Alcoa Inc. v. David Harris
Claim Number: FA0611000831003
Complainant is Alcoa Inc. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <alcoasiding.com>, <alcoavinylsiding.com>, <alcoagutters.com>, <masticsiding.com> and <masticvinylsiding.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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 November 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 2, 2006.
On November 2, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <alcoasiding.com>, <alcoavinylsiding.com>, <alcoagutters.com>, <masticsiding.com> and <masticvinylsiding.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 November 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 30, 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@alcoasiding.com, postmaster@alcoavinylsiding.com, postmaster@alcoagutters.com, postmaster@masticsiding.com and postmaster@masticvinylsiding.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <alcoasiding.com>, <alcoavinylsiding.com> and <alcoagutters.com> domain names are confusingly similar to Complainant’s ALCOA mark and the <masticsiding.com> and <masticvinylsiding.com> domain names are confusingly similar to Complainant’s MASTIC mark.
2. Respondent does not have any rights or legitimate interests in the <alcoasiding.com>, <alcoavinylsiding.com>, <alcoagutters.com>, <masticsiding.com> and <masticvinylsiding.com> domain names.
3. Respondent registered and used the <alcoasiding.com>, <alcoavinylsiding.com>, <alcoagutters.com>, <masticsiding.com> and <masticvinylsiding.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alcoa Inc., is the world’s second largest producer of aluminum and is a global leader in aluminum smelting capacity. Complainant also produces, markets and sells various consumer products, including Reynolds Wrap, ALCOA wheels and Baco household wraps. Over 129,000 employees in forty-three countries work for Complainant, and in 2005, Complainant generated revenue of over $26 billion.
Complainant has registered the following marks with the United States Patent and Trademark Office (“USPTO”): ALCOA (Reg. No. 2,517,405 issued December 11, 2001; Reg. No. 1,976,763 issued May 28, 1996; Reg. No. 1,597,448 issued May 22, 1990; Reg. No. 1,022,628 issued October 14, 1975; Reg. No. 286,617 issued September 1, 1931) and MASTIC (Reg. No. 1,541,539 issued May 30, 1989).
Respondent registered the disputed domain names on May 17, 2000. Each domain name resolves to Respondent’s website at the <davidharriscustomdesign.com> domain name, where Respondent promotes its construction 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 established its rights in the ALCOA and MASTIC
marks through registration of both marks with the USPTO.
Respondent’s domain names each contain either the ALCOA or MASTIC mark combined with a term describing a component of Complainant’s business, such as “siding,” “vinyl siding” and “gutters.” In Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000), the panel held that the respondent’s four domain names were confusingly similar to the complainant’s DIOR mark because each merely added a descriptive word such as “fashion” or “cosmetics,” areas in which the complainant was highly successful. As a result, Respondent has failed to sufficiently distinguish the disputed domain names from Complainant’s marks by merely adding terms descriptive of Complainant’s business. Pursuant to Policy ¶ 4(a)(i), the <alcoasiding.com>, <alcoavinylsiding.com>, <alcoagutters.com>, <masticsiding.com> and <masticvinylsiding.com> domain names are confusingly similar to the ALCOA and MASTIC marks.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the disputed domain names. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that
the respondent’s failure to produce requested documentation supports a finding
for the complainant); see also Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where the respondent fails to respond). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “David Harris,” and
there is no other evidence in the record suggesting that Respondent is commonly
known by the disputed domain names. As a
result, Respondent has not established rights or legitimate interests in the disputed domain names 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 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").
Moreover, Respondent’s domain names, which are confusingly
similar to Complainant’s registered ALCOA and MASTIC marks, each resolve to a
website promoting Respondent’s custom design construction business. In
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has registered and is using the contested domain
names in bad faith under Policy ¶ 4(b)(iv), because
the disputed domain names resolve to a Respondent’s commercial website at the
<davidharriscustomdesign.com> domain name, where it promotes its custom
design construction services. In Drs. Foster & Smith,
Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000), the panel
found that the respondent’s diversion of Internet users who were seeking the
complainant’s products and services to its own website for commercial gain
created “a likelihood of confusion with the Complainant’s mark as to the
source, sponsorship, endorsement, or affiliation of its website” and,
therefore, provided evidence of bad faith registration and use in violation of
Policy ¶ 4(b)(iv).
In this case, Respondent likely profits from
diverting Internet users seeking information on Complainant’s products under
the ALCOA and MASTIC marks to its own website.
Therefore, Respondent is taking advantage of the confusing
similarity between the disputed domain names and Complainant’s registered
marks, which is indicative of bad faith registration and use according to
Policy ¶ 4(b)(iv).
See MySpace, Inc. v. Myspace Bot, FA 672161
(Nat. Arb. Forum May 19, 2006) (holding that the respondent registered
and used the <myspacebot.com> domain name in bad faith by diverting
Internet users seeking the complainant’s website to its own website for
commercial gain because the respondent likely profited from this diversion
scheme).
The Panel finds that Complainant has 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 <alcoasiding.com>, <alcoavinylsiding.com>, <alcoagutters.com>, <masticsiding.com> and <masticvinylsiding.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Crary
Dated: December 21, 2006
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