Eagle Mouldings, Inc. v. C M
Claim Number: FA1510001642111
Complainant is Eagle Mouldings, Inc. (“Complainant”), represented by Z. Peter Sawicki of Westman, Champlin & Koehler, P.A., Minnesota, USA. Respondent is C M (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eaglemoulding.com>, which is registered with FastDomain Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 12, 2015; the Forum received payment on October 12, 2015.
On October 14, 2015, FastDomain Inc. confirmed by e-mail to the Forum that the <eaglemoulding.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 October 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 2015 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@eaglemoulding.com. Also on October 15, 2015, 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.
A timely Response was received and determined to be complete on November 3, 2015.
An Additional Submission of Complainant was received under date of November 6, 2015.
On November 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In its Complaint and Additional Submission, Complainant asserts, among other things, that:
Complainant has common law rights in the EAGLE MOULDINGS mark by virtue of its continuous and extensive use in commerce dating from at least December 31, 1989.
Complainant has, under date of October 6, 2014, filed an application with the United States Patent and Trademark Office (“USPTO”) for registration of the EAGLE MOULDINGS mark, which application was published for opposition on July 28, 2015, and no opposition has since been filed.
Complainant uses the EAGLE MOULDINGS mark in the marketing of its aluminum extrusions and related goods.
Respondent registered the domain name <eaglemoulding.com> no earlier than October 18, 2011.
The disputed domain name is confusingly similar to Complainant’s EAGLE MOULDINGS mark.
Respondent has not been commonly known as the domain name.
Complainant has not licensed or otherwise authorized Respondent to use its EAGLE MOULDINGS mark.
Respondent has failed to provide a bona fide offering of goods or services by means of the domain name, or a legitimate or fair use.
Rather, the domain name resolves to a webpage by which Respondent operates a competing for-profit business.
Respondent’s spouse is the owner of that competing business.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent is attempting to profit commercially from a likelihood of confusion among Internet users as to the possibility of Complainant’s association with the domain name.
Respondent knew of Complainant and its rights in the EAGLE MOULDINGS mark when it registered the domain name.
Respondent has attempted to conceal its identity as the spouse of the owner of the business which it seeks to benefit by its use of the domain name.
Respondent has engaged in bad faith registration and use of the domain name.
B. Respondent
In its Response, Respondent alleges, inter alia, that:
Respondent “concedes the registration and ownership of the [t]rademark EAGLE MOULDINGS” by Complainant.
Respondent concedes “that they are in no way authorized, associated with, under the control of, [or] in partnership with…Complainant.”
Complainant has not provided evidence sufficient to establish secondary meaning in the EAGLE MOULDINGS mark sufficient to establish its claim of common law rights in that mark.
Respondent acquired the <eaglemoulding.com> domain name “with the intent to create a local American based business.”
Respondent has rights to and legitimate interests in the domain name because it is a generic domain name reseller.
Respondent did not know of Complainant until it became aware of the filing of the Complaint in this proceeding.
Respondent has not attempted to sell the domain name to Complainant or any of its business competitors.
Respondent has not engaged in bad faith registration or use of the domain name.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Respondent concedes that Complainant has rights in the EAGLE MOULDINGS mark, and Respondent does not contest Complainant’s assertion that the domain name <eaglemoulding.com> is confusingly similar to its EAGLE MOULDINGS mark. Accordingly, we must find, for purposes of Policy ¶ 4(a)(i), that the <eaglemoulding.com> domain name is confusingly similar to the EAGLE MOULDINGS mark in which Complainant has rights.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
We will therefore examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <eaglemoulding.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use its EAGLE MOULDINGS mark. Moreover, the pertinent WHOIS information identifies the registrant only as “CM,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding, based on the relevant WHOIS information and other evidence in the record, that a UDRP respondent was not commonly known by the <cigaraficionada.com> domain name and so failed to show that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii)).
We next observe that Complainant asserts that Respondent uses the disputed <eaglemoulding.com> domain name to profit by operating a website offering products in competition with the business of Complainant conducted under the EAGLE MOULDINGS mark. Respondent contests this assertion, contending, in essence, that it is a domain name reseller dealing in generic names. On the facts before us, however, we find Respondent’s stated position unworthy of belief. As a result, we conclude that Respondent’s employment of the domain name 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), either of which would, if established, demonstrate that Respondent has recognizable rights to or legitimate interests in the domain name. See, for example, Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010):
The Panel finds that … attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s registration and use of the <eaglemoulding.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent uses the disputed <eaglemoulding.com> domain name, which we have found is confusingly similar to Complainant’s EAGLE MOULDINGS mark, to attempt to profit from the confusion caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this too is proof of Respondent’s bad faith in the registration and use of the domain name. See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent used a disputed domain name to sell educational services that targeted a UDRP complainant’s market).
Finally, under this head of the Policy, it is plain that Respondent knew of Complainant and its rights in the EAGLE MOULDINGS mark when it registered the <eaglemoulding.com> domain name. Any doubt on this point evaporates in the face of undenied evidence of Respondent's efforts to conceal its identity as the spouse of the owner of the competing business to whose website the domain name resolves. We thus conclude that this is further proof of Respondent’s bad faith in the registration of the domain name. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (finding, under Policy ¶ 4(a)(iii), that a UDRP respondent registered a domain name in bad faith, after concluding that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <eaglemoulding.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 10, 2015
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