Pella Corporation v. Azra Khan
Claim
Number: FA0305000159400
Complainant is
Pella Corporation, Pella, IA, USA (“Complainant”) represented
by Adam Lindquist Scoville, of Faegre & Benson, LLP. Respondent
is Azra Khan, PAKISTAN (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <pellawindows.com>, registered with Iholdings.Com,
Inc. d/b/a Dotregistrar.Com.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.), as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 22, 2003; the Forum received a hard copy of the Complaint
on May 27, 2003.
On
May 23, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to
the Forum that the domain name <pellawindows.com> is registered
with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the
current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has
verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a
Dotregistrar.Com 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
May 28, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 17, 2003 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@pellawindows.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
June 24, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed the Honorable Charles K. McCotter,
Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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 <pellawindows.com>
domain name is confusingly similar to Complainant’s PELLA mark.
2. Respondent does not have any rights or
legitimate interests in the <pellawindows.com> domain name.
3. Respondent registered and used the <pellawindows.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Pella Corporation, has provided windows and other construction materials to the
public under the PELLA mark since 1934. Complainant holds numerous
registrations for its PELLA family of marks in the United States, including
U.S. Reg. No. 811,964 (registered on August 2, 1966) for the PELLA mark and
U.S. Reg. No. 1,370,667 (registered on November 12, 1985) for the THE PELLA
WINDOW STORE mark. Complainant also holds numerous international registrations
for its PELLA family of marks in over 37 countries worldwide.
Pursuant to its
business under the PELLA mark, Complainant registered the <pella.com>
domain name, and since 1995 has used this domain name to inform the public and
Complainant’s present and potential customers of its windows and other
construction related goods.
Respondent, Azra
Khan, registered the <pellawindows.com> domain name on May 22,
2002, and is not licensed or authorized to use Complainant’s PELLA mark for any
purpose. Respondent uses the disputed domain name to forward Internet users to
the http://www.ownbox.com/treasure/shop.htm website, which displays a series of
links to various commercial websites (such as an online casino at the
<bonuscasino.com> domain name) and several banner advertisements. The
source code for the webpage associated with the <ownbox.com> domain name
indicates that every hyperlink displayed allows the destination website to
track the identity of the referring website, for the purposes of facilitating
the payment of referral fees.
The Panel notes
that Respondent has been brought before numerous administrative Panels in the
past for previous abusive registration of domain names.
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.
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 has
established rights in the PELLA mark through registration of the mark with the
appropriate governmental authorities worldwide, as well as through use of the
mark in commerce since 1934.
Respondent’s <pellawindows.com>
domain name is confusingly similar
to Complainant’s PELLA mark. The disputed domain name entirely incorporates
Complainant’s PELLA mark and then merely adds the word “windows.” One of the
products that Complainant produces are windows, and the addition of this word
to Complainant’s mark enhances any confusion between Complainant’s mark and the
domain name. See Space Imaging LLC
v. Brownwell, AF-0298 (eResolution Sept.
22, 2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13,
2000) (finding that Respondent’s domain name <marriott-hotel.com> is
confusingly similar to Complainant’s MARRIOTT mark).
Accordingly, the
Panel finds that the <pellawindows.com> domain name is confusingly similar to Complainant’s PELLA mark under
Policy ¶ 4(a)(i).
Respondent uses the disputed domain name to redirect Internet users to
the <ownbox.com> domain name. The destination website displays not only
banner advertisements, but links to various commercial websites run by
third-parties. As the website is designed to enable Respondent to earn revenue
from these third-party websites via referral fees, Respondent is commercially
capitalizing on its registration of Complainant’s mark in a domain name. Such
use does not evidence 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
pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S
Tech., Inc., FA 96577
(Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of
the domain name to confuse and divert Internet traffic is not a legitimate use
of the domain name); see also Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002) (finding that, because
Respondent's sole purpose in selecting the domain names was to cause confusion
with Complainant's website and marks, its use of the names was not in
connection with the offering of goods or services or any other fair use).
Respondent’s WHOIS information, the fact that Respondent is not
authorized to use Complainant’s PELLA mark, and the knowledge that Respondent
is a serial cybersquatter all conclusively demonstrate that Respondent is not
“commonly known by” the <pellawindows.com>
domain name for the purposes of 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 RMO,
Inc. v. Burbridge, FA
96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail")
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<pellawindows.com> domain
name under Policy ¶ 4(a)(ii).
Respondent registered and used the <pellawindows.com> domain name
in
bad faith. Respondent uses a confusingly similar variation of Complainant’s
mark to attract Internet users to its website for commercial gain. Such use,
capitalizing on a likelihood of confusion between Complainant’s mark and the
disputed domain name, is evidence that the domain name was registered and used
in bad faith pursuant to Policy ¶ 4(b)(iv). See ESPN, Inc. v.
Ballerini, FA 95410
(Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the
domain name to another website, presumably receiving a portion of the
advertising revenue from the site by directing Internet traffic there and thus
using a domain name to attract Internet users for commercial gain); see also
Bama Rags, Inc. v. Zuccarini, FA
94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where Respondent
attracted users to advertisements).
Furthermore,
Respondent has exhibited a pattern of registering infringing domain names for
its own commercial gain. See Thrifty, Inc. and Thrifty Rent-a-Car System,
Inc. v. Azra Khan, FA 154111 (Nat. Arb. Forum May 20, 2003) (ordering
transfer of the <thriftycarrentals.com> domain name); see also Kmart
of Michigan, Inc. v. Azra Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (ordering transfer of the
<bigkmart.com> domain name). These and numerous other examples of
Respondent’s abusive registration of domain names demonstrate that the current
proceeding is just one strand in a pattern of cybersquatting. As Respondent’s
registration of the <pellawindows.com> domain name prevents
Complainant from reflecting the PELLA mark in a relevant corresponding domain
name, Respondent’s activities evidence bad faith use and registration pursuant
to Policy ¶ 4(b)(ii). See Hachette
Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Nat. Arb. Forum Apr. 6,
2001) (finding that where Respondent has registered over 50 domain names that
correspond to different well-known trademarks, evidence of a pattern exists); see
also America Online, Inc. v.
iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad
faith pattern of conduct where Respondent registered many domain names
unrelated to its business which infringe on famous marks and websites).
The Panel thus
finds that Respondent registered and used the <pellawindows.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <pellawindows.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
July 7, 2003
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