Trex Company Inc. v. William Stanley
d/b/a Mach10 Software
Claim
Number: FA0503000433866
Complainant is Trex Company Inc. (“Complainant”), represented
by B. Brett Heavner, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., 901 New York Avenue NW, Washington,
DC 20001. Respondent is William Stanley d/b/a Mach10 Software (“Respondent”), 9503 Blue Creek Ln, Austin, TX 78758.
REGISTRAR AND
DISPUTED DOMAIN NAMES
The
domain names at issue are <trexbrasilia.com>, <trexbrazil.com>,
<trexbrazilia.com>, and <trexexotics.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.
John
J. Upchurch 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 names <trexbrasilia.com>, <trexbrazil.com>,
<trexbrazilia.com>, and <trexexotics.com> are
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the names. 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 3, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 23,
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@trexbrasilia.com, postmaster@trexbrazil.com, postmaster@trexbrazilia.com,
and postmaster@trexexotics.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 John J.
Upchurch 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 names be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. Respondent’s <trexbrasilia.com>,
<trexbrazil.com>, <trexbrazilia.com>, and <trexexotics.com>
domain names are confusingly similar to Complainant’s TREX mark.
2. Respondent does not have any rights or
legitimate interests in the <trexbrasilia.com>, <trexbrazil.com>,
<trexbrazilia.com>, and <trexexotics.com> domain
names.
3. Respondent registered and used the <trexbrasilia.com>,
<trexbrazil.com>, <trexbrazilia.com>, and <trexexotics.com>
domain names in bad faith.
B.
Respondent failed to submit a response in this proceeding.
Complainant is
one of the largest manufacturers of alternative residential and commercial
decking products in the United States. Complainant has marketed its decking
products under the TREX mark continuously since May 25, 1994. Complainant
spends significant amounts of money each year advertising and promoting its
TREX-branded products. Complainant sold $254 million worth of products under
the TREX mark in 2004. Complainant holds two trademark registrations for the
TREX mark on the Principal Register of the United States Patent and Trademark
Office, including Reg. No. 1,881,449 (issued February 28, 1995). Complainant
also operates a website at the <trex.com> domain name. On January 5,
2005, Complainant began using the TREX BRASILIA mark as the new identifier for
its tropical-inspired decking products.
Respondent
registered the <trexbrasilia.com>, <trexbrazil.com>, <trexbrazilia.com>,
and <trexexotics.com> domain names on January 7, 2005. The domain
names previously redirected Internet users to a website that advertised
Complainant’s products and competing products. The domain names currently
direct users to a website that promotes website design and hosting services.
Respondent is affiliated with an authorized dealer of Complainant’s products,
but Respondent is not licensed or authorized to use Complainant’s mark in a
domain name.
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 the
mark in commerce since 1994. 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 and that a
respondent has the burden of refuting this assumption).
The <trexbrasilia.com>, <trexbrazil.com>, <trexbrazilia.com>, and <trexexotics.com> domain names
are confusingly similar to Complainant’s TREX registered trademark. Respondent’s <trexbrasilia.com>,
<trexbrazil.com>, and <trexbrazilia.com> domain names
merely add the geographic terms “Brasilia,” its misspelling “Brazilia,” or
“Brazil” to Complainant’s mark.
Additionally, Respondent’s <trexexotics.com> domain name
merely adds the generic word “exotics.” Furthermore, Respondent’s domain names
add the generic top-level domain “.com” to the mark. The addition of generic or
geographic words and a generic top-level domain do not distinguish the domain
names from the mark. Thus, the Panel finds that the domain names are
confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar); see also AXA China Region Ltd. v. KANNET Ltd.,
D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or
generic nouns can rarely be relied upon to differentiate the mark if the other
elements of the domain name comprise a mark or marks in which another party has
rights); see also VeriSign, Inc.
v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity
between the complainant’s VERISIGN mark and the <verisignindia.com> and
<verisignindia.net> domain names where
the respondent added the word “India” to the complainant’s mark); see
also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a response in this proceeding. In the absence of a
response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Complainant has alleged
that Respondent lacks rights and legitimate interests in the <trexbrasilia.com>, <trexbrazil.com>, <trexbrazilia.com>,
and <trexexotics.com> domain names. Complainant’s
submission has gone unopposed and its arguments unrefuted. Further, because
Respondent has failed to submit a response, Respondent has failed to propose
any set of circumstances that could substantiate its rights or legitimate
interests in the disputed domain names. See Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that a respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of the complaint to be deemed true); see
also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Respondent
is not using the disputed domain names in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or making a legitimate
noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii)
because the domain names are confusingly similar to Complainant’s mark and
redirect unsuspecting Internet users to an unrelated commercial website.
Respondent makes opportunistic use of Complainant’s mark in order to capitalize
on the goodwill and fame associated with the TREX moniker. Thus, Respondent
fails to establish rights or legitimate interests in the domain names under
Policy ¶ 4(a)(ii). See U.S. Franchise Sys., Inc. v. Howell, FA 152457
(Nat. Arb. Forum May 6, 2003) (holding
that the respondent’s use of the complainant’s mark and the goodwill
surrounding that mark as a means of attracting Internet users to an unrelated
business was not a bona fide offering of goods or services); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where the respondent attempted to profit using the
complainant’s mark by redirecting Internet traffic to its own website).
No
evidence before the Panel suggests Respondent is commonly known by the <trexbrasilia.com>, <trexbrazil.com>, <trexbrazilia.com>,
and <trexexotics.com> domain names under Policy ¶ 4(c)(ii).
The domain names’ WHOIS information indicates that the registrant of the
disputed domain names is known as “William Stanley d/b/a Mach10 Software” and
is not known by any of the confusingly similar second-level domains that
infringe on Complainant’s TREX mark. Moreover, Respondent is not authorized or
licensed to use Complainant’s mark for any purpose. Thus, Respondent lacks
rights and legitimate interests in the domain names under Policy ¶ 4(c)(ii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a
showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail”).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
uses confusingly similar variations of Complainant’s TREX mark in its domain
names to ensnare unsuspecting Internet users. Respondent then redirects the
users to a commercial website. The Panel infers that Respondent profits from
this diversion. Thus, Respondent is profiting from the unauthorized use of
Complainant’s registered mark in its domain names. Such infringement is what
the Policy was intended to remedy and is evidence of bad faith registration and
use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see also Kmart v. Khan, FA 127708
(Nat. Arb. Forum Nov. 22, 2002) (finding that, if a respondent profits from its
diversionary use of a complainant’s mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of the domain names, additional
factors can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that, in determining if a
domain name has been registered in bad faith, a panel must look at the
“totality of circumstances”); see also Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s
registration of the disputed domain names, which are confusingly similar to
Complainant’s mark, suggests that Respondent knew of Complainant’s rights in
the TREX mark. Additionally, Complainant’s trademark registration on the
Principal Register of the United States Patent and Trademark Office gave
Respondent constructive notice of Complainant’s mark. Moreover, the fact that
Respondent’s website offered Complainant’s own products and its competitor’s
products for sale evidences Respondent’s knowledge of Complainant’s rights in
the mark. Thus, the Panel finds that Respondent chose the <trexbrasilia.com>, <trexbrazil.com>, <trexbrazilia.com>,
and <trexexotics.com> domain names based on the distinctive
and well-known qualities of Complainant’s mark, which evidences bad faith
registration and use under Policy ¶ 4(a)(iii). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it is “inconceivable that the
respondent could make any active use of the disputed domain names without
creating a false impression of association with the Complainant”); see also
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here
is a legal presumption of bad faith, when the respondent reasonably should have
been aware of the complainant’s trademarks, actually or constructively.”); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that, because the
link between the complainant’s mark and the content advertised on the
respondent’s website was obvious, the respondent “must have known about the
complainant’s mark when it registered the subject domain name”).
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 <trexbrasilia.com>, <trexbrazil.com>,
<trexbrazilia.com>, and <trexexotics.com> domain
names be TRANSFERRED from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: April 13, 2005
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