living structures, such as decks, porches, sunrooms, and gazebos.
iii. Complainant uses the ARCHADECK mark to market and sell its services in the field of custom outdoor living structures.
iv. Complainant’s parent company has owned and operated the domain <archadeck.com> since 1995.
i. Policy ¶ 4(a)(i)
1. The <archadeck-chicagoland.com> domain name is confusingly similar to Complainant’s ARCHADECK mark as it incorporates the mark in full with the addition of the descriptive term “chicagoland.” One of Complainant’s franchisees uses the “Chicagoland” term in its business name to describe the franchised location.
ii. Policy ¶ 4(a)(ii)
1. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not affiliated with Complainant, nor has Complainant authorized Respondent’s use of the ARCHADECK mark.
2. Respondent does not use the <archadeck-chicagoland.com> domain name in connection with a legitimate noncommercial or fair use, without intent for commercial gain.
3. Respondent uses the <archadeck-chicagoland.com> domain name to operate a hit farm. The resolving page features links to sites that offer services that are similar to Complainant’s services, and Respondent commercially gains when Internet users click on the links.
iii. Policy ¶ 4(a)(iii)
1. Respondent’s bad faith is demonstrated by Respondent’s use of the disputed domain name to generate revenue as a click-through website. Respondent is taking advantage of Complainant’s well-known mark and the associated goodwill in an effort to achieve Respondent’s own commercial gain.
2. Respondent had knowledge of Complainant’s rights in the ARCHADECK mark at the time Respondent registered the disputed domain name. Such knowledge is further evidence of Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 purports to be a leading producer of custom-designed and custom-built outdoor living structures, such as decks, porches, sunrooms, and gazebos. Complainant asserts that it uses the ARCHADECK mark to market and sell its services in the field of custom outdoor living structures. Complainant claims to own the ARCHADECK mark through its trademark registrations with the USPTO (e.g., Reg. No. 1,328,943, registered April 2, 1985), and argues that such trademark registrations satisfy the requirements of the Policy. The Panel finds that Complainant’s USPTO registrations are sufficient to establish Complainant’s rights in the ARCHADECK mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant contends that the <archadeck-chicagoland.com> domain name is confusingly similar to Complainant’s ARCHADECK mark as it incorporates the mark in full with the addition of the geographically descriptive term “chicagoland” preceded by a hyphen. The Complaint urges that one of Complainant’s franchisees uses the “Chicagoland” term in its business name to describe the franchised location. Previous panels have held that the addition of a hyphen and of a geographic term are insufficient to distinguish a domain name from a mark. For example, in LodgeWorks, L.P. v. Daniel Kirchhof / Unister GmbH, FA 1336564 (Nat. Arb. Forum September 1, 2010), the Panel found that the respondent’s additions of hyphens and geographic terms to the complainant’s mark did not distinguish the disputed domain names and the mark at issue. The Panel concludes that the addition of a hyphen and the addition of the term “chicagoland” are insufficient to distinguish the <archadeck-chicagoland.com> domain name from Complainant’s ARCHADECK mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. In so arguing, Complainant contends that Respondent is not affiliated with Complainant and that Complainant has not authorized Respondent’s use of the ARCHADECK mark. The Panel notes that Respondent has failed to submit a response to refute Complainant’s contentions. In light of the available evidence, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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 that it is commonly known by the domain name).
Complainant also contends that Respondent does not use the <archadeck-chicagoland.com> domain name in connection with a legitimate noncommercial or fair use, without intent for commercial gain. Complainant asserts that Respondent uses the <archadeck-chicagoland.com> domain name to operate a hit farm. Particularly, Complainant contends that the resolving page features links to sites that offer services that are similar to Complainant’s services, and presumes that Respondent commercially gains when Internet users click on the links. Complainant provided a screenshot of the webpage resolving from the disputed domain name. Of note, the screenshot shows that the webpage provides information on landscaping and a link to “Regal Garden Sheds Grantham.” Previous panels have held that a respondent’s use of a confusingly similar domain name to misdirect Internet users to the respondent’s own site for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel therefore finds that Respondent is not using the disputed domain name to provide 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).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s bad faith is demonstrated by Respondent’s use of the disputed domain name to generate revenue as a click-through website. Complainant claims that Respondent is taking advantage of Complainant’s well-known mark and the associated goodwill in order for Respondent to gain commercially. The Panel agrees that the screenshot submitted by Complainant corroborates Complainant’s contention that Respondent is impermissibly attracting Internet users to a click-through website from which Respondent presumably benefits, and therefore finds evidence of Respondent’s bad faith pursuant Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant further contends that Respondent had knowledge of Complainant’s rights in the ARCHADECK mark at the time Respondent registered the disputed domain name. Complainant argues that such knowledge provides evidence that Respondent registered the disputed domain name in bad faith. Past panels have determined that actual knowledge can be inferred under certain circumstances. For example, in Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002), the panel found that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the [c]omplainant's mark when it registered the subject domain name." Here, Complainant has provided a screenshot of the resolving page showing that Respondent’s website contains information and links to other parties operating alongside Complainant in the field of outdoor living building and design. The Panel also notes that one of Complainant’s franchisees uses the “Chicagoland” term in its business name to describe the franchised location. Given the circumstances, the Panel infers that Respondent had actual knowledge of Complainants rights in the ARCHADECK mark at the time Respondent registered the disputed domain name, and therefore finds that Respondent registered the <archadeck-chicagoland.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <archadeck-chicagoland.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: March 5, 2014
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