American Woodmark Corporation v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd
Claim Number: FA1906001850376
Complainant is American Woodmark Corporation (“Complainant”), represented by Pamela C. Gavin, Virginia, USA. Respondent is Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <woodmark.us> registered with GoDaddy.com, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 28, 2019; the Forum received payment on June 28, 2019.
On July 1, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <woodmark.us> 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 U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2019 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@woodmark.us. Also on July 8, 2019, 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 July 31, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
Complainant has manufactured and sold kitchen and bathroom cabinetry across the United States since its incorporation in 1980. Complainant has rights in the AMERICAN WOODMARK mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,025,364 registered Dec. 13, 2005). Complainant notes that WOODMARK is the dominant portion of the mark. Respondent’s <woodmark.us> domain name is confusingly similar to Complainant’s AMERICAN WOODMARK mark as the disputed domain name contains the dominant portion of the mark, WOODMARK.
Respondent has no rights or legitimate interests in respect of the <woodmark.us> domain name as Respondent is not licensed and has not obtained permission form Complainant to use its mark in the disputed domain name nor is Respondent commonly known by the disputed domain name. Further, Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to resolve to a parked webpage that offers links to competitors of Complainant. Respondent has also offered the disputed domain name for sale.
Respondent registered or used the <woodmark.us> domain name in bad faith by attempting to sell the disputed domain name. Respondent is attempting to attract consumers, for commercial gain, by offering links to competitors of Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <woodmark.us> domain name.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the AMERICAN WOODMARK mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the AMERICAN WOODMARK mark (e.g. Reg. No. 3,025,364 registered Dec. 13, 2005). Complainant also notes that WOODMARK is the dominant portion of the mark. The Panel finds that Complainant has adequately shown rights in the AMERICAN WOODMARK mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <woodmark.us> domain name is confusingly similar to Complainant’s AMERICAN WOODMARK mark as the disputed domain name contains the dominant portion of the mark, WOODMARK. Use of a disputed domain name that contains the dominant portion of a mark does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent contains the dominant portion of the marks and appends the term “inc” and a gTLD). The addition of a country-code top-level domain (ccTLD) is irrelevant when determining the confusingly similarity nature of a mark. See Thomson Reuters Global Resources v Matthew Krawitz, FA 1548336 (Forum Apr. 21, 2014) (“Respondent adds the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark in the disputed domain name, which also fails to distinguish the domain name from Complainant’s mark… Accordingly, the Panel finds that Respondent’s <rueters.co> domain name is confusingly similar to Complainant’s REUTERS mark.”). Here, Respondent incorporates the dominant portion of Complainant’s mark in the disputed domain name and also added the “.us” ccTLD when it registered the <woodmark.us> domain name. The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s AMERICAN WOODMARK per Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <woodmark.us> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the AMERICAN WOODMARK mark or register domain names using Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd.” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(iii).
There is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). The Panel finds that Respondent has no rights in a mark identical to the disputed domain name.
Complainant argues Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to resolve to a parked webpage that offers links to competitors of Complainant. Use of a disputed domain name to resolve to a parked webpage that offer links to competitors is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(ii) or (iv). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant.”) The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use. Complainant has provided a screenshot of Respondent’s domain name’s resolving webpage that shows a blank webpage with links to “RTA Cabinets” and “Cabinets and Cabinetry” which directly compete against Complainant’s products. The Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv).
Complainant further argues that Respondent’s attempts to sell the disputed domain name which is not a bona fide offering of goods or services or legitimate noncommercial or fair use. Attempts to sell a disputed domain name is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Here, Complainant has provided the panel with a screenshot that shows the disputed domain name being available for sale. The Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv) and Respondent has no legitimate rights or interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered or uses the <woodmark.us> domain name in bad faith by attempting to sell the disputed domain name. Attempts or offers to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Complainant has provided a screenshot that shows the disputed domain name available for sale. The Panel finds this is evidence that that Respondent registered or uses the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Complainant further argues that Respondent is attempting to attract consumers for commercial gain by offering links to competitors of Complainant for commercial gain. Use of a disputed domain name’s resolving webpage to host links to competitors to disrupt a complainant’s business for commercial gain may be evidence of bad faith per Policy ¶¶ 4(b)(iii) or (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). Here, Complainant has provided the Panel with a screenshot of Respondent’s domain name’s resolving webpage that appears to show a blank webpage with links to “RTA Cabinets” and “Cabinets and Cabinetry” which directly compete against Complainant’s products. The Panel finds from Complainant’s uncontested allegations and evidence that Respondent registered and uses the <woodmark.us> domain name in bad faith per Policy ¶ 4(b)(iii) or (iv).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <woodmark.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: August 2, 2019
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