Trex Company, Inc. v. Michael Thurston / Mike's Custom Deck Gates LLC
Claim Number: FA1907001852549
Complainant is Trex Company, Inc. (“Complainant”), represented by Lois B. Duquette of McNees Wallace & Nurick LLC, Pennsylvania, USA. Respondent is Michael Thurston / Mike's Custom Deck Gates LLC (“Respondent”), represented by Stephanie Furgang Adwar of Furgang & Adwar, LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trexdeckgates.com>, 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.
LUIZ EDGARD MONTAURY PIMENTA as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 17, 2019; the Forum received payment on July 17, 2019.
On July 18, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <trexdeckgates.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 July 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@trexdeckgates.com. Also on July 22, 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.
A timely Response was received and determined to be complete on August 12, 2019.
On August 16, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luiz Edgard Montaury Pimenta 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant the TREX trademark through its registrations with the United States Patents and Trademark office (“USPTO”) (eg. Reg. No. 1,881,449, registered Feb. 28, 1995), establishing its rights in the marks.
Complainants uses the TREX marks in connection with a wide variety of goods including gates, composite lumber consisting of encapsulated wood fiber in a polymer matrix, composite building materials comprising wood fiber and polymer, etc.
Respondent’s <trexdeckgates.com> domain name (registered on May, 13, 2012) is confusingly similar to Complainant’s TREX mark as Respondent incorporates the mark, along with the term “deckgates” and adds the generic top-level domain (“gTLD”) “.com” to the domain name.
Respondent has no right or legitimate interests in the disputed domain name. Respondent is not commonly known by any trademarks that would suggest rights in the disputed domain names. Furthermore, Respondent uses the disputed domain name to directly compete with Complainant’s business. Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or business names and has not permitted the Respondent to apply for or use any domain name incorporating its trademarks.
Respondent registered and uses the <trexdeckgates.com> domain name in bad faith. Respondent uses the disputed domain name to attract, for commercial gain, users to the disputed domain name by directly competing with Complainant. Furthermore, Respondent failed to respond to Complainant’s cease and desist letters.
B. Respondent
Respondent owns and has operated Mike’s Custom Deck Gates, LLC (“MCDG”) since 2012 to provide design and installation of custom deck gates using Complainant’s product. Respondent concedes that the <trexdeckgates.com> domain name is confusingly similar to Complainant’s TREX mark.
Respondent alleges that it has rights and legitimate interests in the domain name under dispute, since it has used the disputed domain name for the past seven years to install gates using Complainant’s products. Respondent also informs that the trademark TREX is used to identify the materials used to construct the deck gates, a product that Complainant does not even sell. Respondent affirms that this use would constitute nominative fair use. Respondent adds that Complainant was aware of Respondent’s use of the disputed domain name and has no objected to Respondent’s use of the TREX mark.
Respondent did not register or use the disputed domain name in bad faith and Complainant has failed to argue that Respondent intends to sell the domain name, displays a pattern of bad faith, nor attempts to disrupt Complainant’s business.
The Complainant, TREX COMPANY INC, is the leading recycled materials manufacturer of wood-alternative decking, railings and other outdoor items. The Company was founded more than 20 years ago and owns manufacturing facilities in several States of the USA and the company’s products are sold in 29 countries.
The Complainant has used the mark TREX since at least 1996 and Respondent has registered the domain name on May, 13, 2012.
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.
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Panel finds that Complainant registrations before the USPTO is enough to establish its rights upon the mark. (e.g., Reg. No. 1,881,449, registered Feb. 28, 1995). See Compl. Annex A. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
As a matter of fact, the disputed domain name reproduces Complainant’s mark in full, with the mere addition of the term “deckgates” and the generic top-level domain “.com” which are not sufficient to avoid confusion. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The Panel may therefore determine the <trexdeckgates.com> domain name is confusingly similar to the TREX mark per Policy ¶ 4(a)(i).
Thus, the Panel finds that paragraph 4(a)(i) has been satisfied.
Based on the evidence submitted, the Panel verifies that Respondent has no rights or legitimate interests in the disputed domain name, is not commonly known by the disputed domain name nor by Complainant’s TREX trademark.
Moreover, Respondent’s lack of rights or legitimate interests in the disputed domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the name resolves to a competing website. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel therefore concludes that Complainant’s contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name under Policy ¶ 4(a)(ii).
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder’s website or location.
Complainant argues that Respondent is using the disputed domain name to compete with Complainant’s business and Respondent registered and used the domain name in bad faith.
In addition, the use of a domain name to compete complainant’s business is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Finally, the Panel concludes that Respondent’s use of privacy services are further indications of bad faith in the present case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trexdeckgates.com> domain name be TRANSFERRED from Respondent to Complainant.
LUIZ EDGARD MONTAURY PIMENTA, Panelist
Dated: August 30, 2019
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