Skyline Windows, LLC v. skylinewindows.com Private Registrant
Claim Number: FA1310001525647
Complainant is Skyline Windows, LLC (“Complainant”), represented by Karen H. Bromberg, New York, USA. Respondent is skylinewindows.com Private Registrant (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skylinewindows.com>, registered with NEW DREAM NETWORK, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 21, 2013; the National Arbitration Forum received payment on October 21, 2013.
On October 28, 2013, NEW DREAM NETWORK, LLC confirmed by e-mail to the National Arbitration Forum that the <skylinewindows.com> domain name is registered with NEW DREAM NETWORK, LLC and that Respondent is the current registrant of the name. NEW DREAM NETWORK, LLC has verified that Respondent is bound by the NEW DREAM NETWORK, LLC 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 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 2013 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@skylinewindows.com. Also on October 29, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 27, 2013, 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" 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 contentions:
1. Respondent registered the disputed <skylinewindows.com> domain name on behalf of Complainant as a former employee of Complainant.
2. Policy ¶ 4(a)(i)
a. Complainant uses its SKYLINE WINDOWS mark in connection with its business as a premier manufacturer of custom windows.
b. Complainant owns rights in the SKYLINE WINDOWS mark because it registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,161,934 registered July 21, 1981). See Complainant’s Exhibit A.
c. The disputed <skylinewindows.com> domain name is identical to Complainant’s mark.
3. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known as <skylinewindows.com> because Respondent is a former employee of Complainant and Complainant never transferred any rights in the <skylinewindows.com> domain name to Respondent.
b. Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain name resolves to Complainant’s official website. See Complainant’s Exhibit B.
4. Policy ¶ 4(a)(iii)
a. Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii) because Respondent was supposed to register the disputed domain name on Complainant’s behalf and has continued to hold onto the disputed domain name even though the relationship between Complainant and Respondent has ended.
5. Respondent registered the disputed domain name on October 16, 1997.
B. Respondent did not submit a Response.
1. Respondent’s <skylinewindows.com> domain name is confusingly similar to Complainant’s SKYLINE WINDOWS mark.
2. Respondent does not have any rights or legitimate interests in the <skylinewindows.com > domain name.
3. Respondent registered or used the <skylinewindows.com> domain name in bad faith.
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."
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.
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.”).
Complainant states that it uses its SKYLINE WINDOWS mark in connection with its business as a premier manufacturer of custom windows. Complainant asserts that it has rights in the SKYLINE WINDOWS mark pursuant to Policy ¶ 4(a)(i) because it registered the mark with the USPTO (e.g., Reg. No. 1,161,934 registered July 21, 1981). See Complainant’s Exhibit A. The Panel notes that it has previously been determined that a complainant sufficiently establishes its rights in a mark where it registers the mark with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Accordingly, the Panel holds that Complainant has established that it owns rights in the SKYLINE WINDOWS mark pursuant to Policy ¶ 4(a)(i).
Complainant next asserts that the disputed <skylinewindows.com> domain name is identical to Complainant’s SKYLINE WINDOWS mark, because the domain name incorporates the complete mark and merely adds the generic top-level domain (“gTLD”) “.com.” The Panel also notes that the disputed domain name eliminates the spaces found between the words in the SKYLINE WINDOWS mark. The Panel notes that it has previously been held that a domain name is identical to a complainant’s mark where the domain name fully appropriates the mark but eliminates the spaces found between words in the mark and adds a gTLD. See, e.g., Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Therefore, the Panel holds that the <skylinewindows.com> domain name is identical to Complainant’s SKYLINE WINDOWS mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known as <skylinewindows.com>, because Respondent is a former employee of Complainant and Complainant never transferred any rights in the <skylinewindows.com> domain name to Respondent. The Panel notes that in Votorantim Participações S.A. v. Carlos Navarro / NetStructure, FA 1456005 (Nat. Arb. Forum September 25, 2011), the Panel held that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where the respondent did not operate a business corresponding to the disputed domain name and the WHOIS information did not suggest the respondent was known by the disputed domain name. The complainant in Votorantim Participações S.A., supra had also alleged that the respondent was a former employee lacking intellectual property rights in the appropriated mark. Here, the Panel analogizes this case to Votorantim Participações, supra, and note that in the instant proceedings, the WHOIS information identifies the registrant of the <skylinewindows.com> domain name as “skylinewindows.com Private Registrant,” and the Panel finds that this suggests that Respondent is known by a private name other than <skylinewindows.com>. The Panel also notes that as in Votorantim Participações S.A., supra, nothing in the record suggests that Respondent operated a business under the name of <skylinewindows.com>. Further, the Panel reasons that it is undisputed that Respondent was a former employee of Complainant and Respondent allegedly has not received any intellectual property rights in the <skylinewindows.com> domain name. For the foregoing reasons, the Panel holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next asserts that Respondent is not using the disputed domain name for 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) because the disputed domain name resolves to Complainant’s official website. See Complainant’s Exhibit B. The Panel notes that in Votorantim Participações, supra, the Panel held that Respondent’s use of the disputed domain name was not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii) where the disputed domain name resolved to the complainant’s official website but complainant had no control over the disputed domain name. See also Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of [UDRP] ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). The Panel notes that here, as in Votorantim Participações, supra and Direct Line Ins. Plc, supra, Complainant alleges that even though the <skylinewindows.com> domain name resolves to Complainant’s own official website, Complainant has no control over the disputed domain name. Accordingly, the Panel holds that Respondent’s use of the disputed domain name is not protected as 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).
The Panel notes that it has previously been determined that the bad faith factors listed under Policy ¶ 4(b) are not exhaustive, and that a complainant is free to submit other evidence to show the respondent demonstrated bad faith registration and use of the disputed domain name. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Accordingly, the Panel is free to consider Complainant’s evidence that Respondent has demonstrated bad faith registration and use of the <skylinewindows.com> domain name although that evidence does not fall squarely into one of the bad faith factors set out in Policy ¶ 4(b).
Complainant argues that Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii) because Respondent was supposed to register the disputed domain name on Complainant’s behalf but has continued to hold onto the disputed domain name even though the relationship between Complainant and Respondent has ended. The Panel notes that in Votorantim Participações, supra, the panel found the respondent demonstrated bad faith under Policy ¶ 4(a)(iii) where the disputed domain name resolved to the complainant’s own website but the complainant had no control over the disputed domain name and respondent continued to hold onto the disputed domain name after the business relationship between the complainant and the respondent ended. See also Anbex Inc. v. WEB-Comm Techs. Group, FA 780236 (Nat. Arb. Forum Sept. 19, 2006) (finding bad faith registration and use where the complainant hired the respondent to register the disputed domain name and the respondent later re-registered the disputed domain name on its own behalf and refused to transfer it to the complainant once their business relationship ended). The Panel determines that as in Votorantim Participações, supra, and Anbex Inc., supra, Respondent failed to transfer the <skylinewindows.com> domain name to Complainant after the business relationship between Complainant and Respondent terminated. The Panel thus holds that Respondent has demonstrated bad faith registration and use of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skylinewindows.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 10, 2013
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