Marvin Lumber and Cedar Company v. Al Chan
Claim Number: FA1403001546642
Complainant is Marvin Lumber and Cedar Company (“Complainant”), Minnesota, USA. Respondent is Al Chan (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <integrityoh.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2014; the National Arbitration Forum received payment on March 4, 2014.
On March 4, 2014, GODADDY.COM, LLC; confirmed by e-mail to the National Arbitration Forum that the <integrityoh.com> domain name is registered with GODADDY.COM, LLC; and that Respondent is the current registrant of the name. GODADDY.COM, LLC; has verified that Respondent is bound by the GODADDY.COM, 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 March 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 2014 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@integrityoh.com. Also on March 4, 2014, 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.
A timely Response was received and determined to be complete on March 24, 2014.
On April 01, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol Stoner, Esq., 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.
Complainant requests that the domain name <integrityoh.com> be transferred from Respondent to Complainant.
A. Complainant
a) Complainant has been in business since at least 1950, manufacturing and distributing wood and clad windows and doors. In 1966, Integrity Windows, Inc., was formed as an affiliate under control of Complainant, and Integrity Windows, Inc. produced a line of fiberglass-clad wood windows and doors. Integrity brand windows and doors are distributed throughout the United States and abroad, and information about this line of Complainant’s products can be found at <integritywindows.com>. See Complainant’s Exhibit 4.
b) Complainant has rights in the INTEGRITY mark, used in connection with the manufacture and sale of fiberglass windows and doors. Complainant owns trademark registrations for the INTEGRITY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,947,296 registered Jan. 9, 1996).
c) Respondent’s <integrityoh.com> domain name is confusingly similar to Complainant’s INTEGRITY mark. The disputed domain name contains Complainant’s mark in its entirety while adding the geographic indicator “oh,” which is an abbreviation for Ohio.Respondent does not have any rights or legitimate interests in the <integrityoh.com> domain name.
a. Complainant has not authorized Respondent to use its INTEGRITY mark in any way.
b. Respondent is using the <integrityoh.com> domain name to promote and sell products and services in direct competition with Complainant. Respondent is offering to sell and install vinyl window products manufactured by a company called “Polaris.” See Complainant’s Exhibit 5 and 6.
d) Respondent registered and is using the <integrityoh.com> domain name in bad faith.
a. Respondent has been involved in a nearly identical proceeding with Complainant in which Respondent was ordered to transfer the <integritywindowohio.com> domain name. See Complainant’s Exhibit 7.
b. Respondent is disrupting Complainant’s business by offering window products and installation via the disputed domain name, which directly competes with Complainant’s business. See Complainant’s Exhibit 5 and 6.
c. Respondent is intentionally attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s INTEGRITY mark. Respondent is using the <integrityoh.com> domain name to offer products and services in direct competition with Complainant. See Complainant’s Exhibit 5 and 6.
d. Respondent had knowledge of Complainant’s mark prior to registering the <integrityoh.com> domain name because Respondent has been involved in a UDRP proceeding with Complainant before and Respondent competes directly with Complainant.
e) Respondent registered the disputed domain name on April 14, 2011.
B. Respondent
a) Respondent did not use the color red or Complainant’s diamond logo on the resolving website to avoid any confusion with Complainant’s INTEGRITY mark. Further, the word “integrity” is a common term used widely in the English language and it is commonly incorporated into business names.
b) Respondent is a local business serving only the Greater Cleveland area and selling and installing products from other manufacturers. Respondent does not reference, sell, or install products produced by Complainant. On the other hand, Complainant manufactures unique fiberglass products, which are sold in retail stores. Therefore, Respondent and Complainant are not direct competitors.
c) Respondent has rights in the INTEGRITY WINDOW AND DOOR mark. Respondent owns a trade name registration for Integrity Windows and Doors with the State of Ohio (Reg. No. 1548608 registered Nov. 28, 2005). See Respondent’s Exhibit 1. Respondent has operated its business continuously since 2005.
(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.
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."
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 rightfully asserts its claim to the INTEGRITY mark, used in connection with the manufacture and sale of fiberglass windows and doors, through its trademark registrations for the INTEGRITY mark with the USPTO (e.g., Reg. No. 1,947,296 registered Jan. 9, 1996). The Panel, accordingly finds that the Complainant’s federal registration has secured rights in the INTEGRITY mark within the meaning of Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s <integrityoh.com> domain name contains Complainant’s mark in its entirety while adding the geographic indicator “oh,” which is an abbreviation for Ohio. The Panel finds that the addition of the geographic indicator “oh” to the trademark INTEGRITY does not sufficiently differentiate the disputed domain name from Complainant’s trademark. This is particularly true when the parallel attendant services are in the same industry, that is, the building materials industry. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also, Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO April 8, 2004) (“it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”)
The disputed domain also contains the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis, because top level domain denominators, such as “.com” are required for every domain name. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”)
As the Panel has found that the geographic indicator “oh” and the generic top level domain “.com.” do not serve to distinguish the disputed domain name from the federal trademark, the Panel concludes that Respondent’s <integrityoh.com> domain name is confusingly similar to Complainant’s INTEGRITY mark pursuant to Policy ¶ 4(a)(i).
While Respondent contends that the <integrityoh.com> domain name is comprised of a common and generic word, and as such cannot be found to be confusingly similar to
Complainant’s mark, the Panel finds that such a determination is not required under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
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.”).
The Panel notes that the WHOIS record for the disputed domain name lists “Al Chan” as the domain name registrant, which registration does not evidence any rights or legitimate interest in the disputed domain name. While Respondent allegedly does business under an INTEGRITY mark, as evidenced by Complainant’s Exhibits 5 and 6, Complainant offers uncontroverted evidence that it has not authorized Respondent to use its INTEGRITY mark in any way. Therefore, such usage is not legitimate and does not confer rights upon Respondent.See 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 Panel is convinced, through viewing Complainant’s Exhibits 5 and 6, that Respondent is using the <integrityoh.com> domain name to promote and to sell products and services in direct competition with Complainant. These exhibits show that Respondent is offering to sell and to install vinyl window products manufactured by a company called “Polaris.” Past panels have found that using a confusingly similar domain name to sell products or services in direct competition with a complainant does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Therefore, the Panel finds that Respondent is not making 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) because Respondent is using the <integrityoh.com> domain name in overt competition with Complainant ‘s INTEGRITY mark, to promote and sell competing products and services.
Complainant has therefore, made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name <integrityoh.com> under Policy ¶4(a)(ii) and therefore, the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Respondent asserts that it has rights in the INTEGRITY WINDOW AND DOOR trademark. Respondent filed a trade name registration for Integrity Home Improvement LLC, doing business as Integrity Window and Door with the State of Ohio (Reg. No. 1548608 registered Nov. 28, 2005). See Respondent’s Exhibit 1. However, this trade name registration does not trump Complainant’s federal trademark registration of INTEGRITY for windows and doors, registered on January 09, 1996.
Panel has not viewed any credible evidence in the record as a whole, to evidence that Respondent does have legitimate rights or interests in the disputed domain name under Policy ¶4(a)(ii).
Registration and Use in Bad Faith
Respondent had knowledge of Complainant’s mark prior to registering the <integrityoh.com> domain name because Respondent has been involved in a UDRP proceeding with Complainant before and Respondent competes directly with Complainant. Complainant’s federal trademark INTEGRITY was registered with the USPTO on January 09, 1996, for windows and doors. Respondent registered the domain name <integrityoh.com> on April 14, 2011. As the Respondent is engaged in the same line of business and registered the disputed domain name fifteen years after Complainant’s federal trademark registration, even the most cursory market research would have revealed a conflict in name choice. Moreover, a federal trademark or servicemark registration is constructive notice of the use of a commercial mark.
This Panel has determined that Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name and that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Panel has reviewed Complainant’s Exhibit 7, which shows that Respondent has been involved in a nearly identical proceeding with Complainant in which Respondent was ordered to transfer the <integritywindowohio.com> domain name. When a Respondent has been involved in a prior UDRP dispute in which the disputed domain name was ordered to be transferred to complainant it provides evidence of bad faith registration in the current case. See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004) (“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”).
Complainant has offered credible evidence through its Exhibits 5 and 6 that Respondent is using its domain name <integrityoh.com> in bad faith under Policy ¶ 4(b)(iii) because Respondent is disrupting Complainant’s business by offering competing goods and services.
Respondent is disrupting Complainant’s business by offering window products and installation via the disputed domain name, which directly competes with Complainant’s business. See Complainant’s Exhibits 5 and 6. Using a confusingly similar domain name to compete directly with a complainant demonstrates bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent’s use of a domain name confusingly similar to Complainant’s mark, wielded to offer similar goods, is presumptive evidence of intentionally attempting to attract Internet users for Respondent’s own commercial gain. Respondent is using the <integrityoh.com> domain name to offer windows and doors in direct competition with Complainant’s offerings of windows and doors, though the manufacturer is different. See Complainant’s Exhibits 5 and 6. Respondent’s manner of use of the <integrityoh.com> domain name will likely lead to confusion among internet users as to complainant’s sponsorship of, or affiliation with the resulting websites, as the disputed domain name incorporates the dominant word
“integrity.” The dominant word is that memorable aspect of the trademark that consumers use to call for the product or service in question. Thus, the Panel finds that such a fobbing off of Complainant’s well known mark to sell competing goods or services constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Therefore, the Panel finds that Respondent is using the <integrityoh.com> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is using the disputed domain name to offer products and services in direct competition with Complainant.
Therefore, the Panel finds that Respondent registered and is using the <integrityoh.com> domain name in bad faith under Policy ¶ 4(b)(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 <integrityoh.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: April 15, 2014
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