U.S. Green Building Council v. Yonghui Du
Claim Number: FA1708001743197
Complainant is U.S. Green Building Council (“Complainant”), represented by Lucy Jewett Wheatley of McGuireWoods LLP, Virginia, USA. Respondent is Yonghui Du (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leedcontainerbuilding.com> (‘the Domain Name’), registered with Domain.com, LLC.
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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2017; the Forum received payment on August 4, 2017.
On August 7, 2017, Domain.com, LLC confirmed by e-mail to the Forum that the <leedcontainerbuilding.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 August 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 2017 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@leedcontainerbuilding.com. Also on August 8, 2017, 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 August 30, 2017 , pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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" 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’s contentions can be summarised as follows:
Complainant is a non profit organisation promoting sustainable green building through its LEED certification program which began in 1996. Complainant has a LEED family of marks registered in over 20 countries, in the EUTM system and, inter alia, has the word LEED registered in the USA and Canada. Complainant also owns over eighty domain names containing LEED. The mark is famous and has no meaning other than being distinctive of Complainant’s goods and services.
The Domain Name subsumes the LEED word mark. It is well settled that the mere addition of a generic or descriptive word such as ‘container’ and ‘building’ do not negate the confusing similarity of respondent’s domain names with a complainant’s mark pursuant to Policy 4 (a)(i). In fact the addition of these words increases the confusion as these words are related to Complainant’s business.
In correspondence with Complainant Respondent said it wished to use the Domain Name to pursue green building projects and acknowledged he knew of Complainant’s famous LEED mark. Respondent is not associated with Complainant and does not have any permission to use the LEED mark. Respondent does not have a legitimate reason to register or use any domain name containing LEED. Respondent does not have any rights in the LEED mark and is not known by any LEED name or mark. Respondent is not making a bona fide offering of goods or services as he is not offering products certified by the LEED program.
The Domain Name resolves to a web page that makes no mention of LEED other than in the Domain Name itself and is being used to promote Respondent’s own unrelated goods and services. Respondent has expressed the desire to associate his business with the fame of Complainant’s LEED mark to attract for commercial gain Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site or products or services on it which is text book bad faith registration and use.
B. Respondent
Other than a consent to transfer, Respondent failed to submit a Response in this proceeding.
Complainant is a non profit organisation promoting sustainable green building through its LEED certification program. Complainant owns, inter alia, the LEED certification mark registered in the USA (and Canada where Respondent is based) for Complainant’s services with first use in commerce in the USA recorded as 1996.
The Domain Name registered in 2017 has been used for engineering services related to construction which are not related to Complainant. Respondent has consented to transfer the Domain Name to Complainant.
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 other than consent to transer, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 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 (Forum July 31, 2000) (holding that 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.”).
Respondent has consented to transfer the Domain Name to Complainant but it is frozen pending this UDRP procedure. Since jurisdiction to transfer depends on the three limbs of the Policy being satisfied the Panel carries out the short analysis below.
Identical and/or Confusingly Similar
The Domain Name in this Complaint combines Complainant’s LEED mark registered (in, inter alia, Canada where Respondent is based) for green building certification related services and used since 1996 in relation to the same), the generic terms ‘building’ and ‘container’ which are related to the services provided by Complainant in association with its mark and the gTLD .com.
The addition of terms which are related to Complainant or its goods and services into a domain name with a mark supports a finding of confusing similarity. Accordingly the addition of these generic words does not serve to distinguish the Domain Name from Complainant’s LEED mark especially bearing in mind that Complainant’s business includes certification of building services which may involve containers.
The gTLD .com does not serve to distinguish the Domain Name from the LEED mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
Respondent does not appear to be commonly known by Complainant’s LEED mark. Complainant has not authorised Respondent to use this mark. The use of the Domain Name is commercial and so cannot be legitimate non commercial use.
It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote his own commercial purposes and has admitted knowledge of Complainant and its business at the time of registration of the Domain Name. The usage of Complainant’s LEED mark which has a significant reputation in relation to certification services for green building projects is not fair as the site does not make it clear that there is no commercial connection with Complainant. As such it cannot amount to the bona fide offering of goods and services.
Respondent has not provided any legitimate reason why it should be able to use Complainant’s trade marks in this way and has consented to transfer of the Domain Name to Complainant. As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
As determined above, Respondent's use of the site is commercial and he is using it to make a profit from competing services not authorised by Complainant, with admitted knowledge of the significance of the LEED name and Complainant’s business. It seems clear that the use of Complainant’s mark with a reputation in the Domain Name in relation to engineering services relating to construction projects would cause people to associate the website at the Domain Name with Complainant and its business and services. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web site.
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4 (b)(iv) and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <leedcontainerbuilding.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: September 1, 2017
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