Guardian Industries Corp. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1510001644792
Complainant is Guardian Industries Corp. (“Complainant”), represented by Melissa R. Atherton of Fishman Stewart Yamaguchi PLLC, Michigan, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guardianglass.com>, registered with Internet.Bs Corp.
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.
James Bridgeman as Chair and
Honorable Daniel B. Banks, Jr., (Ret.). and
Sandra J. Franklin as Panelists.
Complainant submitted a Complaint to the Forum electronically on October 30, 2015; the Forum received payment on October 30, 2015.
On November 3, 2015, Internet.Bs Corp. confirmed by e-mail to the Forum that the <guardianglass.com> domain name is registered with Internet.Bs Corp. and that Respondent is the current registrant of the name. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 November 4, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 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@guardianglass.com. Also on November 4, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 2015 pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed James Bridgeman as Chair, and Honorable Daniel B. Banks, Jr., (Ret.). and Sandra J. Franklin as Panelists.
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. 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
Complainant relies on its rights in its portfolio of registered trademarks listed below, and submits that it has been continuously in the business of designing, manufacturing, marketing, and selling glass and glass products for use in the architectural, interior, transportation, technical and other fields since 1932 when the company was founded as Guardian Glass Company and subsequently in 1968 merged into Guardian Industries Corp. Through its own activities and that of its predecessors in title, it has been using the term “GUARDIAN” as the dominant portion of its successive trade names continuously in connection with glass products.
Complainant has continuously used the <guardian.com> domain name and associated website since at least as early as May 4, 1998 to promote its glass products and other goods and services and provide customers with access to its product and service information. Complainant’s principal website to which the <guardian.com> domain name resolves receives 773,827 unique individual visitors annually. Complainant claims furthermore that its LinkedIn page has 21,452 followers.
Since its beginnings in 1932, Complainant has expanded and grown to become a world leader in glass production and now has more than 17,000 employees in at least 25 countries on five continents. Forbes Magazine recently recognized Complainant’s success by naming it one of “America’s Largest Private Companies” in 2014 by virtue of its $5.6 billion revenue.
Complainant submits that the disputed domain name is virtually identical to the trade name of Complainant’s predecessor, “Guardian Glass Company”. The dominant portion of the disputed domain name is identical to the dominant portion of Complainant’s current trade name, “Guardian Industries Corp.” and house mark GUARDIAN Furthermore the disputed domain name is comprised of Complainant’s famous GUARDIAN trademark and the generic term for the primary goods sold by Complainant, i.e., glass.
Panels have consistently found likelihood of confusion where an infringing domain name is comprised of a combination of a known trademark and a descriptive term associated with the goods or services provided under such trademark in cases such as Advanced Micro Devices Inc. v. Dmitry, D2000-0530 (WIPO August 10, 2000) and Scania CV AB (Publ) v. Whois Agent et al., D2014-0998 (WIPO July 21, 2014).
The disputed domain name is also virtually identical and confusingly similar to Complainant’s primary Internet domain name <guardian.com>, with the only difference being that the disputed domain name includes “glass,” which is a generic term that serves to identify Complainant’s primary goods.
Complainant submits that Respondent has no legitimate rights or interests in the disputed domain name. Complainant submits that Respondent does not, and has never offered bona fide goods or services under the disputed domain name as required by ICANN Policy 4(c)(i).
As already noted and evidenced herein, Complainant holds exclusive rights in the GUARDIAN marks, and any use of one or more of these marks by Respondent in connection with a bona fide offering of goods or services associated with “glass,” as identified in the domain name itself, would constitute trademark infringement. Respondent’s interest in the disputed domain name is its value as a name which is confusingly similar to Complainant’s GUARDIAN marks. See Fanuc Ltd v. Machine Control Services, FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (respondent had no rights or legitimate interest because respondent did not own the registered mark, did not have permission to use the mark and was not affiliated with the Complainant’s business).
In this case, on information and belief, Respondent is not and has never been commonly known by the name GUARDIAN and Respondent is not now, and has never been authorized to use the GUARDIAN marks. Accordingly, Respondent cannot demonstrate legitimate rights or interests under ICANN Policy 4(c)(i) or 4(c)(ii). See Victoria’s Secret et al. v. Victoria Summers, FA 96931 (Nat. Arb. Forum May 8, 2001) (finding no legitimate rights or interests where the respondent registered a domain name incorporating the complainant’s mark, the respondent was not commonly known by the complainant’s mark, and the respondent had not used the name in connection with any bona fide offering of goods or services prior to the time of dispute, or for any legitimate noncommercial or fair use).
Additionally, under paragraph 4(c)(iii) of the ICANN Policy, Respondent’s conduct cannot constitute “noncommercial or fair use without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.” Complainant believes that Respondent receives monetary compensation from advertisers in relation to the disputed domain name and Respondent’s registration of the disputed domain name is evidence of intent to reap commercial gain from Complainant’s protected and well-known GUARDIAN marks.
In light of the notoriety of Complainant’s GUARDIAN marks, Complainant’s internet presence, Complainant’s numerous trademark registrations for such marks throughout the world including in the Bahamas where Respondent is located, and the reputation of the goods and services provided in connection therewith, it is inconceivable that Respondent could have registered the domain name now in dispute without actual knowledge of Complainant’s rights. Bad faith registration is evident under such circumstances. See Household Int’l, Inc. v. Cyntom Enterprises, FA 95784 (NAF Nov. 7, 2000) (stating registration of a domain name which one knows to be identical or confusingly similar to another’s trademark is evidence of bad faith).
Complainant argues that Respondent’s acquisition of a domain name consisting of both Complainant’s GUARDIAN mark and the generic term for Complainant’s primary products in combination confirms that the disputed domain name is clearly intended to misdirect web traffic of individuals who are looking for Complainant and Complainant’s official web site.
Complainant submits that Respondent is a well-known cybersquatter who utilized privacy protection when registering the disputed domain name and he has been a respondent in at least 19 reported UDRP proceedings which are listed below and argues that the present case is yet another example of Respondent’s pattern of acquiring domain names incorporating famous trademarks for commercial gain.
Complainant submits that these facts suggest a pattern of bad-faith use and registration of domain names and supports the conclusion that Respondent is in the business of profiting from registration of domain names incorporating others’ well-known marks. WSFS Financial Corporation v. Private Registrations Aktien Gesellschaft 2, D2012-0033 (WIPO Feb. 20, 2012) (privacy protection services can be evidence of bad faith); Tom Cruise v. Network Operations Center / Alberta Hot Rods, D2006-0560 (WIPO July 5, 2006) (respondent’s pattern of registering domain names to prevent the owners of marks from registering them is evidence of bad faith).
Respondent’s website contains links to third party websites which offer and/or promote goods, services and/or information relating to glass. Accordingly, consumers searching for information concerning Complainant are likely to become confused as to whether Respondent or the links provided on Respondent’s website are affiliated or associated with or sponsored or endorsed by Complainant. These links demonstrate that the purpose of Respondent’s website is to generate profit by diverting customers away from Complainant’s website to the websites of third parties.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is in the business of designing, manufacturing, marketing, and selling glass and glass products for use in the architectural, interior, transportation, technical and other fields, with more than 17,000 employees in at least 25 countries on five continents.
Through its predecessor, Complainant has been using the term “GUARDIAN” as the dominant portion of its successive trade names continuously in connection with glass products since 1932 when the company was founded as Guardian Glass Company and subsequently in 1968 merged into Guardian Industries Corp.
Complainant and its subsidiaries hold title to numerous trademark registrations incorporating the term “GUARDIAN” in over 70 countries worldwide including the following U.S registered trade marks:
GUARDIAN registration number 2,839,435 registered on 05/11/2004 for goods in international classes 12, 19 and 20;
GUARDIAN registration number 3,452,774 registered on 06/24/2008 for goods in international class 19;
GUARDIAN registration number 2,807,781 registered on 01/27/2004 for goods in international class 17;
GUARDIAN registration number 2,834,661 registered on 04/20/2004 for services in international class 35;
GUARDIAN registration number 3,828,378 registered on 08/03/2010 for services in international classes 35 and 37;
GUARDIAN registration number 3,943,489 registered on 04/12/2011 for goods in international class 21;
GUARDIAN PLUS registration number 3,538,039 registered on 11/25/2008 for services in international class 35;
GUARDIAN PLUS registration number 2,723,731 registered on 06/10/2003 for services in international class 35;
GUARDIAN SELECT registration number 3,942,956 registered on 04/12/2011for services in international classes 35 and 40.
And is also the owner of the following trademarks registered in the Bahamas:
GUARDIAN registration number 31897 registered on 7/16/2013;
GUARDIAN registration number 31896 registered on 7/16/2013.
Complainant also owns over 80 domain name registrations incorporating the GUARDIAN marks, including its principal domain name <guardian.com> which Complainant registered on January 8, 1992 and at which address it maintains its principal corporate website.
In the absence of a Response, there is no information available about the Respondent except for that provided by the Complainant in the Complaint.
It appears that the Respondent has been a respondent in at least 19 reported UDRP decisions, most of which resulted in a finding of bad faith and transfer of the involved domain names namely Costco Wholesale Membership, Inc., Costco Wholesale Corporation v. Domain Admin, Whois Privacy Corp. / Ryan G Foo, PPA Media Services WIPO Case D2015 1290, Emigrant Bank v. Ryan G Foo, PPA Media Services / Whois Privacy Corp. Case No. D2015-1226WIPO Case D2015 1226, Wikimedia Foundation, Inc. v. Whois Privacy Corp. / Ryan G Foo, PPA Media Services WIPO Case D2015 1098, August 18, 2015, American Honda Motor Co., Inc. v. Ryan G Foo, PPA Media Services Case No. D2015-0829 WIPO Case D2015 0829, July 8, 2015, Cox Communications, Inc. v. Domain Admin, Whois Privacy Corp. / Ryan G Foo, PPA Media Services WIPO Case D2015 0306, Bayerische Motoren Werke AG v. Ryan G Foo, PPA Media Services WIPO Case D2015 0213, Zions Bancorporation v. Ryan G Foo, PPA Media Services / Domain Admin, Whois Privacy Corp. WIPO Case D2014 2278, Edelrid GmbH & Co. KG v. Whois Privacy Corp., / Ryan G Foo, PPA Media Services WIPO Case D2014 2182, Groupon, Inc. v. Whois Privacy Corp. / Ryan G Foo, PPA Media Services WIPO Case D2014 2139, Casual Dreams, S.L.U v. Whois Privacy Corp., Domain Administrator / Ryan G Foo, PPA Media Services WIPO Case D2014 1872, Wal-Mart Stores, Inc. v. Whois Privacy Corp. / Ran G Foo, PPA Media Services WIPO Case D2014 1864, Pixers Ltd. v. Whois Privacy Corp. Case No. D2015-1171, Zions First National Bank v. Domain Admin / WhoIs Privacy Corp. WIPO Case D2015 1137, PB Web Media B.V. v. Domain Admin, Whois Privacy Corp. WIPO Case D2015 0928 Black & Decker, Inc. v. Domain Admin, Whois Privacy Corp. WIPO Case D2015 0768, R.V. Kuhns & Associates, Inc. v. Gregory Ricks / Whois Privacy Corp. / Domain Administrator WIPO Case D2014 2041, Sofia Vergara v. Domain Administrator, Fundacion Private Whois / Domain Admin, Whois Privacy Corp. / Guy Bouchard WIPO Case D2014 2008, The Royal Bank of Scotland Group Plc v. Domain Admin, WhoIs Privacy Corp WIPO Case D2014 1817, Zions Bancorporation v. Ryan G Foo / PPA Media Services WIPO Case D2014 1797.
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.”).
The evidence before this Panel establishes that Complainant has rights in the GUARDIAN trademark through its above-listed portfolio of trademark registrations and through its long and substantial use of the GUARDIAN mark in association with its international glass manufacturing and distribution business.
This Panel finds that the disputed domain name <guardianglass.com> is confusingly similar to Complainant’s GUARDIAN mark. The disputed domain name contains Complainant’s mark in its entirety. The disputed domain name adds the English language words “guardian” and “glass” in combination with the gTLD extension <.com>. The word “guardian” is the first, dominant and distinctive element of the disputed domain name. The descriptive word “glass” is a reference to the products produced and sold by Complainant and it is well established that the gTLD <.com> extension may be ignored for the purposes of making the comparison between the mark and the domain name.
In these circumstances, this Panel finds that the disputed domain name is confusingly similar to the GUARDIAN trademark in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy paragraph 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The domain name is confusingly similar to Complainant’s GUARDIAN mark; it incorporates a reference to glass which is Complainant’s principal product; Complainant has not permitted Respondent to use its GUARDIAN mark in the disputed domain name; it is probable that any commercial use of the disputed domain name in connection with the sale of glass would be unlawful.
Respondent has never been commonly known by the disputed domain name.
Respondent is making a commercial use of the disputed domain name by establishing a website at the address of the disputed domain name to generate pay-per-click income from visitors to the site. Respondent cannot establish rights in the disputed domain name by such use. Panels consistently find that using a domain that is confusingly similar to another’s mark for the purposes of hosting commercial links is not 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 ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees. . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
In these circumstances the burden of proof shifts to the Respondent who has failed to file a Response or make any submissions in this proceeding.
This Panel finds therefore that Respondent has no rights or legitimate interests in the disputed domain name and Complainant has also succeeded in the second element of the test in Policy paragraph 4(a)(ii).
This Panel finds that the disputed domain name was registered in order to take predatory advantage of Complainant’s goodwill and reputation in the GUARDIAN mark. It is improbable that anyone would choose and register a combination of Complainant’s the distinctive GUARDIAN trademark with the descriptive term “glass” in a domain name for any other reason.
On the evidence before this Panel, Respondent has used the disputed domain name to resolve to a website which contains links to competitors of Complainant. Respondent is no doubt earning pay-per-click income from the links on his website by taking advantage of Complainant’s goodwill and diverting Internet traffic intended for Complainant.
This Panel finds that by such use of the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's GUARDIAN mark as to the source, sponsorship, affiliation, or endorsement of his web site. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the respondent registered the domain name <statefarmnews.com> in bad faith because the respondent intended to use the complainant’s marks to attract the public to the web site without permission from the complainant).
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith.
As Complainant has therefore satisfied the third and final element of the test in Policy paragraph 4(a)(iii) it is entitled to the relief sought in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guardianglass.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________
James Bridgeman
Chair
Sandra J. Franklin Honorable Daniel B. Banks, Jr., (Ret.). Panelist Panelist
Dated: December 12, 2015
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