national
arbitration forum
DECISION
Cert-A-Roof, LLC v. Paul Hinkle
Claim Number: FA0612000864910
PARTIES
Complainant is Cert-A-Roof, LLC (“Complainant”), represented by Scott
W. Kelley, of Kelly Lowry & Kelley LLP, 6320
Canoga Avenue, Suite 1650, Woodland Hills, CA 91367, USA. Respondent is Paul Hinkle (“Respondent”), represented by Butch
Hinkle, P.O. Box 1798,
Breckenridge, TX 76424.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <certroof.com>, registered with Schlund+Partner Ag.
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.
Honorable Paul A.
Dorf (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to
the National Arbitration Forum electronically on December 12, 2006;
the National Arbitration Forum received a hard copy of the Complaint on December
15, 2006.
On December 14, 2006,
Schlund+Partner Ag confirmed by e-mail to
the National Arbitration Forum that the <certroof.com>
domain names is registered with Schlund+Partner
Ag and that Respondent is the current registrant of the name. Schlund+Partner
Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 December 19, 2006,
a Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of January 8, 2007
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@certroof.com by e-mail.
Having received no response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On January 15, 2007, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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.
RELIEF SOUGHT
Complainant requests that the domain
name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A.
Complainant makes the following assertions:
1. Respondent’s
<certroof.com> domain name
is confusingly similar to Complainant’s CERTAROOF mark.
2. Respondent
does not have any rights or legitimate interests in the <certroof.com> domain name.
3. Respondent
registered and used the <certroof.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Cert-A-Roof, LLC, specializes in the
construction, maintenance and repair of roofs found in homes and other
buildings. Complainant uses the CERTAROOF
and CERTIFIED ROOF marks in connection with these products and services.
Complainant has registered the CERTAROOF mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,961,458 issued March 12, 1996),
as well as the CERTIFIED ROOF mark (Reg. No. 2,190,042 issued September 15, 1998).
Respondent’s <certroof.com> domain name, which
it registered on April
22, 2005, resolves to a competing website offering roofing products
and services identical and similar to Complainant’s products and services under
the CERTAROOF mark.
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."
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.
Identical and/or Confusingly Similar
Complainant has established rights in the CERTAROOF mark for
purposes of satisfying Policy ¶ 4(a)(i) through
registration of the mark with the USPTO.
See Miller Prods. Co. v. Grozinger, FA 823231 (Nat. Arb.
Forum Dec. 5,
2006) (“Rights in a trademark can be shown in several ways,
including by way of a U.S.
trademark registration. A trademark registration constitutes prima facie evidence of its
ownership and validity of the mark.”); see also Paisley Park
Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005)
(finding that the complainant had established rights in the PAISLEY PARK mark
under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <certroof.com> domain name merely
eliminates the letter “a” from Complainant’s CERTAROOF mark. In CEC
Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002),
the panel found that the <chuckcheese.com> domain name was confusingly
similar to the complainant’s CHUCK E. CHEESE mark because the domain name only
differed from the mark by one letter. Similarly, the panel in Myspace, Inc. v. Kang, FA 672160
(Nat. Arb. Forum June 19, 2006), found that the <myspce.com> domain
name was confusingly similar to the complainant’s MYSPACE mark, and the slight
difference in spelling did not reduce the confusing similarity. Because Respondent’s <certroof.com>
domain name also merely differs from Complainant’s registered mark by one
letter, Respondent has failed to sufficiently distinguish the disputed domain
name from the mark. As a result, the
Panel finds the disputed domain name to be confusingly similar to the mark
pursuant to Policy ¶ 4(a)(i).
The Panel concludes that Complainant has sufficiently
satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant claims that Respondent lacks rights and
legitimate interests in the <certroof.com> domain name. 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 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, where the complainant has asserted that
the respondent has no rights or legitimate interests with respect to the domain
name, it is incumbent on the respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <certroof.com>
domain name. See 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); see
also BIC Deutschland GmbH & Co.
KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response,
Respondent has failed to invoke any circumstance which could demonstrate,
pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the
domain name”). 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 “Paul Hinkle,” and there is no other evidence in
the record suggesting that Respondent is commonly known by the <certroof.com>
domain name. Thus, Respondent has not
proven it has any rights or legitimate interests in the <certroof.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.”).
Moreover, Respondent’s <certroof.com> domain
name, which is confusingly similar to Complainant’s federally registered
CERTAROOF mark, resolves to a website selling products and offering services
that compete with Complainant. In Glaxo Group Ltd. v. WWW
Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003), the respondent registered the
<wwwzyban.com> domain name and was redirecting Internet users to a
pharmaceutical site offering products that competed with Complainant. The panel held that the respondent was not
using the domain name within the parameters of Policy ¶ 4(c)(i)
or (iii). Id.
Therefore, Respondent’s use of the disputed domain name to misdirect
Internet users to its own competing website for 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
Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat.
Arb. Forum Oct.
27, 2003) (finding that the respondent's “use of the domain name
(and Complainant’s mark) to sell products in competition with Complainant
demonstrates neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the name”).
The Panel concludes that Complainant has sufficiently
satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Because Respondent is using a domain name confusingly
similar to Complainant’s CERTAROOF mark to operate a competing commercial
website, Respondent has registered the <certroof.com> domain name
for the primary purpose of disrupting Complainant’s business pursuant to Policy
¶ 4(b)(iii). See Jerie v. Burian, FA
795430 (Nat. Arb. Forum Oct. 23, 2006) (concluding that the respondent registered
and used the <sportlivescore.com> domain name in order to disrupt the
complainant’s business under the LIVESCORE mark because the respondent was
maintaining a website in direct competition with the complainant); see also
Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding
that the respondent registered and used the disputed domain names in bad faith
pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate
websites that compete with the complainant’s business).
Furthermore, Respondent has registered and is using the <certroof.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iv), because Respondent is attempting to
attract, for commercial gain, Internet users seeking Complainant’s roofing
products and services to its own competing website. In Busy Body, Inc. v. Fitness Outlet, Inc.,
D2000-0127 (WIPO Apr.
22, 2000), the panel found that the respondent registered and was
using the <efitnesswarehouse.com> domain name in bad faith because it was
in the same line of business as the complainant, which had registered the
FITNESS WAREHOUSE mark with the USPTO, and was attempting to attract
complainant’s customers to its own website for commercial gain. Likewise,
Respondent, who is in the same line of business as Complainant, is taking
advantage of the confusing similarity between the domain name and Complainant’s
CERTAROOF mark in order to profit from the goodwill associated with the mark in
violation of Policy ¶ 4(b)(iv). See Velv,
LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (find that the
respondent’s use of the <arizonashuttle.net> domain name, which contained
the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to
Respondent’s website offering competing travel services violated Policy ¶
4(b)(iv)).
The Panel concludes that Complainant has sufficiently
satisfied Policy ¶ 4(a)(iii).
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 <certroof.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable
Paul A. Dorf (Ret.), Panelist
Dated: January 29, 2007
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