Wind-Lock Corporation v. Whois ID Theft Protection
Claim Number: FA0608000767125
Complainant is Wind-Lock Corporation (“Complainant”), represented by Lewis F. Gould, of Duane Morris LLP, 30 South 17th Street, Philadelphia, PA 19103-4196. Respondent is Whois ID Theft Protection (“Respondent”), P.O. Box 116WB, West Bay, Grand Cayman GT, KY.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <windlock.com>, registered with Dotster.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 2, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 3, 2006.
On August 2, 2006, Dotster confirmed by e-mail to the National Arbitration Forum that the <windlock.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 August 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 31, 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@windlock.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <windlock.com> domain name is confusingly similar to Complainant’s WIND-LOCK mark.
2. Respondent does not have any rights or legitimate interests in the <windlock.com> domain name.
3. Respondent registered and used the <windlock.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wind-Lock Corporation, is a leader in supplying advanced building solutions to the Exterior Insulation Finish System and Stucco markets. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the WIND-LOCK mark (Reg. No. 2,838,413 issued May 4, 2004; filed July 31, 2002).
Respondent registered the <windlock.com> domain name on June 5, 2003. Respondent is using the <windlock.com> domain name to divert consumers to a website with links to Complainant’s competitors.
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. 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 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 rights in the WIND-LOCK mark
through its registration with the USPTO.
See Vivendi Universal Games v. XBNetVentures Inc., FA 198803
(Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”) Complainant’s rights in the
WIND-LOCK mark date back to July 31, 2002, the filing date of the trademark
registration. See
Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that
the effective date of Complainant’s trademark rights date back to the
application’s filing date); see also Thompson v. Zimmer, FA 190625 (Nat.
Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was
subsequently approved by the U.S. Patent and Trademark Office, the relevant
date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i)
dates back to Complainant’s filing date.”).
Respondent’s <windlock.com> domain name is
confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i) because
it incorporates the dominant features of Complainant’s WIND-LOCK mark and omits
the hyphen. Such a minor omission from
Complainant’s registered mark does not adequately distinguish Respondent’s
domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen
S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of
punctuation marks such as hyphens is irrelevant in the determination of
confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000)
(holding that the domain name <cspan.net>, which omitted the hyphen from
the trademark spelling, C-SPAN, is confusingly similar to the complainant's
mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <windlock.com> domain name. Complainant has the initial burden of proof in asserting that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also 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”).
Respondent is using the <windlock.com>
domain name, which is confusingly similar to Complainant’s WIND-LOCK mark, to
divert consumers to a website with links to Complainant’s competitors. Such use of the disputed domain name for
Respondent’s commercial gain does not constitute a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s
diversionary use of the complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to the complainant’s
competitors, was not a bona fide offering of goods or services); see
also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
Respondent has not answered the Complaint with any
information indicating that it is commonly known by the disputed domain
name. Complainant has not given
Respondent its consent to use its mark in Respondent’s domain name. There is no information in the WHOIS
database implying that Respondent is commonly known by the <windlock.com>
domain name. Therefore, Respondent has
not established rights or legitimate interests in the <windlock.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See 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); see also Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17,
2003) (“Given the WHOIS contact information for the disputed domain [name], one
can infer that Respondent, Onlyne Corporate Services11, is not commonly known
by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <windlock.com> domain name to operate a website containing links to Complainant’s competitors. The Panel infers that Respondent receives click-through fees for misleading consumers to competing websites. Therefore, Respondent is taking advantage of the likelihood of confusion between Respondent’s domain name and Complainant’s mark and capitalizing on the goodwill of the mark. The Panel finds that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the 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 the complainant is the source of or is sponsoring the services offered at the site).
Respondent’s domain name incorporates the dominant features of Complainant’s mark, and Respondent’s website contains several links to Complainant’s competitors. Respondent’s use of Complainant’s mark to divert Internet users to Complainant’s competitors amounts to disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
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 <windlock.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: September 21, 2006
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