Hunter Douglas Inc. v. Domaincar
Claim Number: FA0602000638982
Complainant is Hunter Douglas Inc. (“Complainant”), represented by Donald A. Degnan of Holland & Hart LLP, 1800 Broadway, Suite 300, Boulder, CO, 80302. Respondent is Domaincar (“Respondent”), Galerias 3, Zona 5, Panama 5235, Panama.
The domain names at issue are <hunterdougals.com>, registered with Dstr Acquisition Vii, Llc, <hunterdougls.com>, <hunterdougloas.com>, <hunterdoublas.com> and <hunterduglas.com>, registered with Domain Doorman, <hunteredouglas.com>, <hunterdoulgas.com>, <contracthunterdouglas.com>, <hunterdoughlas.com> and <hunterdauglas.com>, registered with Capitoldomains, Llc, and <hunterdouglaswindowcoverings.com>, registered with Belgium Domains.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 3, 2006; the National Arbitration Forum received a hard copy of the Complaint February 6, 2006.
On February 4, 2006, Dstr Acquisition Vii, Llc, confirmed by e-mail to the National Arbitration Forum that the <hunterdougals.com> domain name is registered with Dstr Acquisition Vii, Llc, and that Respondent is the current registrant of the name. Dstr Acquisition Vii, Llc, verified that Respondent is bound by the Dstr Acquisition Vii, Llc, registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 7, 2006, Domain Doorman confirmed by e-mail to the National Arbitration Forum that the <hunterdougls.com>, <hunterdougloas.com>, <hunterdoublas.com> and <hunterduglas.com> domain names are registered with Domain Doorman and that Respondent is the current registrant of the names. Domain Doorman verified that Respondent is bound by the Domain Doorman registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On February 7, 2006, Capitoldomains, Llc, confirmed by e-mail to the National Arbitration Forum that the <hunteredouglas.com>, <hunterdoulgas.com>, <contracthunterdouglas.com>, <hunterdoughlas.com> and <hunterdauglas.com> domain names are registered with Capitoldomains, Llc, and that Respondent is the current registrant of the names. Capitoldomains, Llc, verified that Respondent is bound by the Capitoldomains, Llc, registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On February 7, 2006, Belgium Domains confirmed by e-mail to the National Arbitration Forum that the <hunterdouglaswindowcoverings.com> domain name is registered with Belgium Domains and that Respondent is the current registrant of the name. Belgium Domains verified that Respondent is bound by the Belgium Domains registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On February 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 6, 2006, 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@hunterdougals.com, postmaster@hunterdougls.com, postmaster@hunterdougloas.com, postmaster@hunterdoublas.com, postmaster@hunterduglas.com, postmaster@hunteredouglas.com, postmaster@hunterdoulgas.com, postmaster@contracthunterdouglas.com, postmaster@hunterdoughlas.com, postmaster@hunterdauglas.com, and postmaster@hunterdouglaswindowcoverings.com, by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain names that Respondent registered, <hunterdougals.com>, <hunteredouglas.com>, <hunterdoulgas.com>, <contracthunterdouglas.com>, <hunterdougls.com>, <hunterdouglaswindowcoverings.com>, <hunterdougloas.com>, <hunterdoublas.com>, <hunterdoughlas.com>, <hunterduglas.com>, and <hunterdauglas.com>, are confusingly similar to Complainant’s HUNTER DOUGLAS mark.
2. Respondent has no rights to or legitimate interests in the <hunterdougals.com>, <hunteredouglas.com>, <hunterdoulgas.com>, <contracthunterdouglas.com>, <hunterdougls.com>, <hunterdouglaswindowcoverings.com>, <hunterdougloas.com>, <hunterdoublas.com>, <hunterdoughlas.com>, <hunterduglas.com>, and <hunterdauglas.com> domain names.
3. Respondent registered and used the <hunterdougals.com>, <hunteredouglas.com>, <hunterdoulgas.com>, <contracthunterdouglas.com>, <hunterdougls.com>, <hunterdouglaswindowcoverings.com>, <hunterdougloas.com>, <hunterdoublas.com>, <hunterdoughlas.com>, <hunterduglas.com>, and <hunterdauglas.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hunter Douglas Inc., is a United States manufacturer of custom window coverings and architectural products. Since 1963, Complainant has been offering its products and services in Europe, North America, Latin America, Asia, and Australia. As part of its business, Complainant operates a website located at the domain name <hunterdouglas.com>.
Complainant is a trademark licensee of the Dutch company Hunter Douglas Industries B.V. Hunter Douglas Industries B.V. owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HUNTER DOUGLAS mark. Hunter Douglas Industries B.V. first registered the HUNTER DOUGLAS mark with the USPTO on March 4, 1986 (Reg. No. 1,384,964).
Respondent registered the disputed domain names on the following dates: <hunterdougals.com>, July 10, 2005; <hunteredouglas.com>, October 8, 2005; <hunterdoulgas.com>, August 9, 2005; <contracthunterdouglas.com>, October 7, 2005; <hunterdougls.com>, October 25, 2005; <hunterdouglaswindowcoverings.com>, December 15, 2005; <hunterdougloas.com>, November 27, 2005; <hunterdoublas.com>, October 3, 2005; <hunterdoughlas.com>, October 3, 2005; <hunterduglas.com>, October 3, 2005; and <hunterdauglas.com>, October 20, 2005. Respondent is using the disputed domain names to operate websites featuring numerous links to third-party websites that offer products in direct competition with Complainant. The disputed domain names also feature pop-up advertisements whenever an Internet user clicks on one of the third-party links offered by Respondent’s website.
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 will draw such inferences as the Panel 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
The Panel finds that Hunter Douglas Industries B.V.’s registrations of the HUNTER DOUGLAS mark with the USPTO sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i). See Nordstrom, Inc. and NIHC, Inc. v. Grotte, FA 115347 (Nat. Arb. Forum Aug. 26, 2002) (“Complainant has established its rights in the NORDSTROM mark through securing a variety of trademark registrations with the USPTO reflecting its NORDSTROM mark.”); see also VICORP Restaurants, Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).
Complainant asserts that it licensed the HUNTER DOUGLAS mark
from the owner of mark, Hunter Douglas Industries B.V. As a licensee of the mark from the
trademark’s owner, Complainant establishes its rights in the mark pursuant to
Policy ¶ 4(a)(i). See FDNY
Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26,
2003) (“Complainant has established trademark rights, as licensee, in the FDNY
Marks, including the trademark consisting of the initials FDNY.”); see also
Savin Corp. v. Schisler, FA 294206 (Nat. Arb. Forum Aug. 25, 2004)
(finding that as a licensee of the RICOH marks, the complainant has sufficient
rights in the mark to seek transfer of the domain name
<ricoamerica.com>).
The domain names that Respondent
registered, <hunterdougals.com>, <hunteredouglas.com>,
<hunterdoulgas.com>, <contracthunterdouglas.com>, <hunterdougls.com>,
<hunterdouglaswindowcoverings.com>, <hunterdougloas.com>,
<hunterdoublas.com>, <hunterdoughlas.com>, <hunterduglas.com>,
and <hunterdauglas.com> are confusingly similar to Complainant’s
HUNTER DOUGLAS mark pursuant to Policy ¶ 4(a)(i). Panels have found that the mere misspelling of a complainant’s
mark does not make a domain name distinctive under Policy ¶ 4(a)(i). In Neiman
Marcus Group, Inc. v. Party Night, Inc.,
FA 114546 (Nat. Arb. Forum July 23, 2002), the panel found that respondent’s <neimanmacus.com> domain name was “a simple misspelling of the complainant’s
NEIMAN MARCUS mark and was a classic example
of typosquatting, which was evidence that the domain name was
confusingly similar to the mark.”
Similarly, in Marriott Int'l, Inc. v.
Seocho, FA 149187 (Nat. Arb. Forum Apr.
28, 2003), the panel held that the respondent's <marrriott.com>
domain name “was confusingly similar to the complainant's MARRIOTT mark.” The disputed domain names registered by
Respondent each consist of either minor variations and common misspellings of
Complainant’s HUNTER DOUGLAS mark, or Complainant’s mark in its entirety with
additional common terms and the generic top-level domain “.com.” Therefore, the disputed domain names are
confusingly similar to Complainant’s mark.
Furthermore, the disputed domain names, <hunterdouglaswindowcoverings.com> and <contracthunterdouglas.com>, utilize Complainant’s mark with the addition of the words “windowcoverings ” and “contract,” respectively. Both of the added words are common terms that describe Complainant’s business. Consequently, these disputed domain names as well are confusingly similar to Complainant’s mark. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this proceeding that it has rights in the mark used within the disputed domain names. Complainant asserted that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant initially bears the burden of demonstrating that Respondent lacks rights and legitimate interests in the domain names. However, if Complainant establishes a prima facie case, the burden shifts to Respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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 the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). The Panel finds that Complainant established a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests in the domain name under Policy ¶ 4(c).
No evidence or information before the Panel suggests that Respondent is commonly known by the disputed domain names. According to the WHOIS information, Respondent is known as Domaincar. Consequently, Respondent is not commonly known by the disputed domain names pursuant to 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 Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Moreover, the evidence on record indicates that Respondent is using the disputed domain names to engage in typosquatting, utilizing intentional misspellings or variations of Complainant’s mark to divert Internet users seeking Complainant’s website. Such use does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a noncommercial or fair use under Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. 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) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleged that Respondent acted in bad faith. Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv), because the disputed domain names resolve to websites displaying links to Complainant’s competitors, and also feature pop-up advertisements. The Panel infers that Respondent likely receives click-through fees for each consumer it redirects to third-party websites. Therefore, Respondent is taking advantage of the likelihood of confusion between Respondent’s domain names and Complainant’s HUNTER DOUGLAS mark, and is capitalizing on the goodwill associated with the mark. See Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the respondent used a misspelling of the complainant’s famous mark to attract Internet users to a series of advertisements); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Additionally, Respondent’s registration and use of variations and misspellings of Complainant’s mark to divert Internet users demonstrates that Respondent registered and is using the disputed domain names to engage in typosquatting. As a result, Respondent’s typosquatting activities evince bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hunterdougals.com>, <hunteredouglas.com>, <hunterdoulgas.com>, <contracthunterdouglas.com>, <hunterdougls.com>, <hunterdouglaswindowcoverings.com>, <hunterdougloas.com>, <hunterdoublas.com>, <hunterdoughlas.com>, <hunterduglas.com> and <hunterdauglas.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 28, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum