JELD-WEN, inc. v. East Coast Moulding Inc.
Claim Number: FA1103001380126
Complainant is JELD-WEN, inc. (“Complainant”), represented by Steven E. Klein of Stoel Rives LLP, Oregon, USA. Respondent is East Coast Moulding Inc. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myjeldwenwindows.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 24, 2011; the National Arbitration Forum received payment March 24, 2011.
On March 25, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <myjeldwenwindows.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2011, 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@myjeldwenwindows.com. Also on March 25, 2011, 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 April 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <myjeldwenwindows.com>, is confusingly similar to Complainant’s JELD-WEN mark.
2. Respondent has no rights to or legitimate interests in the <myjeldwenwindows.com> domain name.
3. Respondent registered and used the <myjeldwenwindows.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, JELD-WEN, inc., is a worldwide manufacturer of windows and doors and has offered goods and services under the JELD-WEN mark for almost 50 years. Complainant owns numerous trademark registrations for its JELD-WEN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,388,339 issued April 1, 1986).
Respondent, East Coast Moulding Inc., registered the <myjeldwenwindows.com> domain name February 27, 2010. The disputed domain name resolves to a website that displays Complainant’s JELD-WEN mark and a notice that the website is under construction. The website also contains links to services provided by the registrar and unrelated to Complainant’s 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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 maintains that it has demonstrated its rights in the JELD-WEN mark. A complainant may establish rights in a mark through registration of the mark with a governmental trademark authority. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); 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). Here, Complainant holds multiple trademark registrations for its JELD-WEN mark with the USPTO (Reg. No. 1,388,339 issued April 1, 1986). The Panel finds that Complainant has established rights in the JELD-WEN mark, under Policy ¶ 4(a)(i), through its registration with a trademark authority.
Complainant also urges that Respondent’s <myjeldwenwindows.com> domain name is confusingly similar to its JELD-WEN mark. The disputed domain name features the mark in its entirety and only changes the mark by deleting the hyphen, adding the generic word “my” and the descriptive word “windows,” which references Complainant’s business, and by adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that addition of generic and descriptive words do not sufficiently distinguish the disputed domain name from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel also finds that the deletion of the hyphen does not sufficiently avoid a finding of confusingly similarity. 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). Finally, the Panel determines that the affixation of a gTLD does not properly distinguish the domain name from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Therefore, the Panel finds that Respondent’s <myjeldwenwindows.com> domain name is confusingly similar to Complainant’s JELD-WEN mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the <myjeldwenwindows.com> domain name. In F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007), the Panel stated, “Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.” Here, Complainant made a prima facie showing to support its allegations against Respondent. Respondent never submitted a response to the Complaint. The Panel may interpret this as evidence that Respondent admits to having no rights or legitimate interests under Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, this Panel still reviews the record before determining whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <myjeldwenwindows.com> domain name. The WHOIS information in the record identifies Respondent as “East Coast Moulding Inc.,” which is not similar to the disputed domain name. Complainant further argues that Respondent has no trademark rights in the JELD-WEN mark and that Complainant has not authorized or licensed Respondent to use the mark within the disputed domain name. Given the foregoing evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under 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 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).
Respondent further is using the <myjeldwenwindows.com> to operate a website that contains third-party links unrelated to Complainant’s business of providing window and door products. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of a confusingly similar domain name to operate a website with little content other than third-party links with no relation to Complainant’s business is not 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds that Respondent has not rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent registered and used the disputed domain name in bad faith. Under circumstances such as those set out above, the Panel is permitted to make an inference that Respondent receives some type of profit by allowing the registrar to advertise on the resolving website, presumably via click-through fees. The disputed domain name displays Complainant’s JELD-WEN mark and a number of links related to the registrar’s business and that are unrelated to Complainant’s business in the window and door manufacturing industry. Given the confusingly similar domain name and the use of Complainant’s mark, Internet users may become confused as to Complainant’s association with the resolving website and content. The Panel may also presume that Respondent intends to benefit from this confusion by receiving click-through fees. The Panel finds that such use constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); Goto.com, Inc., v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000) (“With respect to Internet services, even services that are not identical are capable of confusing the public.”).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <myjeldwenwindows.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 21, 2011.
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