GreenHeck Fan Corporation v. Siouzanna Terlitskaia
Claim Number: FA1710001752889
Complainant is GreenHeck Fan Corporation (“Complainant”), represented by Dana P. Jozefczyk of Merchant & Gould, P.C., Colorado. Respondent is Siouzanna Terlitskaia (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <greenheck.net>, <greenheckfan.net>, <greenheckventilator.com>, and <greenheckventilator.net>, registered with Moniker Online Services LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 9, 2017; the Forum received payment on October 9, 2017.
On October 10, 2017, Moniker Online Services LLC confirmed by e-mail to the Forum that the <greenheck.net>, <greenheckfan.net>, <greenheckventilator.com>, and <greenheckventilator.net> domain names are registered with Moniker Online Services LLC and that Respondent is the current registrant of the names. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 October 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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@greenheck.net, postmaster@greenheckfan.net, postmaster@greenheckventilator.com, and postmaster@greenheckventilator.net. Also on October 12, 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 November 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain names be transferred from Respondent to Complainant.
A. Complainant
FACTUAL AND LEGAL GROUNDS
This
Complaint is based on the following factual and legal grounds:
ICANN Rule 3(b)(ix). NAF Supp. Rule 4(a).
GreenHeck Fan Corporation (hereinafter "GreenHeck") is a worldwide, leading manufacturer of air movement control equipment and has been using its GREENHECK mark in association with the same since 1947. Greenheck uses the GREENHECK trademark as the primary brand of their products and as the name of the company. Greenheck has used its GREENHECK mark continuously since 1947. As such, its rights in the GREENHECK trademark for air movement and control equipment trace back to at least as early as 1947. Greenheck has likewise used its GREENHECK mark in a stylized form since 1987.
The marks are hereinafter referred to as Greenheck’s “GREENHECK marks.”
Greenheck has a principal place of business in Schofield, Wisconsin. Since at least as early as 1947, Greenheck has designed and manufactured air movement and control equipment. Greenheck is the leading manufacturer of ventilation products, with a network of distributors throughout the United States, Canada, India and Mexico. Greenheck’s ventilation products are also available through manufacturing representatives around the world, including in Argentina, Australia, Bahrain, Canada Caribbean, Chile, China, Colombia, Costa Rica, Ecuador, Egypt, El Salvador, Emirates, Guam, Guatemala, Hong Kong, India, Indonesia, Israel, Japan, Kuwait, Lebanon, México, Oman, Panamá, Perú, Puerto Rico, Qatar, Saudi Arabia, Singapore, South Korea, Taiwan, Thailand, the Philippines, Turkey, United Arab Emirates, United Kingdom, Venezuela, and Vietnam. Throughout Canada, there are a number of representatives that sell GREENHECK branded products.
Greenheck’s GREENHECK marks have been continuously used by Greenheck since at least 1947. Moreover, Greenheck first filed an application for the registration of its GREENHECK trademark with the United States Trademark Office on November 26, 1991. Greenheck’s GREENHECK Registration is now incontestable.
Greenheck has invested substantial sums of money in developing and marketing its products under its GREENHECK Marks and has developed substantial goodwill and customer loyalty under said marks. Greenheck has developed a cross-continental network of Greenheck distributors and representatives, which provide Greenheck’s GREENHECK branded products on a global scale. As a result, consumers throughout the world recognize the GREENHECK Mark as an indicator of air movement and control equipment produced by Greenheck.
Respondent registered the domain names GREENHECK.NET, GREENHECKFAN.NET, GREENHECKVENTILATOR.COM, GREENHECKVENTILATOR.NET. (“GREENHECK Domain Names”) on or about June 25 2013 and July 31, 2013, under Moniker Online Services, LLC’s (“Moniker’s”) domain registration policy.
Respondent has no statutory or common law trademark rights or any other right or legitimate interest to Greenheck’s GREENHECK’S Marks, the marks GREENHECKFAN, GREENHECKVENTILATOR, or in the infringing domain names GREENHECK.NET, GREENHECKFAN.NET, GREENHECKVENTILATOR.COM, or GREENHECKVENTILATOR.NET. Greenheck has not authorized or licensed Respondent to use Greenheck’s GREENHECK Marks or any derivative mark for any purpose. Greenheck’s rights in the GREENHECK marks date back to its first date of use 1947. Greenheck first took steps to protect its valuable GREENHECK Marks at least twenty years before Respondent registered the domain name. As such, there is no controversy as to the fact that Greenheck has priority over Respondent.
Respondent has registered and used a domain name that is confusingly similar to the GREENHECK Marks in bad faith. There is no evidence the domain names were registered for a legitimate reason. The evidence shows the domain names were registered primarily for the purpose of trading off Greenheck’s goodwill for its GREENHECK marks by offering products similar to those sold by Greenheck. Two of the GREENHECK domain names actively promote and sell air movement products that are sold by competitors of Greenheck. The domain name GREENHECK.NET resolves to a website that advertises goods sold by Oleg Blower Company (“Oleg.”) The domain name GREENHECKVENTILATOR.COM resolves to a website that advertises goods sold by Blowers Depot. The goods sold by both Oleg and Blowers Depot directly overlap with those sold by Greenheck. Greenheck is in the business of selling air movement equipment such as fans, ventilators, blowers, and coils. The goods advertised on both Oleg and Blowers’ Depot directly overlap with those sold by Greenheck.
Moreover, Respondent is redirecting the GREENHECK.NET domain to the website www.abblower.com. Specifically, when a link on the GREENHECK.NET domain is selected, the user is redirected to the domain name. Respondent also owns the domain www.abbblower.com.
The domain names GREENHECKVENTILATOR.NET and GREENHECKFAN.NET each resolve to parking pages. Some of the links on these parking pages resolve to competitors of Greenheck and it appears that Respondent is commercially benefitting on a pay for click basis.
Respondent’s registration of the GREENHECK Domain Names evidences the bad faith of Respondent. First, Respondent’s use of the Greenheck’s GREENHECK mark in the GREENHECK.NET and GREENHECKVENTILATOR.COM domain names illustrates the bad faith intention to pass off on the goodwill associated with Greenheck’s GREENHECK Marks by advertising competing air movement products. Second, Respondent’s redirection of GREENHECKVENTILATOR.COM to www.abbblower.com, a domain also owned by Respondent, on which Respondent sells competing products, likewise evidences the bad faith of Respondent. Third, the GREENHECKFAN.NET and GREENHECKVENTILATOR.NET domains resolve to parking pages that provide links to competitors of Greenheck. Last, Respondent’s registration of four GREENHECK Domain Names evidences Respondent’s bad faith by registering numerous variations of domains that include Greenheck’s GREENHECK Marks.
Respondent’s continuous maintenance of the GREENHECK Domain Names will continue to cause harm to Greenheck unless the domain name is transferred to Greenheck. Respondent has no legitimate interest in the GREENHECK Domain Names. Moreover, Respondent’s continued trafficking of that domain name to pass off on the goodwill associated with Greenheck’s GREENHECK Marks is bad faith. Transfer of the domain name to Greenheck is appropriate.
a. The GREENHECK Domain Names are Confusingly Similar to Greenheck’s Corporate Name and Trademarks.
The GREENHECK Domain Names contain the dominant feature GREENHECK, which is also the dominant feature of the GREENHECK Marks. Additionally, the addition of the suffixes .net and .com do not distract from the overall impression of the domain name. Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶4(a)(i) is satisfied). Incorporation of VENTILATOR and FAN into two of the GREENHECK Domain Names, enhances, rather than detracts from the confusion as ventilators and fans are products that are sold by Greenhouse. Microsoft Corporation v. Wayne Lybrand, WIPO Case No. D2005-0020 (March 18, 2005) (Use of microsoftcustomerservice.com by unauthorized third party likely to cause confusion, in view of the additional descriptive language, since “[t]he addition of such relevant descriptive words reinforces rather than detracts from the conclusion that the Domain Name confusingly refers to the business of Complainant and would likely cause at least some customers to assume that the Domain Name is associated with Complainant.”)
Consumers are likely to be confused that the websites located at GREENHECK Domain Names are sponsored and/or endorsed by or affiliated with Greenheck and its business. Greenheck has promoted its goods and services under the GREENHECK Marks since at least as early as 1947. It has offered a variety of air movement products, including ventilators and fans, during that time. It naturally follows that consumers would associate websites located at the GREENHECK Domain Names, which contain the GREENHECK Mark, with Greenheck. This is especially true with regard to GREENHECK.NET and GREENHECKVENTILATOR.COM, which resolve to websites that sell products commonly sold by Greenheck. See Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (holding the content of a website may increase the likelihood of consumer confusion). The requirement of confusing similarity is met.
b. Respondent Does Not Have Any Right or Legitimate Interest in the GREENHECK Domain Names.
Respondent does not have any right or legitimate interest in the GREENHECK Domain Names. The registration of a domain for the purpose of redirecting Internet users interested in another’s products is not a bona fide offering of goods pursuant to Policy ¶4(c)(i). Moreover, Respondent has no legitimate right to the name in that it has not received permission to use the mark pursuant to Policy ¶4(c)(ii). Furthermore, Respondent is not using the mark for legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because Respondent is advertising and purportedly selling products of Greenheck’s competitors and to redirect to websites of Greenheck’s competitors.
1. Respondent has not used the Domain Name in Connection with a Bona Fide Offering of Goods or Services in that the Intent was to Cause Unsuspecting Consumers to Veer to Its Website and Away from Greenheck’s Legitimate Site.
A respondent’s use of a domain name to trick consumers into visiting its website to offer competing products or services is not a bona fide offering of goods or services pursuant to Policy ¶(c)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (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)).
Respondent does not have a bona fide interest in the domain name pursuant to Policy ¶4(c)(i) in that its intent in registering the domain name was to divert traffic away from Greenheck, not to legitimately use the name in connection with the sale of goods. Unsuspecting consumers attempting to visit Greenheck’s website to purchase air movement products likely inadvertently visited Respondent’s sites at the GREENHECK Domain Names they contain the GREENHECK mark. Further, upon arriving at Respondent’s website, those consumers were likely confused because Respondent’s websites at GREENHECK.NET and GREENHECKVENTILATOR.COM sell the same products as sold by Greenheck. Customers visiting the GREENHECKFAN.NET and GREENHECKVENTILATOR.NET websites were likewise diverted when they selected links on the parking page that redirect to competing websites. Customers are likely to think the air movement products offered for sale on the websites hosted at the GREENHECK Domain Names originate from Greenheck. Respondent, in turn, profited off the confusion. The domain name is not connected to a bona fide offering of goods or services and is not a legitimate use.
2. Respondent has no Legitimate Right in the Domain Name Because Greenheck has not Granted Respondent Permission to use the Name.
Respondent also has no legitimate rights pursuant to Policy ¶4(c)(ii) in that it is not commonly known by the mark and has not received Greenheck’s permission to use the mark. 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). A domain name registrant is presumed not to have a legitimate interest in a domain name where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; and (3) Respondent is not commonly known by the domain name. Policy ¶4(c)(ii); Gallup, Inc. v. Amish Country Store, FA96209 (Forum Jan. 23, 2001) (holding that Respondent does not have rights in a domain name when Respondent is not known by the mark). Furthermore, it is “incumbent upon respondents to advance concrete evidence pursuant to Policy ¶4(a)(ii) rebutting the latter assertion because this information is uniquely within the knowledge and control of Respondent.” Wilson v. Whois Privacy Protection Service, Inc., FA0502000417186 (Forum March 29, 2005).
Respondent does not have a legitimate interest in the domain name GREENHECK Domain Names. Greenheck has not licensed its GREENHECK Marks to Respondent. Greenheck’s prior rights to the GREENHECK Marks precede Respondent’s domain name registration. Additionally, there is no evidence Respondent is commonly known by the name GREENHECK. The GREENHECK Domain Names clearly do not refer to Respondent.
3. Respondent’s Diversion of Traffic to Another Website is not a Legitimate Use.
Respondent is also not using the domain name for a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because the name is commercially used to offer competing products to consumers. See RAB Lighting, Inc. v. DNS Support - Ultimate Search, FA0411000363908 (Forum Dec. 30, 2004) (holding that opportunistic use of Complainant’s mark to redirect Internet users to a directory website unrelated to Complainant’s business was not legitimate); DSW Shoe Warehouse, Inc. v. Ultimate Search, FA0501000412381 (Forum March 21, 2005) (holding that use of a domain name to redirect Internet users to a search engine website that provided various links to third parties was not legitimate); See RAB Lighting, Inc. v. DNS Support - Ultimate Search, FA0411000363908 (Forum Dec. 30, 2004) (holding that opportunistic use of Complainant’s mark to redirect Internet users to a website unrelated to Complainant’s business was not legitimate); Thrifty, Inc. and Thrifty Rent-a- Car System, Inc. v. Airportparkinglots.com, FA0211000129123 (Forum January 2, 2003) (diverting traffic from Complainant is not legitimate and evidence of bad faith); MSNBC Cable, LLC v.
Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website).
Respondent is not making a legitimate, non-commercial, or fair use of the GREENHECK Domain Names in that its purpose in registering and using the domain name is to divert Greenheck’s web traffic to websites that compete with Greenheck. Respondent uses the GREENHECK.NET and GREENHECKVENTILATOR.COM websites to advertise and sells air movement products that are not manufactured by Greenheck. Moreover, the links on the parking pages at GREENHECKFAN.NET AND GREENHECKVENTILATOR.NET connect to websites that offer products not sold by Greenheck. Respondent’s use of GREENHECK in the domain names misappropriates Greenheck’s goodwill and cheats consumers into clicking on Respondent’s website when they think they will see information regarding Greenheck and its GREENHECK brand products.
c. The Domain Name Has Been Registered and Used In Bad Faith
Respondent’s registration of a domain name in association with Greenheck’s GREENHECK Marks shows the registration was in bad faith. Respondent’s registration of a domain name with the constructive and actual knowledge of Greenheck’s trademark rights in that name shows bad faith pursuant to Policy ¶4(b)(ii). Respondent’s has registered four domain names that include the GREENHECK Mark, and this pattern of conduct indicates the bad faith of Respondent under Policy ¶4(b)(ii). Because Respondent’s website associated with the GREENHECK Domain Name competed directly against Greenheck, Respondent’s registration disrupted the business of a competitor in bad faith pursuant to Policy ¶4(b)(iii). Respondent has also acted in bad faith pursuant to Policy ¶4(b)(iii) because it has failed to make active use of the domain names used as parking pages, GREENHECKFAN.NET and GREENHECKVENTILATOR.NET, for an extended period of time. Respondent’s intentional attempt to attract Internet users to its website by using a name that is confusingly similar to Greenheck’s GREENHECK Marks is also in violation of Policy ¶4(b)(iv).
1. Respondent Registered the Domain Name in Bad Faith Knowing of Greenheck’s Trademark Rights in the GREENHECK Marks.
Respondent’s registration of the GREENHECK Domain Names was in bad faith pursuant to Policy ¶4(b)(ii) because at the time the name was registered, Respondent was on notice and knew of Greenheck’s rights. “[T]here is a legal presumption of bad faith when [a] Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.” Digi Int’l v. DDI Sys., FA124506 (Forum Oct 24, 2002); see also Pavillion Agency, Inc. v. Greenhouse Agency, Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the domain names are so obviously connected with Complainant that the use or registration by anyone other than Complainant suggests opportunistic bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). Regardless of actual knowledge, a respondent should have conducted a trademark search prior to the registration of the domain name. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case D2001-1319 (Feb 1, 2002) (holding the failure to conduct a trademark search considered an element of bad faith).
Respondent had actual knowledge of Greenheck’s trademark rights in its GREENHECKS Marks prior to the registration of the domain name. There is an obvious connection between the domain name and the GREENHECK marks that registration by anyone other than Greenheck suggests bad faith. In fact, Greenheck’s GREENHECK Marks were registered with the United States Trademark Office at the time the domain name was registered. A simple search for “Greenheck” on the site prior to registration of the GREENHECK Domain Names revealed Greenheck’s website and trademark rights. Further, by incorporating the GREENHECK mark into a domain name that is so obviously related to Greenheck’s mark by advertising products that Greenheck also manufactures, Respondent demonstrates knowledge of Greenheck’s GREENHECK marks at the time of registration. Further, Respondent was at least on constructive notice of Greenheck’s trademark rights in and to the GREENHECK Marks at the time the name was registered. On that basis alone, Respondent’s registration of a confusingly similar domain name shows bad faith.
2. Respondent’s Pattern of Conduct Evidences Bad Faith
“A ‘pattern of conduct’ as required in Paragraph 4.b.(ii) typically involves multiple domain names directed against multiple Complainants, but may involve multiple domain names directed against a single Complainant.” See Smoky Mountain Knife Works v. Deon Carpenter, eResolution Case Nos. AF-230ab; Gruner + Jahr Printing & Publishing Co., G + J McCall’s LLC, Rosie O’Donnell and Lucky Charms Entertainment, Inc. v. Savior Baby, WIPO Case No. D2000-1741).
Respondent has registered four domain names that include the term GREENHECK. Two of these domain names resolve to websites that advertise and sell products that compete with those sold by Greenheck, and the other two of these domain names resolve to parking pages that redirect to websites of competitors of Greenheck. Respondent clearly has evidenced a pattern of conduct that demonstrates bad faith.
3. Respondent’s Failure to Actively Use the Domain Name Shows Bad Faith.
Respondent’s failure to make active use of the domain name shows bad faith. DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Respondent does not make active use of the domain names GREENHECKFAN.NET and GREENHECKVENTILATOR.NET. Rather, Respondent uses the domain names as parking pages that include links to competing websites. Respondent’s non-use and extended failure to actively use the domain name by simply forwarding it to another website shows bad faith.
4. Respondent Acted in Bad Faith when It Diverted Customers to Greenheck’s Competitors.
Respondent’s diversion of traffic to a competitor also shows bad faith pursuant to Policy ¶4(b)(iii). David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶4(b)(iii) where that respondent used the domain name to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that a respondent diverted business from a complainant to a competitor’s website so as to come within the terms of Policy ¶4(b)(iii)); Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy ¶4(b)(iii)).
Respondent directly competed against Greenheck for consumers who were seeking to purchase air movement control products affiliated with the GREENHECK Marks. Both GREENHECK.NET and GREENHECKVENTILATOR.COM redirect to third party websites that sell competing products. Indeed, the GREENHECK.NET website further redirects to www.abbblower.com, which is a competing website owned by Respondent. The GREENHECK Domain Names each incorporate the GREENHECK mark in its entirety. Respondent used that domain name to divert traffic to its website that should have reached Greenheck’s websites. That is bad faith.
5. Respondent Acted in Bad Faith by Intentionally Attempting to Attract Internet Users to Its Website for Commercial Gain by Creating a Likelihood of Confusion with the GREENHECK Marks.
Bad faith intent pursuant to Policy ¶4(b)(iv) is also shown from Respondent’s choosing to use a designation that it knows to be similar to another’s registered trademark in order to attract consumers to its website. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (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); AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where Respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to Complainant’s services and merely took advantage of Internet user mistakes).
Bad faith is shown because Respondent registered the domain name in order to trade on Greenheck’s goodwill associated with its GREENHECK Marks by creating a likelihood of confusion as to the source of the website. Here, Respondent used the GREENHECK Marks to attract consumers to its website. Respondent’s use of Greenheck’s GREENHECK Marks to attract consumers to its website who are searching for GREENHECK branded products demonstrates Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(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.”).
Complainant registered the GREENHECK mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,725,395, registered Oct. 20, 1992). Registration with a governmental national trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark even if Respondent is located in another country. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶4(a)(i).”). Complainant has adequately established its rights in the GREENHECK mark.
Complainant claims Respondent’s disputed domain names are identical or confusingly similar to Complainant’s mark because they all include the GREENHECK mark in its entirety and add either the descriptive term “ventilator” or “fan” and “.com” or “.net.” The addition of a generic term such as “ventilator” or “fan” is insufficient to distinguish a domain name from a mark under Policy ¶4(a)(i). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). The <greenheckfan.net>, <greenheckventilator.com>, and <greenheckventilator.net> domain names are confusingly similar to the GREENHECK mark, and the <greenheck.net> domain name is identical to Complainant’s mark, under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to Respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the <greenheck.net>, <greenheckfan.net>, <greenheckventilator.com>, and <greenheckventilator.net> domain names. Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that Respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶[4(c)(iii)], as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS for all four domain names identifies “Siouzanna Terlitskaia” as the registrant. No evidence exists to show Respondent has ever been legitimately known by the GREENHECK mark. There is no obvious relationship between “Siouzanna Terlitskaia” and the GREENHECK mark. Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to register the domain names. Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii).
Complainant claims Respondent uses the <greenheck.net> NS <greenheckventilator.com> disputed domain names to offer goods and/or services in direct competition with Complainant. Using a confusingly similar domain name which redirects users to a webpage directly competing with Complainant is not a bona fide offering of goods or services. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). The <greenheckventilator.com> and <greenheck.net> domain names resolve to a webpage at <abbblower.com>, owned by Respondent. The two other domain names, <greenheckventilator.net> and <greenheckfan.net> resolve to parked webpages displaying links to competing goods or services. Respondent competes with Complainant and fails to make 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).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered the disputed domain names in bad faith by engaging in a pattern of bad faith registrations through the four domain names at issue in this dispute. Policy ¶4(b)(ii) provides “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct…”. [emphasis added] The second prong is absent here. Complainant does not claim it was prevented from reflecting its trademark in a domain name. Complainant owns <greenheck.com> domain name, which means Complainant’s trademark is reflected in a domain name owned by Complainant. This does not constitute bad faith under Policy ¶4(b)(ii).
Complainant claims Respondent registered and uses the disputed domain names in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain constitutes bad faith under Policy ¶¶4(b)(iii) & (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶4(b)(iv).”). The <greenheckventilator.com> and <greenheck.net> domain names forward to <abbblower.com>, a competing web site owned by Respondent. The other two domain names, <greenheckventilator.net> and <greenheckfan.net>, resolve to dynamic parking webpages displaying links to competing goods or services. Respondent disrupts Complainant’s business and attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶4(b)(iii) & (iv).
Complainant claims Respondent inactively holds the <greenheckventilator.net> and <greenheckfan.net> domain names because they resolve to dynamic parking pages. Inactively holding a confusingly similar domain name can evince bad faith registration and use under Policy ¶4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).”). Such activity is sufficient to prove bad faith registration and use.
Complainant claims Respondent had actual knowledge of Complainant’s rights in the GREENHECK mark. It appears Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Actual knowledge is sufficient to prove bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting Respondent's contention that it did not register the disputed domain name in bad faith since the panel found that Respondent had knowledge of Complainant's rights in the UNIVISION mark when registering the disputed domain name). Respondent must have had actual knowledge of the GREENHECK mark based on Complainant’s longtime use of the mark, the fact Respondent is in Complainant’s business and Respondent’s use of the domain names. It seems clear Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <greenheck.net>, <greenheckfan.net>, <greenheckventilator.com>, and <greenheckventilator.net> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, November 8, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page