Trex Company, Inc. v. Andrew Hulette / KentuckyLights.com
Claim Number: FA1907001853949
Complainant is Trex Company, Inc. (“Complainant”), represented by Lois B. Duquette of McNees Wallace & Nurick LLC, Virginia, USA. Respondent is Andrew Hulette / KentuckyLights.com (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lexingtontrexdecks.com>, <mytrexdecks.com>, and <decksintrex.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 25, 2019; the Forum received payment on July 25, 2019.
On July 26, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lexingtontrexdecks.com>, <mytrexdecks.com>, and <decksintrex.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 August 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 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@lexingtontrexdecks.com, postmaster@mytrexdecks.com, postmaster@decksintrex.com. Also on August 1, 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 August 22, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
On August 23, 2019, the Panel issued an Order For Additional Submissions And Extending Time For Rendering A Decision. On August 26, 2019, Complainant submitted the requested additional evidence.
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
Complainant has rights in the trademark TREX through its use in commerce since 1993 and its registration in various jurisdictions around the world, including with the United States Patent and Trademark Office (“USPTO”) dating back to 1995. Respondent’s <lexingtontrexdecks.com>, <mytrexdecks.com>, and <decksintrex.com> domain names, each registered on May 30, 2011, are confusingly similar to Complainant’s TREX mark. Respondent incorporates Complainant TREX mark in its entirety and adds the terms “Lexington,” “decks,” and/or “my” in creating the domain names.
Respondent has no rights or legitimate interests in the <lexingtontrexdecks.com>, <mytrexdecks.com>, and <decksintrex.com> domain names as Respondent is not commonly known by the disputed domain name. Respondent fails to make a bona fide offering of goods and services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to offer products and services that compete with Complainant.
Respondent registered and used the disputed domain name in bad faith by using the <lexingtontrexdecks.com>, <mytrexdecks.com>, and <decksintrex.com> domain names to resolve to a webpage that offers competing products and services. Respondent also failed to respond to Complainant’s cease and desist letter. Finally, Respondent had knowledge of Complainant’s rights in the TREX mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Complainant submitted screenshots of the website to which the disputed domain names resolve.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 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.
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 TREX mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a 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 copies of its USPTO registrations for the TREX mark. Therefore, the Panel finds that Complainant has adequately shown rights in the TREX mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <lexingtontrexdecks.com>, <mytrexdecks.com>, and <decksintrex.com> domain names are confusingly similar to Complainant’s TREX mark. Registration of a domain name that contains a fully formed mark and adds generic terms related to the complainant’s line of business typically does not distinguish the disputed domain name form the mark per Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”). Here, Complainant has pointed out that Respondent incorporates Complainant TREX mark in its entirety and adds the terms “Lexington,” “decks,” or “my” in creating the domain names. While Complainant does not argue this, the addition of a generic top-level domain (“gTLD”) is irrelevant when determine confusingly similarity. See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). Here, Respondent has added the “.com” gTLD in the disputed domain names. Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s TREX mark per the threshold standard of Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent lacks rights or legitimate interest in the <lexingtontrexdecks.com>, <mytrexdecks.com>, and <decksintrex.com> domain names as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the TREX 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)(ii). 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 “Andy Hulette / KentuckyLights.com” and there is no evidence to suggest that Respondent is known otherwise, that it was authorized to use the TREX mark in the disputed domain names, or that it is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, and while Respondent does, in fact, incorporate some of Complainant’s TREX branded products into its services, it also uses the disputed domain names to offer products that compete with Complainant. Use of a disputed domain name to resolve to a webpage that offers competing services or products is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“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).”) Here, Complainant states that Respondent’s <lexingtontrexdecks.com>, <mytrexdecks.com>, and <decksintrex.com> domain names resolve to a webpage that offers competing services and products. Even though Respondent does offer some services that incorporate TREX products, use of the disputed domain names to also provide competitive products and services runs afoul of the seminal test set out in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO, November 6, 2001). Therefore, on the evidence before it, 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)(i) or (iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the TREX mark prior to registration of the <lexingtontrexdecks.com>, <mytrexdecks.com>, and <decksintrex.com> domain names. Actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to inform consideration of the bad faith inquiry under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) Registration of a disputed domain name that incorporates a well-known mark may also be evidence of actual knowledge per Policy ¶ 4(a)(iii). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Here, Complainant has provided evidence of its trademark registrations for the TREX mark that date back prior to the date on which Respondent registered its disputed domain names but it does not otherwise provide any evidence concerning the reputation of its TREK mark. Nevertheless, Respondent’s website makes numerous mentions of the mark in the context of offering deck building services. Therefore, the Panel finds that Respondent registered the disputed domain names with actual knowledge of Complainant’s mark and that this creates a foundation upon which to build a finding of bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant then argues that Respondent registered and uses the <lexingtontrexdecks.com>, <mytrexdecks.com>, and <decksintrex.com> domain names in bad faith by resolving the disputed domain names to a competing webpage. Use of a disputed domain name to resolve to a website that offers competing products and services may be evidence of bad faith registration and use per Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”) Here, Complainant provides evidence that Respondent’s disputed domain names all redirect users to a different website displaying the name Deckadent Designs. This website, which is also owned by Respondent, claims to offer deck building services using Complainant’s TREX branded products but it also offers competing services and products. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iv) based upon the evidence that it is using them to promote competing products and services for commercial gain.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lexingtontrexdecks.com>, <mytrexdecks.com>, and <decksintrex.com> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 26, 2019
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