Andersen Corporation v. Dennis McHugh / Clear Window Technology, Inc.
Claim Number: FA1610001699253
Complainant is Andersen Corporation (“Complainant”), represented by Scott W. Johnston of Merchant & Gould, P.C., Minnesota, USA. Respondent is Dennis McHugh / Clear Window Technology, Inc. (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <renewalbyandersenreviews.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 21, 2016; the Forum received payment on October 21, 2016.
On October 21, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <renewalbyandersenreviews.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 October 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 2016 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@renewalbyandersenreviews.com. Also on October 25, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 17, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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" 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 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
Andersen Corporation (“Andersen”) owns several United States federal trademark registrations for the mark RENEWAL BY ANDERSEN in association with windows, doors and window and door installation services. Andersen first filed for a trademark application in the United States for the RENEWAL BY ANDERSEN trademark on May 18, 1995. Andersen has used its RENEWAL BY ANDERSEN mark continuously since 1995. Andersen’s federal trademark registrations are detailed in Annex 1 of the Complaint.
The foregoing marks are hereinafter referred to as Andersen’s “RENEWAL BY ANDERSEN marks.”
Andersen, formed in 1903, is an international enterprise employing over 9,000 people at more than 20 locations. The company’s headquarters are in Bayport, Minnesota. Andersen annually manufactures more than six million wood windows and doors, with sales worldwide. Renewal by Andersen is the full-service window replacement division of Andersen.
Renewal by Andersen manufactures, sells, and installs windows and doors. Since at least as early as 1995, Renewal by Andersen has been providing replacement window services and has become one of the largest replacement window companies in the United States.
Consumers are invited to visit Andersen’s online websites located at andersenwindows.com and renewalbyandersen.com to view information related to Andersen’s products and services and information related to Renewal by Andersen. Andersen has invested a significant amount of money to promote its products sold and services provided in association with its RENEWAL BY ANDERSEN mark. As a result of its extensive use and promotion of that mark, consumers throughout the United States are aware of the RENEWAL BY ANDERSEN mark. The RENEWAL BY ANDERSEN mark is recognized and relied upon as identifying Andersen as the sole source of windows, doors, and related products and installation services, and as distinguishing Andersen’s products and services from those of others. As a result, the RENEWAL BY ANDERSEN Marks have acquired substantial goodwill and are extremely valuable commercial assets.
The Respondent registered the domain name RENEWALBYANDERSENREVIEWS.COM with GoDaddy.com, LLC (“GoDaddy”) on or about March 22, 2012, under GoDaddy’s domain registration policy
The Respondent has no statutory or common law trademark rights or any other right or legitimate interest to Andersen’s RENEWAL BY ANDERSEN Marks, the mark RENEWALBYANDERSENREVIEWS, or in the infringing domain name RENEWALBYANDERSENREVIEWS.COM. Andersen has not authorized or licensed Respondent to use Andersen’s RENEWAL BY ANDERSEN Marks or any derivative mark for any purpose. Andersen’s rights in the RENEWAL BY ANDERSEN marks date back to its first application filing date of May 18, 1995. Andersen first took steps to protect its valuable RENEWAL BY ANDERSEN Marks at least seventeen years before the Respondent registered the domain name. There is no controversy as to the fact that Andersen has priority over Respondent.
Respondent has registered and used a domain name that is confusingly similar to the RENEWAL BY ANDERSEN Marks in bad faith. Respondent is using Andersen’s RENEWAL BY ANDERSEN marks to divert business from Renewal by Andersen to Respondent’s website for its business Clear Window Technology, Inc. Respondent’s RENEWALBYANDERSENREVIEWS.COM domain name redirects users to Respondent’s website, www.windowreplacementrepair.com, on which Respondent offers competing windows and installation services. The windows installed by Respondent include those of Complainant, but also include “customer windows and locally made vinyl windows,” such as those sold by Marvin Windows, Pilkington Glass, Elite 4000 Vinyl Windows, Wood Windows as well as other custom windows and custom vinyl windows. However, Respondent does not offer RENEWAL BY ANDERSEN windows or installation services.
Respondent is a competitor of Andersen and its Renewal by Andersen business. Respondent’s use of Andersen’s RENEWAL BY ANDERSEN mark to redirect customers to Respondent’s competitive website evidences bad faith. There is no evidence the domain name was registered for a legitimate reason. The evidence shows the domain name was registered primarily for the purpose of trading off Andersen’s goodwill for its RENEWAL BY ANDERSEN marks by offering services similar to those sold by Andersen under Andersen’s RENEWAL BY ANDERSEN mark. RENEWALBYANDERSENREVIEWS.COM redirects to www.windowreplacementrepair.com, offering competing window replacement services.
Respondent’s use of Andersen’s RENEWAL BY ANDERSEN mark in the RENEWALBYANDERSENREVIEWS.COM domain name, which redirects to Respondent’s website on which it sells competing services, illustrates the bad faith intention to trade on the goodwill associated with Andersen’s RENEWAL BY ANDERSEN Marks.
Respondent’s continuous maintenance of the domain name RENEWALBYANDERSENREVIEWS.COM will continue to cause harm to Andersen unless the domain name is transferred to Andersen. Respondent has no legitimate interest in the domain name RENEWALBYANDERSENREVIEWS.COM. Moreover, Respondent’s continued trafficking of that domain name to trade on the goodwill associated with Andersen’s RENEWAL BY ANDERSEN marks is bad faith. Transfer of the domain name to Andersen is appropriate.
a. The Domain Name RENEWALBYANDERSENREVIEWS.COM is Confusingly Similar to Andersen’s Trademarks.
The domain name RENEWALBYANDERSENREVIEWS.COM contains the dominant feature RENEWAL BY ANDERSEN, which is also the dominant feature in each of Andersen’s RENEWAL BY ANDERSEN Marks. Moreover, the addition of the suffixes “reviews” and “.com” do not detract from the overall impression of the domain name, when the domain name depicts window products and services. Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶4(a)(i) is satisfied).
Consumers are likely to be confused about whether the website located at RENEWALBYANDERSENREVIEWS.COM is sponsored and/or endorsed by or affiliated with Andersen and its business. Andersen has promoted its goods and services under the RENEWAL BY ANDERSEN Marks since at least as early as 1995. It has offered windows and window installation services during that time. It naturally follows that consumers would associate a website located at RENEWALBYANDERSENREVIEWS.COM which contains the RENEWAL BY ANDERSEN mark and redirects to a website which sells window installation services with Andersen. See Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (holding the content of a website may increase the likelihood of consumer confusion). The requirement of confusing similarity is met.
b. Respondent Does Not Have Any Right or Legitimate Interest in the Domain Name RENEWALBYANDERSENREVIEWS.COM.
Respondent does not have any right or legitimate interest in RENEWALBYANDERSENREVIEWS.COM. The RENEWALBYANDERSENREVIEWS.COM domain name redirects to Respondent’s website, which offers competing windows and installation services. The registration of a domain for the purpose of redirecting Internet users interested in another’s products is not a bona fide offering of goods pursuant to Policy ¶4(c)(i). Moreover, Respondent has no legitimate right to the name in that it has not received permission to use the mark pursuant to Policy ¶4(c)(ii). Furthermore, Respondent is not using the mark for any legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because Respondent is advertising and purportedly selling its own competing services.
1. Respondent has not used the Domain Name in Connection with a Bona Fide Offering of Goods or Services in that the Intent was to Cause Unsuspecting Consumers to Veer to Its Website and Away from Andersen’s Legitimate Site.
A respondent’s use of a domain name to trick consumers into visiting its website to offer competing products or services is not a bona fide offering of goods or services pursuant to Policy ¶(c)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i)).
Respondent does not have a bona fide interest in the domain name pursuant to Policy ¶4(c)(i) in that its intent in registering the domain name was to divert traffic away from Andersen, not to legitimately use the name in connection with the sale of goods.
Unsuspecting consumers attempting to visit Andersen’s website to purchase window installation services were likely to inadvertently visit Respondent’s site because the domain name contains the RENEWAL BY ANDERSEN mark. Respondent’s RENEWALBYANDERSENREVIEWS.COM domain name redirects to Respondent’s website, www.windowreplacementrepair.com, which offers window installation services through Respondent’s business, Clear Window Technology, Inc. Unaware that the website has been redirected, consumers arriving at Respondent’s website are likely confused because Respondent’s website offers the same services as sold by Andersen, namely, window installation services. Customers visiting the RENEWALBYANDERSENREVIEWS.COM website are likely to think the window installation services originate from, or are affiliated with, Andersen. Respondent, in turn, profited off the confusion. The domain name is not connected to a bona fide offering of goods or services and is not a legitimate use.
2. Respondent has no Legitimate Right in the Domain Name Because Andersen has not Granted Respondent Permission to use the Name.
Respondent also has no legitimate rights pursuant to Policy ¶4(c)(ii) in that it is not commonly known by the mark and has not received Andersen’s permission to use the mark. Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name). A domain name registrant is presumed not to have a legitimate interest in a domain name where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; and (3) Respondent is not commonly known by the domain name. Policy ¶4(c)(ii); Gallup, Inc. v. Amish Country Store, FA96209 (Nat. Arb. Forum Jan. 23, 2001) (holding that Respondent does not have rights in a domain name when Respondent is not known by the mark). Furthermore, it is “incumbent upon respondents to advance concrete evidence pursuant to Policy ¶4(a)(ii) rebutting the latter assertion because this information is uniquely within the knowledge and control of the respondent.” Wilson v. Whois Privacy Protection Service, Inc., FA0502000417186 (Nat. Arb Forum March 29, 2005).
Respondent does not have a legitimate interest in the domain name RENEWALBYANDERSENREVIEWS.COM. Andersen has not licensed its RENEWAL BY ANDERSEN Marks to Respondent. Andersen’s prior rights to the RENEWAL BY ANDERSEN Marks precede Respondent’s domain name registration. Additionally, there is no evidence Respondent is commonly known by the name RENEWALBYANDERSENREVIEWS or RENEWALBYANDERSENREVIEWS.COM. Rather, Respondent appears to be known as Clear Window Technology, Inc. The domain name RENEWALBYANDERSENREVIEWS.COM clearly does not refer to Respondent.
3. Respondent’s Diversion of Traffic to a Respondent’s Website is not a Legitimate Use.
Respondent is also not using the domain name for a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because the name is being used to redirect to Respondent’s commercial website. Hamilton Beach Brands, Inc. v. Metcalfe Catering Equipment Ltd., D2014-2048 (WIPO January 13, 2015) (using a domain name that incorporates a registered mark to redirect to Respondent’s website is not a legitimate use, even if Respondent sells some of Complainant’s products).
In Oki Data Americas, Inc. v. ASD, Inc., the Panel set forth four factors necessary to demonstrate whether an authorized sales or service agent of trademarked goods can use the trademark at issue in its domain name. See Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (November 6, 2001). One of these factors is that “Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.” See id; also Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (WIPO Feb. 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).
At the outset, Respondent is not a service agent authorized to install windows under the RENEWAL BY ANDERSEN mark. For this reason alone, Respondent’s redirection of traffic to Respondent’s website is not a legitimate use. Moreover, Respondent’s website includes products of both Complainant and third parties. This constitutes a bait and switch tactic and is not a legitimate use.
Respondent is not making a legitimate, non-commercial, or fair use of the domain name in that its purpose in registering and using the domain name is to divert Andersen’s web traffic to Respondent’s website, which competes with Andersen. While the term “reviews” is in the domain name at issue, Respondent provides no reviews of Renewal by Andersen products or services. Instead, Respondent offers windows and window installation services on its website. Consequently, Respondent’s use of RENEWAL BY ANDERSEN in the domain name misappropriates Andersen’s goodwill, cheating consumers into clicking on Respondent’s website when they think they will see information regarding Andersen and its RENEWAL BY ANDERSEN services.
c. The Domain Name Has Been Registered and Used In Bad Faith
Respondent’s registration of a domain name in association with Andersen’s RENEWAL BY ANDERSEN marks shows the registration was in bad faith.
Respondent’s registration of a domain name with the constructive and actual knowledge of Andersen’s trademark rights in that name shows bad faith pursuant to Policy ¶4(b)(ii). Because the RENEWALBYANDERSENREVIEWS.COM domain name redirects to Respondent’s website, which competes directly against Andersen, Respondent’s registration disrupted the business of a competitor in bad faith pursuant to Policy ¶4(b)(iii). Respondent’s intentional attempt to attract Internet users to its website by using a name that is confusingly similar to Andersen’s RENEWAL BY ANDERSEN marks is also in violation of Policy ¶4(b)(iv).
1. Respondent Registered the Domain Name in Bad Faith Knowing of Andersen’s Trademark Rights in the RENEWAL BY ANDERSEN Marks.
Respondent’s registration of the domain name RENEWALBYANDERSENREVIEWS.COM was in bad faith pursuant to Policy ¶4(b)(ii) because at the time the name was registered, Respondent was on notice and knew of Andersen’s rights. “[T]here is a legal presumption of bad faith when [a] Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.” Digi Int’l v. DDI Sys., FA124506 (Nat. Arb. Forum Oct 24, 2002); see also Pavillion Agency, Inc. v. Greenhouse Agency, Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the domain names are so obviously connected with Complainant that the use or registration by anyone other than Complainant suggests opportunistic bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). Respondent has had numerous dealings with Andersen and Renewal by Andersen. In fact, Respondent used to be a Renewal by Andersen dealer. In any event, regardless of actual knowledge, a respondent should have conducted a trademark search prior to the registration of the domain name. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case D2001-1319 (Feb 1, 2002) (holding the failure to conduct a trademark search considered an element of bad faith).
Respondent had actual knowledge of Andersen’s trademark rights in its RENEWAL BY ANDERSEN marks prior to the registration of the domain name. There is an obvious connection between the domain name and Andersen’s RENEWAL BY ANDERSEN marks that registration by anyone other than Andersen suggests bad faith. In fact, Andersen’s RENEWAL BY ANDERSEN Marks were registered with the United States Trademark Office at the time the domain name was registered. A simple search for “RENEWAL BY ANDERSEN” on the site prior to registration of the domain name RENEWALBYANDERSENREVIEWS.COM revealed Andersen’s website and trademark rights. Further, by incorporating the RENEWAL BY ANDERSEN mark into a domain name that is so obviously related to Andersen’s mark by advertising the same services as offered by Andersen, Respondent demonstrates knowledge of Andersen’s RENEWAL BY ANDERSEN marks at the time of registration. Respondent was at least on constructive notice of Andersen’s trademark rights in and to the RENEWAL BY ANDERSEN Marks at the time the name was registered. On that basis alone, Respondent’s registration of a confusingly similar domain name shows bad faith.
2. Respondent Acted in Bad Faith when It Diverted Customers to Andersen’s Competitors.
Respondent’s diversion of traffic to its own competing website also shows bad faith pursuant to Policy ¶4(b)(iii). See Hamilton Beach, supra; see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶4(b)(iii) where that respondent used the domain name to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that a respondent diverted business from a complainant to a competitor’s website so as to come within the terms of Policy ¶4(b)(iii)); Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶4(b)(iii)).
Respondent directly competed against Andersen for consumers who were seeking window installation services affiliated with the RENEWAL BY ANDERSEN Marks. Specifically, Respondent promotes its own window installation services, instead of those offered by Andersen in association with Andersen’s RENEWAL BY ANDERSEN marks. Respondent’s domain name incorporates the RENEWAL BY ANDERSEN mark in its entirety and redirects to Respondent’s competing website, which advertises competing windows and window installation services offered by Respondent. Respondent used that domain name to divert traffic to its website that should have reached Andersen’s websites. That is bad faith.
3. Respondent Acted in Bad Faith by Intentionally Attempting to Attract Internet Users to Its Website for Commercial Gain by Creating a Likelihood of Confusion with the RENEWAL BY ANDERSEN Marks.
Bad faith intent pursuant to Policy ¶4(b)(iv) is also shown from Respondent’s choosing to use a designation that it knows to be similar to another’s registered trademark in order to attract consumers to its website. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Bad faith is shown because Respondent registered the domain name in order to trade on Andersen’s goodwill associated with its RENEWAL BY ANDERSEN marks by creating a likelihood of confusion as to the source of the website. Here, Respondent used Andersen’s RENEWAL BY ANDERSEN marks to attract consumers to its own website. Respondent’s use of Andersen’s RENEWAL BY ANDERSEN mark in a domain name that is then redirected to Respondent’s website is textbook “bait and switch” tactics that are used to attract consumers to its website who are searching for RENEWAL BY ANDERSEN services. These “bait and switch” tactics demonstrate Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 (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 claims rights in the RENEWAL BY ANDERSEN mark based on registration of the mark with the United State Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,077,925, registered May 18, 1995). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO). Complainant’s registration of the RENEWAL BY ANDERSEN mark with the USPTO is sufficient to establish its rights in the mark under Policy ¶4(a)(i).
Complainant claims the <renewalbyandersenreviews.com> is confusingly similar to the RENEWAL BY ANDERSEN mark because the domain name contains the entire mark and only adds the word “reviews” and the gTLD “.com” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, a space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. The addition of generic or descriptive words does not adequately distinguish a domain name from a complainant’s mark in Policy ¶4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). In this case, the domain name at issue does not contain any reviews of Complainant’s products (although Respondent claims to specialize in such products under the “services” section of the website according to Complainant’s complaint). Respondent’s domain name is confusingly similar to the RENEWAL BY ANDERSEN mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 claims Respondent has no rights or legitimate interests in <renewalbyandersenreviews.com> because Respondent is not commonly known by the disputed domain name. In addition, Respondent has not been authorized by Complainant to use the RENEWAL BY ANDERSEN mark. The WHOIS information of record identifies Respondent as “Dennis McHugh” of “Clear Window Technology, Inc.” The WHOIS information and common sense can be used to determine a respondent is not commonly known by the disputed domain name. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶4(c)(ii).”). Respondent has submitted no evidence in support of this hypothetical contention (hypothetical because Respondent never raised it). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent’s failure to use the domain name for a bona fide offering of goods or services or legitimate non-commercial or fair use demonstrates Respondent’s lack of rights or legitimate interests in <renewalbyandersenreviews.com>. The disputed domain name redirects to Respondent’s website at <windowreplacementrepair.com>. It constitutes an attempt to divert consumers looking for Complainant’s mark. Diverting Internet users from Complainant to Respondent’s website for Respondent’s benefit 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. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”). Respondent has no rights or legitimate interests in the disputed domain name due to Respondent’s failure to make a bona fide offer of goods or services or a legitimate non-commercial or fair use.
Respondent is a former dealer of Complaint. According to the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), a reseller has a limited right to use the trademarks of others so long as all of certain criteria are met. In the current situation, Respondent fails to meet all of these criteria.
Under the Oki Data decision,” the offering must meet the following requirements to be bona fide:
· Respondent must actually be offering the goods or services at issue; AND
· Respondent must use the site to sell only the trademarked goods; AND
· The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; AND
· The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In this case, Respondent isn’t selling Complainant’s windows (at least not according to the website, this the Panel independently visited). Respondent isn’t selling any of Complainant’s goods (much less ONLY Complainant’s goods). Respondent is not accurately disclosing its relationship with Complainant (although Respondent’s website disclaims any relationship to Complainant (and a wide variety of other manufacturers) at the bottom of a fairly long website landing page). Under the services page as reviewed by the Panel online, Respondent claims to be a certified Andersen installer (which isn’t true). Respondent has no rights under Oki Data Americas, Inc.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s diversion of traffic to its own competing website for commercial gain shows bad faith under Policy ¶¶4(b)(iii) and (iv). Respondent’s <renewalbyandersenreviews.com> redirects to a website selling competing window replacement and repair services. Using a domain name to advertise a competitor’s goods and services in an attempt to divert consumers and disrupt the complainant’s business constitutes bad faith under the Policy. See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶4(b)(iii)); see also Allianz of Am. Corp. v. Bond, FA 680624 (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). Respondent has engaged in bad faith registration and use under Policy ¶¶4(b)(iii) and (iv).
Complainant claims Respondent had actual knowledge of Complainant’s mark at the time of registration. Respondent has had numerous dealings with Complainant. Respondent used to be a RENEWAL BY ANDERSEN dealer. Respondent claims to be an Andersen windows specialist and a certified Andersen installer. None of this is true. Certainly Respondent is in the same area of commerce and Complainant’s mark is well known. Respondent had to know it was deliberately using Complainant’s mark. Respondent’s registration and use of the domain name was in bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <renewalbyandersenreviews.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, December 7, 2016
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