DECISION

 

Allied Building Products Corp. v. Richard Henkel

Claim Number: FA0610000827652

 

PARTIES

Complainant is Allied Building Products Corp., (“Complainant”), represented by Amy B. Spagnole, of Hinckley, Allen & Snyder LLP, 15 East Union Avenue, East Rutherford, NJ 07073.  Respondent is Richard Henkel, (“Respondent”), 1932 Wilkes Avenue, Davenport, IA 52804.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <alliedbuilding.us>, registered with Melbourne It Ltd.

 

PANEL

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.

 

Paul M. DeCicco as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 25, 2006; the Forum received a hard copy of the Complaint on October 25, 2006.

 

On October 25, 2006, Melbourne It Ltd confirmed by e-mail to the Forum that the domain name <alliedbuilding.us> is registered with Melbourne It Ltd and that the Respondent is the current registrant of the name.  Melbourne It Ltd has verified that Respondent is bound by the Melbourne It Ltd registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On November 1, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 21, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

A timely Response was received and determined to be complete on November 21, 2006.

 

On November 27, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.

 

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Based in East Rutherford, New Jersey, Complainant Allied Building sells its wide variety of building and construction products through its ALLIED and ALLIED BUILDING PRODUCTS CORP. branded retail stores.  Allied Building owns and operates more than 130 retail outlets in twenty-seven (27) states across the United States and employs more than three thousand individuals.  Allied Building maintains two branch locations in Respondent’s home state of Iowa.

 

Since 1950, Complainant has substantially, continuously and exclusively used, in connection with its business, the mark and name ALLIED.  Allied Building has substantially, continuously and exclusively used, in connection with its business, the mark and name ALLIED BUILDING PRODUCTS CORP. since at least as early as 1986.

Complainant is the owner of the United States trademark registrations for the marks ALLIED BUILDING PRODUCTS CORP. and ALLIED (and Design).  As a result of substantial, continuous and exclusive use of the mark and name ALLIED for more than fifty years and, as a result of substantial, continuous and exclusive use of the mark and name ALLIED BUILDING PRODUCTS CORP. for twenty years, Complainant has built up substantial value and goodwill in it’s ALLIED and ALLIED BUILDING PRODUCTS CORP. names and marks.

 

Allied Building has an active presence on the Internet.  Complainant registered its <alliedbuilding.com> domain name on June 1, 1996 and has operated a website at this Internet address since that time.  Complainant’s registered mark ALLIED BUILDING PRODUCTS CORP. is prominently featured on its <alliedbuilding.com> website.

 

Respondent registered the domain name <alliedbuilding.us> on February 27, 2006 and thereafter began using it to reference a website for ABC Supply Co. Inc., a competitor of Complainant.  Respondent also registered <alliedbuildingproducts.org>, <alliedbuildingproducts.biz> and <alliedbuildingproducts.biz> on February 27, 2006, March 2, 2006 and May 30, 2006 respectively.

 

Respondent used the <alliedbusinessproducts.org> domain name to reference a website entitled “Quality Construction.”  The site advertised services for siding and windows and also advertised that the site was for sale for $100.000.00.

 

Sometime on or after May 30, 2006, Respondent began using the <alliedbuildingproducts.biz> domain name to point to a website on the Internet.  Respondent’s <alliedbuildingproducts.biz> website stated, “[t]his site is for sale
- $60,000.00. — June 20, 2006 … Add $1,000.00 per day after that date.”

 

Sometime on or after March 2, 2006, Respondent began using the <alliedbuildingproducts.info> domain name to point to <smokehousesquare.com>, which stated that the <smokehousesquare.com> domain name was for sale for $250,000.00.

 

On or around June 9, 2006, Respondent contacted Complainant and offered to sell Complainant the <alliedbuilding.us>, <alliedbuildingproducts.biz> <alliedbuildingproducts.info> and <alliedbuildingproducts.org> domain names for $60,000.00 each or $150,000.00 for all four.  Respondent also threatened to sell the domain names “on the open market” should Allied refuse to pay his asking price.

 

On June 26, 2006, Complainant filed a Complaint pursuant to the UDRP with the World Intellectual Property Organization against Respondent for his registration and use of the <alliedbuildingproducts.biz>  <alliedbuildingproducts.info>, and <alliedbuildingproducts.org> domain names.  On September 15, 2006, the WIPO
Panel found that Respondent had engaged in “classic cybersquatting” and ordered the domain names transferred to Complainant.

 

Respondent’s Davenport, Iowa address set forth in the WHOIS record for the subject domain name is located only seven miles from Complainant’s ALLIED BUILDING PRODUCTS CORP. branded retail location in Bettendorf, Iowa.

  

Since notification of the previous WIPO complaint, the content of the website located at <alliedbuilding.us> has been changed.

 

The <alliedbuilding.us> domain name is confusingly similar to Complainant’s ALLIED BUILDING PRODUCTS CORP. registered mark.  The only differences between Complainant’s ALLIED BUILDING PRODUCTS CORP. registered mark and Respondent’s <alliedbuilding.us> domain name is: 1) the deletion of the descriptive word “PRODUCTS” and the abbreviation “CORP.”; and 2) the addition of the ccTLD designation “.us”.

Respondent has no rights or legitimate interests with respect to Complainant’s registered marks ALLIED (and design) and ALLIED BUILDING PRODUCTS CORP. or the <alliedbuilding.us> domain name.

The <alliedbuilding.us> domain name does not comprise the legal name of Respondent or a name that is otherwise commonly used to identify Respondent.

There is nothing in Respondent’s WHOIS information indicating that Respondent is commonly known by the disputed domain name.

 

Respondent did not, prior to notice of this dispute, use the <alliedbuilding.us> domain name or a trademark corresponding to the domain names in connection with a bona fide offering of goods or services. Respondent has not made a legitimate non-commercial or bona fide fair use of the <alliedbuilding.us> domain name.

 

Complainant has not authorized, licensed or otherwise permitted Respondent to register or use any domain name comprising or incorporating Complainant’s registered mark, ALLIED BUILDING PRODUCTS CORP., or any confusingly similar variation thereof.

Respondent has engaged in a pattern of registering domain names containing Complainant’s trademarks, or the dominant portions thereof, and offering to sell such domain names to Complainant for an amount in excess of the Respondent’s out of pocket costs.

 

Respondent registered and is using the <alliedbuilding.us> domain name in bad faith primarily for the purpose of intentionally attracting Internet users to Respondent’s website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.

 

Respondent has registered a domain name that encompasses the dominant portion of Complainant’s registered mark ALLIED BUILDING PRODUCTS CORP. and used such domain name to point to a website for ABC Supply, Inc., a competing building and construction material distributor and supplier.

 

Once at Respondent’s <alliedbuilding.us> website consumers looking for Complainant, Allied Building and its ALLIED BUILDING PRODUCTS CORP. branded line of building materials and retail services, are faced with the website for ABC Supply Co., Inc., a competing distributor and supplier of a full line of building materials including windows, doors, roofing and siding. 

 

Respondent’s unauthorized and unapproved redirection of consumers searching for Complainant and its ALLIED BUILDING PRODUCTS CORP. branded building materials and retail services to competing websites is solely for the purpose of achieving commercial gain.

 

Respondent has registered the <alliedbuilding.us> domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or its competitor, for valuable consideration in excess of Respondent’s out of pocket costs related to the domain name.

On or around June 9, 2006, Respondent contacted Complainant and offered to sell Complainant the at-issue domain name and these others for $60,000.00 each or $150,000.00 for all four.  Respondent referred to the size of Allied Building’s business and stated that the amount he is demanding for the domain names is a “tiny investment” for a company of Complainant’s size.  Respondent further threatened to “begin marketing three domains on the open market” if Complainant does not agree to pay Respondent his asking price.

Upon information and belief, Respondent did not incur $60,000 in out of pocket expenses in registering the <alliedbuilding.us> domain name.

 

B. Respondent

Respondent contends as follows:

 

“ALLIEDBUILDING” is not a trademark. <alliedbuildings.us> is intended solely as a directory for businesses with “ALLIED BUILDING” as part of their name and is not intended to divert business or sell any products, only services.

 

<alliedbuildings.us> is offering a bona fide service and will not make it harder for Allied Business Products to be found on the Internet.  <alliedbuildings.us> acts as a directory. 

 

The at-issue domain name will not be for sale in the future and is not for sale now.

 

 

FINDINGS

Complainant has trademark rights in the mark ALLIED BUILDING PRODUCTS CORP.

 

Respondent was aware of the Complainant’s trademark at the time he registered the at-issue domain names.

 

Respondent used the at-issue domain name in a commercial manner adverse to the rights and interests of the Complainant.

 

 

DISCUSSION

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.”

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant is the owner of United States trademark registrations for the marks ALLIED BUILDING PRODUCTS CORP. and ALLIED (and design).  By virtue of such registration and otherwise Complainant has established rights in the ALLIED BUILDING PRODUCTS CORP. mark under Policy ¶ 4(a)(i).  See 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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’s <alliedbuilding.us> domain name is confusingly similar to Complainant’s ALLIED BUILDING PRODUCTS CORP. mark as it contains the dominant portion of Complainant’s mark and merely deletes “products” and “corp.” from the end of the mark.  These omissions are trivial and do not negate the confusing similarity between Complainant’s mark and Respondent’s at-issue domain name.  See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks).  Further, it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis.

 

Respondent’s contention that “Allied Buildings” is not trademarked is irrelevant to the instant analysis since the Complainant has demonstrated that the trademarks that it does have extend protection to the mark “ALLIED BUILDINGS” (and thereby to the at-issue domain name) within the context of this proceeding.

 

Given the forgoing, the Panel holds that the at-issue domain name is confusingly similar to the Complainant’s trademark.

 

Rights or Legitimate Interests

 

Under Paragraph 4(a)(ii) of the Policy, Complainant must first make out a prima facie showing that Respondent lacks rights or legitimate interests in the at-issue domain.  The threshold for such a showing is low.  See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005).  Once a prima facie case is established, the burden then shifts to Respondent who must demonstrate that it nevertheless has rights or legitimate interests in the at-issue domain name. Complainant has satisfied its burden, Respondent has not.

 

The Respondent is not commonly known as Allied Buildings.  Respondent’s WHOIS information does not indicate that Respondent is commonly known by the disputed domain name, and Complainant has asserted that Respondent is not authorized to use Complainant’s mark.  See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001).  Further, Respondent has used the at-issue domain name to direct Internet users to a website of one of the Complainant’s direct competitors.  This is not a bona fide offering of goods or services as Respondent is using Complainant’s marks to attract Internet users, thereby trading on Complainant’s mark and possibly tarnishing Complainant’s marks and public goodwill in the process.  The same is true for using the domain name to reference a directory of building related businesses.  Respondent’s use of the domain name is neither a legitimate noncommercial nor fair use as contemplated by Policy ¶ 4(c)(iii).  See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002).  Finally, Respondent’s lack of rights and legitimate interests in the disputed domain name is evidenced by Respondent’s offer to sell the disputed domain name to Complainant for an amount in excess of Respondent’s out-of-pocket costs.  See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003).

 

Complainant has met its burden to allege facts sufficient to create a prima facie case for lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  On the other hand Respondent makes no showing to overcome the strong evidence presented by the Complainant and the Panel concludes that the Respondent has no rights or legitimate interests in the at-issue domain name.

 

Registration and Use in Bad Faith

 

Respondent apparently registered the <alliedbuilding.us> domain name to commercially benefit from the goodwill associated with Complainant’s mark.  Indeed, the at-issue domain name is capable of creating a likelihood of confusion as to the source and affiliation of Complainant to the disputed domain name and corresponding website.  Such determination leads to a finding of bad faith registration and use under Policy ¶ 4(b)(iv).  See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003).

 

Respondent’s use of the disputed domain name to redirect Internet users to the website of a competitor of Complainant constitutes disruption and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000). Likewise, the current “Allied Buildings” directory service website is unauthorized and is likely to point Internet users to competitive businesses in the building industry.  The Panel also finds bad faith registration and use under Policy ¶ 4(b)(i) given Respondent’s offer to sell the disputed domain name to Complainant for an amount far outside out-of-pocket expenses.  See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003).

 

Additionally, the Panel may determine bad faith from circumstances not particularly enumerated in the Policy. Here, many relevant issues regarding the at-issue domain name were substantially examined in Allied Bldg. Prods. Corp. v. Henkel D2006-0829 (WIPO September 5, 2006).  That dispute concerned the domain names <alliedbuildingproducts.biz>, <alliedbuildingproducts.info> and <alliedbuildingproducts.org>.  The parties were identical to those in the instant dispute.  There the panel granted Complainant’s request to transfer the domain names finding for Complainant on each of the UDRP issues of confusing similarity, rights and legitimate interest, and bad faith.  The only condition that may have changed since that case was filed appears to be a change in the particular use of the at-issue domain name.  The domain name now supports a for-pay directory website.

 

Notwithstanding the prior adverse decision concerning the identical trademark and Complainant, the Respondent decided to use the at-issue domain name in a commercial manner without regard to the Complainant’s trademark, without any explanation that might subjectively justify the Respondent’s behavior, and without consulting with Complainant.  In light of the prior decision such circumstances evidence bad faith.

 

For the above stated reasons the Panel holds that the at-issue domain name was registered and used in bad faith.  

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <alliedbuilding.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist
Dated: December 11, 2006

 

 

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