Wellborn Cabinet. Inc. v. Purple Bucquet
Claim Number: FA1010001352205
Complainant is Wellborn Cabinet. Inc. (“Complainant”), represented by Linda A. Friedman of Bradley Arant Boult Cummings LLP, Alabama, USA. Respondent is Purple Bucquet (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellborncabinets.com>, registered with Power Brand Center Corp.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 14, 2010; the National Arbitration Forum received payment on October 14, 2010.
On October 15, 2010, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <wellborncabinets.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wellborncabinets.com. Also on October 18, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <wellborncabinets.com> domain name is confusingly similar to Complainant’s WELLBORN CABINET, INC. mark.
2. Respondent does not have any rights or legitimate interests in the <wellborncabinets.com> domain name.
3. Respondent registered and used the <wellborncabinets.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wellborn Cabinet. Inc., operates a business providing and manufacturing permanent furniture cabinets for kitchens and bathrooms. Complainant holds a registered trademark for its WELLBORN CABINET, INC. mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,007,778 issued October 15, 1996).
Respondent registered the <wellborncabinets.com> domain name on August 6, 2002. The disputed domain name resolves to a website featuring links to Complainant’s products and to the products of Complainant’s competitors in the home cabinetry 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 must establish two requirements under Policy ¶ 4(a)(i); that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.
Complainant alleges it has established rights in the WELLBORN CABINET, INC. mark based on its registration of the mark with the USPTO (e.g., Reg. No. 2,007,778 issued October 15, 1996). Registration with a federal trademark authority establishes rights in a mark under Policy ¶ 4 (a)(i). See 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); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, the Panel concludes Complainant’s trademark registration of its WELLBORN CABINET, INC. mark with the USPTO establishes rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant contends Respondent’s <wellborncabinets.com> domain name is confusingly similar to Complainant’s WELLBORN CABINET, INC. mark. The disputed domain name incorporates all of Complainant’s WELLBORN CABINET, INC. except Respondent has removed the comma and the “INC.” portion of Complainant’s mark and the space between the terms in Complainant’s mark. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK).
Additionally, Respondent has added the letter “s” to the word “cabinet” in Complainant’s mark and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The addition of a letter and gTLD fails to distinguish Respondent’s domain name from Complainant’s mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also American Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.”). Therefore, pursuant to Policy ¶ 4(a)(i), the Panel concludes that Respondent’s <wellborncabinets.com> domain name is confusingly similar to Complainant’s WELLBORN CABINET, INC. mark.
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant contends that Respondent lacks rights and legitimate interests in the <wellborncabinets.com> domain name. A complainant making a prima facie showing in support of its allegations shifts the burden to the respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). The Panel finds that Complainant has made a prima facie showing and because Respondent failed to make a timely response, the Panel may assume that it does not have rights or legitimate interests in the <wellborncabinets.com> domain name. However, the Panel will examine the record, pursuant to Policy ¶ 4(c), to see if Respondent has rights or legitimate interests in the <wellborncabinets.com> domain name.
Complainant alleges Respondent is not commonly known by the <wellborncabinets.com> domain name. Respondent has not provided any evidence supporting a finding that it is known by the disputed domain name. There is no evidence in the record that would provide a basis for finding that Respondent is commonly known by the disputed domain name. The WHOIS information lists the registrant of the disputed domain name as “Purple Bucquet” which is not similar to the disputed domain name. Complainant further alleges that it has not authorized or licensed Respondent to use its WELLBORN CABINET, INC. mark. Thus, the Panel finds that Respondent is not commonly known by the <wellborncabinets.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The disputed <wellborncabinets.com> domain name resolves to a website that Respondent uses to post links to Complainant’s website in addition to the websites of Complainant’s competitors in the home cabinetry industry. Complainant alleges that the links posted on the disputed domain name and resolving websites ultimately result in click-through fees that generate income for Respondent. The Panel finds that Respondent’s use of a confusingly similar domain name to operate a website featuring links to these types of websites is not 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 under Policy ¶ 4(c)(iii). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Respondent’s <wellborncabinets.com> domain name resolves to a website featuring hyperlinks, the majority of which resolve to Complainant’s competitors in the home cabinetry business. Complainant alleges that Respondent’s use of the disputed domain name disrupts its business because Internet users intending to find and purchase Complainant’s cabinets may purchase cabinets from competitors as a result of Respondent’s use of the disputed <wellborncabinets.com> domain name. The Panel finds that Respondent’s use of the <wellborncabinets.com> domain name does disrupt Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also America Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Internet users searching for Complainant and Complainant’s cabinets may instead find Respondent’s website and posted links because of Respondent’s use of a confusingly similar disputed domain name. Complainant alleges that Internet users then become confused as to Complainant’s sponsorship of, and affiliation with, the disputed domain name’s resolving website and featured hyperlinks. Complainant alleges that the confusion generated by Respondent results in click-through fees that financially benefit Respondent. The Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wellborncabinets.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 29, 2010
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