Associated Materials, Inc. d/b/a Alside
v. Perma Well, Inc. a/k/a Robert Biser
Claim
Number: FA0304000154121
Complainant is
Associated Materials, Inc., Cuyahoga Falls, OH (“Complainant”) represented
by Holly M. Ford, of Banner & Witcoff, Ltd. Respondent is
Perma Well Inc. a/k/a Robert Biser, Pylesville, MD (“Respondent”).
The
domain name at issue is <ultraguardfence.com>, registered with Network
Solutions, Inc.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 8, 2003; the Forum received a hard copy of the
Complaint on April 9, 2003.
On
April 11, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <ultraguardfence.com> is registered with Network
Solutions, Inc. and that Respondent is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
April 23, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 13, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@ultraguardfence.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
May 21, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <ultraguardfence.com>
domain name is confusingly similar to Complainant’s ULTRAGUARD mark.
2. Respondent does not have any rights or
legitimate interests in the <ultraguardfence.com> domain name.
3. Respondent registered and used the <ultraguardfence.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Alside, manufactures, markets and sells vinyl fencing under the trademark
ULTRAGUARD, and has done so since 1993.
Complainant registered the mark with the U.S. Patent and Trademark
Office as Registration Number 1,803,751 in November of 1993. Complainant operates 90 company-owned supply
centers and has done business in the United States since 1947. Complainant has a reputation as a manufacturer
of affordable, dependable, innovative vinyl products for almost every
application including fencing, siding, windows, decking, soffit, accessories
and trim. The ULTRAGUARD fencing is
used in both residential and agricultural applications.
Respondent,
Perma Well, Inc. a/k/a Robert Biser, is a distributor of horse fence products
and distributes Complainant’s ULTRAGUARD fence product. Respondent has been a distributor of
Complainant’s product since 1994.
Respondent registered the <ultraguardfence.com> domain name
on March 15, 1999 and established a website at the domain name. After several months of negotiations
following Complainant’s discovery of Respondent’s use of this domain name,
Respondent agreed to cease all use of the ULTRAGUARD mark as part of its domain
name. Complainant agreed to allow
Respondent use of the ULTRAGUARD mark to identify its fence product on
Respondent’s new website located at <allhorsefence.com>. Despite this agreement, in March 2003,
Respondent refused to provide the necessary information for transfer of the
<ultraguardfence.com> domain name. Respondent is currently using the disputed domain name to
advertise its products.
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."
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.
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.
Complainant has
established that it has rights in the ULTRAGUARD mark through continuous use in
relation to its fencing product since 1993 and registration with the U.S.
Patent and Trademark Office.
Respondent’s
<ultraguardfence.com> domain name is confusingly similar to
Complainant’s mark because it incorporates Complainant’s entire mark and merely
adds the descriptive term “fence.” The
addition of a term within a domain name that describes Complainant’s products
and/or services does not create a distinct mark capable of overcoming a claim
of confusing similarity. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); 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 Complainant’s HOYLE mark, and that the addition of
“casino,” a generic word describing the type of business in which Complainant
is engaged, does not take the disputed domain name out of the realm of
confusing similarity).
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a Response in this proceeding. Thus, the Panel is permitted to accept all reasonable allegations
and inferences in the Complaint as true.
See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA
95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant 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”).
Moreover,
Respondent has failed to invoke any circumstances that could demonstrate rights
and legitimate interests in the domain name.
When Complainant asserts a prima facie case against Respondent,
the burden of proof shifts to Respondent to show that it has rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no
rights or legitimate interests with respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
Respondent has failed to invoke any circumstance that could demonstrate any
rights or legitimate interests in the domain name).
Respondent, a
distributor of Complainant’s product, is using a confusingly similar domain
name in order to sell Complainant’s product and other horse fence
products. Respondent does not have
permission to use Complainant’s mark in its <ultraguardfence.com>
domain name. Respondent is therefore
using an infringing domain name to divert Internet users to Respondent’s
website. This behavior does not give
rise to rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii)
because it is not a bona fide offering of goods or services, nor a legitimate
noncommercial or fair use. See Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by using Complainant’s trademarks); see
also Household Int’l, Inc. v. Cyntom
Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent
registered the domain name <householdbank.com>, which incorporates
Complainant’s HOUSEHOLD BANK mark, with hopes of attracting Complainant’s
customers and thus finding no rights or legitimate interests).
Respondent,
Perma Well Inc. a/k/a Robert Biser, is not known by any other name to this
Panel. Respondent not come forward with
any evidence to suggest otherwise.
Thus, the Panel infers that Respondent is not commonly known as
ULTRAGUARD FENCE, nor <ultraguardfence.com>. Therefore, Respondent does not have rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
actual knowledge of Complainant’s rights in the ULTRAGUARD mark. Respondent is a distributor of Complainant,
and is on notice as to Complainant’s rights in the ULTRAGUARD mark through that
relationship. Similarly, Respondent is
on notice of its own lack of rights; thus, Respondent’s registration of the
<ultraguardfence.com> domain name despite this actual notice is
evidence of bad faith registration. See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding
that “there is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse").
Respondent is
using a domain name that is confusingly similar to Complainant’s mark in order
to divert Internet traffic interested in Complainant’s product to Respondent’s
website. This behavior is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv) because Respondent
is using a confusingly similar domain name to cause Internet confusion for
commercial gain. See G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see
also Am. Online, Inc. v. Tencent
Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith
where Respondent registered and used an infringing domain name to attract users
to a website sponsored by Respondent).
Thus, the Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <ultraguardfence.com> domain name be TRANSFERRED
from Respondent to Complainant.
John J. Upchurch, Panelist
Dated:
May 23, 2003
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