Trex Company, Inc. v. Lumbermax.com
Claim
Number: FA0503000433856
Complainant Trex Company, Inc. (“Complainant”), is
represented by B. Brett Heavner, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., 901 New York Avenue NW, Washington,
DC 20001. Respondent is Lumbermax.com (“Respondent”), 3300
Gonzales St., Austin, TX 78702.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <trex-decking.com>, registered with Go
Daddy Software, 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.
Hon. Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
1, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 2, 2005.
On
March 1, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <trex-decking.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy Software, Inc. has verified that Respondent is
bound by the Go Daddy Software, 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
March 7, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 28, 2005 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@trex-decking.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 31, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <trex-decking.com>
domain name is confusingly similar to Complainant’s TREX mark.
2. Respondent does not have any rights or
legitimate interests in the <trex-decking.com> domain name.
3. Respondent registered and used the <trex-decking.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Trex Company Inc., is one of the largest manufacturers of alternative decking products
in the United States. Complainant uses
the TREX mark in connection with its Wood-Polymer lumber, a composite of waste
and wood fibers and reclaimed polyethylene manufactured in a proprietary
process. Complainant’s products are
used primarily for residential and commercial decking. Complainant has over ninety wholesale
distribution centers, which sell to 3,300 authorized dealers across the United
States.
Complainant
began using the TREX mark in commerce as early as May 25, 1994 Complainant owns
trademark registration rights for the TREX mark through registration with the
United States Patent and Trademark Office (Reg. No. 1,881,449 issued February
28, 1995).
Respondent
registered the <trex-decking.com> domain name on July 24,
2004. Respondent is using the disputed
domain name to advertise Complainant’s products and products manufactured by
Complainant’s competitors, such as Fortress, EverGrain, ChoiceDek, WeatherBest
and GeoDeck. The disputed domain name
also displays Complainant’s trademarked TREX logo.
On August 20,
2004, Complainant sent a cease and desist letter to Respondent. Respondent, an authorized dealer of
Complainant’s products, responded stating that the dispute domain name may be
transferred to Complainant if an agreement were reached.
The most updated
screenshot of the <trex-decking.com> domain name reveals that
Respondent is using the disputed domain name to advertise the web design and
hosting services of <wholesalesupport.com>.
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 TREX mark through registration with the
United States Patent and Trademark Office and through continuous use of its
marks in commerce for the last ten years.
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive and have acquired secondary meaning.”); see
also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive.
Respondent has the burden of refuting this assumption).
The <trex-decking.com>
domain name registered by Respondent is confusingly similar to Complainant’s
TREX mark because the domain name incorporates Complainant’s mark in its
entirety and deviates from it by adding the generic or descriptive term
“decking.” Combining Complainant’s TREX
mark with a generic or descriptive word that describes products offered by
Complainant is insufficient to distinguish the domain name from Complainant’s
mark because the dominant portion of the domain name is Complainant’s TREX
mark. The mere addition of a generic
term to a trademark is insufficient to distinguish the domain name from the
mark. See Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO
Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is
confusingly similar because the combination of the two words
"brambles" and "equipment" in the domain name implies that
there is an association with Complainant’s business); see also Christie’s Inc. v. Tiffany’s Jewelry
Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain
name <christiesauction.com> is
confusingly similar to Complainant's mark since it merely adds the word
"auction" used in its generic sense); see also Space Imaging LLC v. Brownell, 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).
Moreover,
the addition of a hyphen in the domain name does not sufficiently distinguish
Complainant’s TREX mark from the <trex-decking.com>
domain name. See Chernow Communications, Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
mark"); see also Columbia
Sportswear Co. v. Keeler, D2000-0206 (WIPO May 16, 2000) (finding “[t]he
use of hyphens ‘columbia-sports-wear-company’ in one of the Respondent's domain
names in issue is insufficient to render it different to the trade mark
COLUMBIA SPORTSWEAR COMPANY”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the <trex-decking.com>
domain name. The burden shifts to
Respondent to show that it does have rights or legitimate interests once
Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). Due to
Respondent’s failure to respond to the Complaint, it is assumed that Respondent
lacks rights and legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where Complainant has asserted that Respondent has no rights or
legitimate interests with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that, under certain circumstances, the mere assertion by Complainant that
Respondent has no rights or legitimate interests is sufficient to shift the
burden of proof to Respondent to demonstrate that such rights or legitimate
interests do exist); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no legitimate interests in the domain names).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted a response. See 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.”); see also 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 Desotec N.V. v. Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
Respondent is
using the disputed domain name to redirect Internet users to a website that
advertises Complainant’s products and products manufactured by Complainant’s
competitors. The disputed domain name
also displays Complainant’s trademarked TREX logo. Respondent’s use of a domain name confusingly similar to
Complainant’s TREX mark to redirect Internet users interested in Complainant’s
products to a commercial website that offers similar goods offered by Complainant’s
competitors is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s appropriation of Complainant’s mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services); see also Avery Dennison Corp. v. Steele,
FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights
or legitimate interests in the disputed domain name where it used Complainant’s
mark, without authorization, to attract Internet users to its business, which
competed with Complainant); see also Chip
Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding
that the disputed domain names were confusingly similar to Complainant’s mark
and that Respondent’s use of the domain names to sell competing goods was
illegitimate and not a bona fide offering of goods); see also Am. Online Inc. v. Shenzhen JZT Computer
Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s
operation of a website offering essentially the same services as Complainant
and displaying Complainant’s mark was insufficient for a finding of bona fide
offering of goods or services).
Furthermore,
Respondent lacks rights and legitimate interests in the <trex-decking.com> domain name
because Respondent has not presented any evidence, and there is no proof in the
record suggesting that Respondent has established rights or legitimate
interests in the disputed domain name.
Additionally, nothing in the WHOIS domain name registration information
suggests that Respondent is commonly known by the domain name. Thus, Respondent has not established rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was
not commonly known by the mark and never applied for a license or permission
from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain
name when Respondent is not known by the mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the confusingly similar domain name for the purpose of disrupting
Complainant’s business by redirecting Internet traffic intended for Complainant
to Respondent’s website, which offers similar competing wood decking
products. Registration of a domain name
confusingly similar to a competitor’s mark for the primary purpose of
disrupting the business of a competitor is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii).
See SR Motorsports v. Rotary
Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it
"obvious" that the domain names were registered for the primary
purpose of disrupting the competitor's business when the parties are part of
the same, highly specialized field); see
also S. Exposure v. S. Exposure, Inc., FA 94864
(Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business).
Respondent is
incorporating Complainant’s marks in its domain name in order to lead Internet
users to a website that offers products similar to those offered by
Complainant. The Panel finds that
Respondent is intentionally creating a likelihood of confusion with
Complainant’s mark to attract Internet users to Respondent’s website for
Respondent’s commercial gain and that this is evidence of bad faith
registration and use, pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc.
v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where
Respondent's use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that Complainant is the source of or is sponsoring the services
offered at the site); see also Surface
Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding
that, given the competitive relationship between Complainant and Respondent,
Respondent likely registered the contested domain name with the intent to
disrupt Complainant's business and create user confusion); see also Luck's Music Library v. Stellar Artist Mgmt.,
FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged
in bad faith use and registration by linking the domain name to a website that
offers services similar to Complainant’s services, intentionally attempting to
attract, for commercial gain, Internet users to its website by creating a
likelihood of confusion with Complainant’s marks).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <trex-decking.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
April 13, 2005
National Arbitration Forum