national arbitration forum

DECISION

JELD-WEN, inc. v. Texas International Property Associates

Claim Number: FA0701000882053

PARTIES

Complainant is JELD-WEN, inc. (“Complainant”), represented by John C. McElwaine, of Nelson Mullins Riley & Scarborough, LLP, 151 Meeting Street, Charleston, SC 29402. Respondent is Texas International Property Associates (“Respondent”), 4041 W. Wheatland, Suite 156-417, Dallas, TX 75237.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <geldwin.com>, <wwwjeld-wen.com>, <jeld-wendoors.com>, <jeld-wend.com>, <jeldweld.com>, <jeldwed.com>, <jed-wen.com>, <jedwen.com>, <ield-wen.com>, and <jeldwan.com>, registered with Compana, LLC.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 4, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 8, 2007.

On January 15, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <geldwin.com>, <wwwjeld-wen.com>, <jeld-wendoors.com>, <jeld-wend.com>, <jeldweld.com>, and <jeldwed.com> domain names are registered with Compana, LLC and that Respondent is the current registrant of the names. 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 February 1, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <jed-wen.com>, <jedwen.com>, <ield-wen.com>, and <jeldwan.com> domain names are registered with Compana, LLC and that Respondent is the current registrant of the names. 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 the Policy.

On February 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 22, 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@geldwin.com, postmaster@wwwjeld-wen.com, postmaster@jeld-wendoors.com, postmaster@jeld-wend.com, postmaster@jeldweld.com, postmaster@jeldwed.com, postmaster@jed-wen.com, postmaster@jedwen.com, postmaster@ield-wen.com, and postmaster@jeldwan.com by e-mail.

On February 21, 2007, Respondent requested an extension of twenty-one (21) days to respond to the Complaint pursuant to National Arbitration Forum Supplemental Rule 6. The request was granted on February 22, 2007, and the deadline to file a response was extended until March 14, 2007.

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On March 20, 2007, 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <geldwin.com>, <wwwjeld-wen.com>, <jeld-wendoors.com>, <jeld-wend.com>, <jeldweld.com>, <jeldwed.com>, <jed-wen.com>, <jedwen.com>, <ield-wen.com>, and <jeldwan.com> domain names are confusingly similar to Complainant’s JELD-WEN mark.

2. Respondent does not have any rights or legitimate interests in the <geldwin.com>, <wwwjeld-wen.com>, <jeld-wendoors.com>, <jeld-wend.com>, <jeldweld.com>, <jeldwed.com>, <jed-wen.com>, <jedwen.com>, <ield-wen.com>, and <jeldwan.com> domain names.

3. Respondent registered and used the <geldwin.com>, <wwwjeld-wen.com>, <jeld-wendoors.com>, <jeld-wend.com>, <jeldweld.com>, <jeldwed.com>, <jed-wen.com>, <jedwen.com>, <ield-wen.com>, and <jeldwan.com> domain names in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, JELD-WEN, inc., is a source of many types of windows, doors, and building supplies. From 1960 until present, Complainant has grown into a company of over 20,000 employees with 150 divisions, and has offices located worldwide in parts of North America, South America, Europe, and Australia. Complainant holds a registered trademark with the United States Patent and Trademark Office (“USPTO”) for the JELD-WEN mark (Reg. No. 1,388,339 issued April 1, 1986).

Respondent, Texas International Property Associates, registered the <geldwin.com> domain name on March 19, 2005; the <wwwjeld-wen.com> domain name on May 7, 2005; the <jeld-wendoors.com> domain name on April 22, 2005; the <jeld-wend.com> domain name on February 25, 2005; the <jeldweld.com> domain name on March 25, 2005; the <jeldwed.com> domain name on November 2, 2005; the <jed-wen.com> domain name on March 19, 2005; the <jedwen.com> domain name on June 16, 2005; the <ield-wen.com> domain name on December 15, 2005; and the <jeldwan.com> domain name on July 11, 2005.

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’s registration of the JELD-WEN mark with the USPTO in 1986 preceded Respondent’s registrations of all the disputed domain names that took place at various times in 2005. Under Policy ¶ 4(a)(i), registration of a mark with an appropriate governmental authority such as the USPTO confers rights in that mark to Complainant. Thus, the Panel finds that Complainant has established rights in the JELD-WEN mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2000) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also 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.”).

The disputed domain names are all confusingly similar to Complainant’s JELD-WEN mark because they contain slight variations of the mark that are not enough to make the disputed domain names distinctive. Respondent’s <geldwin.com>, <jeld-wend.com>, <jeldwed.com>, <jed-wen.com>, <jedwen.com>, <ield-wen.com>, and <jeldwan.com> domain names contain slight misspellings of Complainant’s JELD-WEN mark. However, these slight misspellings do not create distinct marks under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to the complainant’s mark BEANIE BABIES).

Respondent’s <geldwin.com>, <jeldweld.com>, <jeldwed.com>, <jedwen.com>, and <jeldwan.com> domain names remove the hyphen from Complainant’s JELD-WEN mark. However, the removal of the hyphen does not sufficiently differentiate the above disputed domain names from Complainant’s mark under Policy ¶ 4(a)(i). See Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); 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).

Respondent’s <wwwjeld-wen.com> domain name adds a “www” to Complainant’s JELD-WEN mark. However, the addition of “www” does not distinguish Respondent’s <wwwjeld-wen.com> domain name from Complainant’s JELD-WEN mark under Policy ¶ 4(a)(i). See Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS mark); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark).

Based on the aforementioned reasons, the Panel concludes that Respondent’s disputed domain names are all confusingly similar to Complainant’s JELD-WEN mark pursuant to Policy ¶ 4(a)(i).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed domain names. 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). Because of Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).

Complainant has alleged that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies Respondent as “Texas International Property Associates,” and the Panel can find no other evidence in the record suggesting that Respondent is commonly known by the disputed domain names. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).

Respondent is using the <jeld-wendoors.com>, <jeldweld.com>, <jeldwed.com>, <jed-wen.com>, <jedwen.com>, and <jeldwan.com> domain names to display a series of hyperlinks that advertise the products of Complainant and its competitors. Respondent presumably receives click-through fees for each redirected Internet user. Respondent’s unauthorized use of Complainant’s JELD-WEN mark in the above disputed domain names in an attempt to commercially benefit from advertising the products of Complainant and its competitors does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under 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 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).

Respondent is using the <geldwin.com>, <wwwjeld-wen.com>, <jeld-wend.com>, and <ield-wen.com> domain names to display a series of hyperlinks that are unrelated to Complainant’s business. Respondent presumably receives click-through fees for each redirected Internet user. Thus, Respondent’s use of these disputed domain names does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is using the <jeld-wendoors.com>, <jeldweld.com>, <jeldwed.com>, <jed-wen.com>, <jedwen.com>, and <jeldwan.com> domain names to display a series of hyperlinks that advertise Complainant and its competitors’ products. This is likely to disrupt Complaintant’s business by diverting potential customers and sales to Complainant’s competitors. The Panel finds that such registration and use of the aforementioned disputed domain names constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).

All of Respondent’s disputed domain names, which are confusingly similar to Complainant’s JELD-WEN mark, are likely to cause confusion among customers searching for Complainant’s products. Specifically, customers may become confused as to the affiliation, endorsement, or sponsorship of the products and services advertised by the links on Respondent’s websites. Therefore, the Panel finds that such registration and use of the disputed domain names constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); 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 disputed domain names are confusingly similar to Complainant’s JELD-WEN mark because of the various slight changes made to the mark. Complainant has alleged that this constitutes typosquatting, which should be recognized as bad faith use. The Panel agrees, and finds that Respondent’s registration and use of all the disputed domain names constitute bad faith pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” which is evidence of bad faith registration and use).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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 <geldwin.com>, <wwwjeld-wen.com>, <jeld-wendoors.com>, <jeld-wend.com>, <jeldweld.com>, <jeldwed.com>, <jed-wen.com>, <jedwen.com>, <ield-wen.com>, and <jeldwan.com> domain names be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: April 2, 2007