Andersen Corporation v. Wambuga Nelson
Claim Number: FA2111001973368
Complainant is Andersen Corporation (“Complainant”), represented by Lindsay M.R. Jones of Merchant & Gould, P.C., Minnesota, USA. Respondent is Wambuga Nelson (“Respondent”), Uganda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <andersenwindowscorp.com>, registered with NameCheap, Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 15, 2021; the Forum received payment on November 15, 2021.
On November 15, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <andersenwindowscorp.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 November 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 2021 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@andersenwindowscorp.com. Also on November 16, 2021, 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 December 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant is an international window and door manufacturing enterprise with more than thirty manufacturing facilities, logistics centers, and company owned retail locations worldwide.
Complainant has rights in the ANDERSEN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <andersenwindowscorp.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the ANDERSEN mark in its entirety and merely adding the terms “windows” and “corp” and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <andersenwindowscorp.com> domain name. Respondent is not commonly known by the at-issue domain name and Complainant has not authorized or licensed Respondent any rights in the ANDERSEN mark. Additionally, Respondent does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the domain name is used to offer competing services. Respondent also uses the domain name to pass itself off as Complainant via email communications.
Respondent registered and uses the <andersenwindowscorp.com> domain name in bad faith. Respondent registered the at-issue domain name in order to disrupt Complainant’s business and divert customers for commercial gain. Additionally, Respondent uses the disputed domain name to further a phishing scheme. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ANDERSEN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ANDERSEN trademarks.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the ANDERSEN trademarks.
Respondent uses the at-issue domain name to pass itself off as Complainant via email and otherwise and to address a website offering competing services, all in furtherance of fraud.
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 shows that it has a USPTO registration for its ANDERSEN trademark. Such registration is sufficient to demonstrate Complainant’s rights in the ANDERSEN mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <andersenwindowscorp.com> domain name contains Complainant’s ANDERSEN trademark, followed by the terms “windows” and “corp,” with all followed by the top-level domain name, “.com.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <andersenwindowscorp.com> domain name from the ANDERSEN trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <andersenwindowscorp.com> domain name is confusingly similar to Complainant’s trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue 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 <andersenwindowscorp.com> identifies the domain name’s registrant as “Wambuga Nelson” and the record before the Panel contains no evidence showing that Respondent is commonly known by the <andersenwindowscorp.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <andersenwindowscorp.com> domain name for the purposes of 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, Respondent uses <andersenwindowscorp.com> to pass itself off as Complainant in furtherance of diverting internet users to Respondent’s <andersenwindowscorp.com> website. The website, which mimics Complainant’s official website, purports to offer products for sale that compete with those products offered by Complainant. Respondent’s use the of the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). Likewise, Respondent’s use of the at-issue domain name to host email and thereby pass itself off as Complainant is also neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). Notably, Respondent uses the <andersenwindowscorp.com> in an email address that pretends to be from a representative of Complainant. By tricking potential customers of Complainant into believing they are communicating with Complainant, Respondent seeks to defraud such parties into turning over funds to Respondent. Disguised as Complainant, Respondent may defraud third parties into providing it with goods or services on terms that will allow Respondent to receive such products or services without ever actually having to pay for them. See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent uses the confusingly similar <andersenwindowscorp.com> domain name to address a website offering (or purporting to offer) products that are in competition with Complainant’s products. Using a confusingly similar domain name in such manner is disruptive to Complainant’s business and falsely indicates that there is a sanctioned relationship between Complainant and Respondent when there is no such relationship. Such use of the domain name demonstrates Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Twitter v. Domain Admin, FA 1607451 (Forum Apr. 2, 2015) (“Respondent’s use of the domain name disrupted Complainant’s business and misappropriated the trademark value of Complainant’s mark to wrangle visitors to its website thereby demonstrating Respondent’s bad faith registration and use of the name pursuant to Policy ¶ 4(b)(iii).”); see also, Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum July 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).”).
Next and as also mentioned above regarding rights and legitimate interest, Respondent uses the <andersenwindowscorp.com> domain name to further a scam whereby Respondent steals Complainant’s identity to commit fraud. Respondent sends emails to third parties where said emails have their domain part hosted by the confusingly similar <andersenwindowscorp.com> domain name, and have as their local part the misappropriated name of one of Complainant’s employees. Third parties are thus duped into believing they are dealing with Complainant, when they are not. Pretending to be Complainant, Respondent may then cajole a targeted third party into remitting funds to Respondent or otherwise dealing with Respondent to Respondent’s advantage. See SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (Forum Oct. 29, 2014) (“The Panel finds that Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”).
Furthermore, Respondent had actual knowledge of Complainant’s rights in the ANDERSEN mark when it registered <andersenwindowscorp.com> as a domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark; from Respondent’s use of Complainant’s trademark and other intellectual property on the <andersenwindowscorp.com> website; from the inclusion of the suggestive terms “windows” and “corp” in the at-issue domain name; and from Respondent’s use of the <andersenwindowscorp.com> domain name and website in furtherance of identity theft and fraud as discussed elsewhere herein. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows Respondent’s bad faith registration and use of <andersenwindowscorp.com> pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <andersenwindowscorp.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 13, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page