Colonial Fence MFG. Inc. d/b/a AVO Cedar Fences v. Manila Industries, Inc.
Claim Number: FA0609000791503
Complainant is Colonial Fence MFG. Inc. d/b/a AVO Cedar Fences (“Complainant”), represented by Robert Berluti, of Berluti & McLaughlin LLC, 44 School Street, 9th Floor, Boston, MA 02108. Respondent is Manila Industries, Inc. (“Respondent”), 3843 S. Bristol St. #628, Santa Ana, CA 92704.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <avocedarfence.com>, registered with Compana, Llc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 7, 2006.
On September 14, 2006, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <avocedarfence.com> domain name is registered with Compana, Llc and that Respondent is the current registrant of the name. Compana, Llc has verified that Respondent is bound by the Compana, Llc 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 September 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 10, 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@avocedarfence.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 2006, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <avocedarfence.com> domain name is confusingly similar to Complainant’s AVO CEDAR FENCES mark.
2. Respondent does not have any rights or legitimate interests in the <avocedarfence.com> domain name.
3. Respondent registered and used the <avocedarfence.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Colonial
Fence MFG. Inc. d/b/a AVO Cedar Fences, has
used its AVO CEDAR FENCES mark in the United States since on or before 1979, in
conjunction with selling and marketing cedar fences and other outdoor
products. As evidenced by its use of
the AVO CEDAR FENCES mark since May 24, 1999 on its website, located at the
<avocedarfences.com> domain name, Complainant’s mark has attained
secondary meaning.
Respondent, Manila Industries, Inc., registered the <avocedarfence.com> domain name on May 6, 2005. Respondent’s disputed domain name resolves to a directory website featuring links to third-party websites that offer products and services in direct competition with Complainant’s business.
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 provided evidence of use of its <avocedarfences.com> domain name in conjunction with the selling and marketing of its cedar fences and other outdoor products since at least as early as May 24, 1999, indicating that Complainant’s AVO CEDAR FENCES mark is recognized as being associated with Complainant. Therefore, the Panel finds that Complainant has sufficiently established common law rights in its AVO CEDAR FENCES mark, pursuant to Policy ¶ 4(a)(i). See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark).
Furthermore, the Panel finds that Respondent’s <avocedarfence.com> domain name is confusingly similar to the AVO CEDAR FENCES mark, in which Complainant has common law rights. Respondent’s disputed domain name consists of Complainant’s mark in its entirety, with the omission of spaces between the terms of the mark, the omission of the letter “s,” and the addition of the generic top-level domain (“gTLD”) “.com.” Consistent with the holdings of previous panels, the Panel in the instant case finds that the alterations made to Complainant’s mark inherent in Respondent’s domain name render Respondent’s <avocedarfence.com> domain name confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), cert. denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s <plannedparenthood.com> domain name nearly identical); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant initially must establish that Respondent does not have rights or legitimate interests with respect to the disputed domain name. However, once Complainant sufficiently demonstrates a prima facie case, the burden then shifts to Respondent to demonstrate that it has rights or legitimate interests with respect to the disputed domain name 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 Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel finds that Complainant has established a prima facie case and will examine the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶ 4(c).
The evidence on record indicates that Respondent’s disputed domain name resolves to a search engine website that features a variety of links to third-party websites that directly compete with Complainant’s business. Consequently, the Panel infers that Respondent presumably receives click-through-fees in return for diverting Internet users to the sponsored links provided on its website. Thus, the Panel concludes that Respondent’s use of the <avocedarfence.com> domain name demonstrates neither 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 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).”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
Furthermore, the Panel finds that the evidence on record does not sufficiently demonstrate that Respondent is commonly known by the <avocedarfence.com> domain name for pursuant to Policy ¶ 4(c)(ii). Complainant alleges that Respondent is not affiliated with Complainant. The Panel also finds that the evidence on record, including Respondent’s WHOIS information, does not support an argument that Respondent is known by the <avocedarfence.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the <avocedarfence.com> domain name under Policy ¶ 4(c)(ii). See 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”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also M. Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent is not commonly known by the <cigaraficionada.com> domain name because the WHOIS information lists the registrant of the domain name as as “WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record indicating that the respondent is known by the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel in the present case finds that Respondent’s <avocedarfence.com> domain name resolves to a directory website offering links to competitors of Complainant’s business. Thus, the Panel finds that Respondent registered and used the disputed domain name for the purpose of trading off of the goodwill associated with Complainant’s registered and well-known AVO CEDAR FENCES mark, and for Respondent’s commercial benefit. Consequently, the Panel concludes that Respondent registered and used the <avocedarfence.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
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 <avocedarfence.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 30, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page