Southeastern Metals Manufacturing Company, Inc. v. Michael Peterson / new creation 2019
Claim Number: FA2201001980158
Complainant is Southeastern Metals Manufacturing Company, Inc. (“Complainant”), represented by Maureen Beacom Gorman of MB Gorman Law LLC, Illinois, USA. Respondent is Michael Peterson / new creation 2019 (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gutterhelmetofdallasfortworth.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.
Aaron B. Newell, ESQ as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 12, 2022; the Forum received payment on January 12, 2022.
On January 13, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gutterhelmetofdallasfortworth.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 January 19, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2022 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@gutterhelmetofdallasfortworth.com. Also on January 19, 2022, 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 February 14, 2022.
On 21 February 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Aaron B Newell as Panelist.
Two Procedural Orders were subsequently issued during the course of the proceedings:
(1) on 9 March 2022 having concluded that key aspects of the parties’ submissions were potentially unclear, the Panel asked for further information and clarification from the parties in respect of whether and how the Respondent may have understood it was authorized to register the domain name at issue. Complainant responded with a considered submission. Respondent did not reply.
(2) On 28 March 2022, noting that the Respondent had previously asserted that it no longer had an interest in the domain name and asked whether there was a way to conclude the proceedings and terminate the domain name, the Panel issued a second Procedural Order setting out the process for surrendering the domain name and providing one week for the Respondent to confirm unequivocally whether it agreed to termination of the proceedings by voluntary transfer of the domain name. The Respondent did not reply.
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 asserts that:
i) it owns the GUTTER HELMET trade mark, which is registered on the principal register in the United States under no 1531983 in class 19 for RAIN WATER GUTTER DEFLECTORS AND ASSOCIATED HARDWARE THEREFOR SOLD AS A UNIT THEREWITH (filed 30 November 1987, registered 28 March 1989);
ii) the GUTTER HELMET rain water deflector product is an award-winning product and makes up around 10% of the rainwater gutter market in the US;
iii) whilst the Respondent was in negotiations with Complainant to become a distributor of its GUTTER HELMET products in the Dallas-Fort Worth area, no arrangement was ever completed between the parties and ultimately Complainant decided against appointing Respondent as a distributor;
iv) Respondent never had express or implied authorization to register the domain name and, despite not being appointed by Complainant as a distributor for Complainant’s products, proceeded to register and use the domain name to market and promote unrelated roofing services and third party products and to hold itself out as a “certified installer” of the Complainant’s products when it was not;
v) only authorized dealers bound by contract are permitted by Complainant to use the GUTTER HELMET trade mark, including in domain names.
B. Respondent
Respondent submits that it registered the domain name during negotiations with Complainant to become an authorized dealer / distributor of Complainant’s GUTTER HELMET products, that it did so with the knowledge of two marketing professionals employed by Complainant, and that these same individuals assisted it in designing the layout for the website that it eventually used at the domain name.
Respondent admits to using the website and domain name to market and promote products that compete with the Complainant’s products and services relating to those competing products.
Respondent also made the following statement: “I have no desire to continue to use this domain. Is there a preemptive form to release and halt this complaint? Even though I feel they’ve acted in bad faith not I.”
C. Additional Submissions
No additional substantive submissions were filed aside from those mentioned above.
The Panel finds that:
i) Complainant is the owner of the trade mark registration as noted above;
ii) Complainant did not authorize Respondent to use the domain name and/or its GUTTER HELMET trade mark;
iii) Respondent has made misrepresentations at the domain name in respect of its relationship with Complainant and has used the domain name to market and promote products and services that compete with those of Complainant.
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.
The domain name is <gutterhelmetofdallasfortworth.com>.
The domain name is confusingly similar to the Complainant’s GUTTER HELMET registered trade mark.
The domain name refers specifically to and invokes Complainant’s GUTTER HELMET trade mark.
The addition of “of dallas fort worth” does nothing to distinguish it from the Complainant’s trade mark. Rather it obviously gives the impression that the domain name is used to represent Complainant’s operations in Dallas and Fort Worth.
Complainant has met the requirement under Policy Paragraph 4(a)(i).
At the time of registration of the domain name, Respondent was not authorized to use Complainant’s GUTTER HELMET trade mark and was not an authorized or “certified” installer or reseller of the products, contrary to how it promoted itself at the domain name. Rather, Respondent was attempting to secure these privileges from Complainant, but ultimately did not.
Respondent has not demonstrated otherwise. Respondent has conceded that it has “no desire” to continue to use the domain name.
Complainant has shifted the burden to Respondent to demonstrate any rights and/or legitimate interests in the domain name and Respondent has failed to do so.
Complainant has met the requirement under Policy Paragraph 4(a)(ii).
Regardless of Respondent’s assertions that representatives of the Complainant assisted it with its website, Respondent knew at all material times that it had not yet been appointed by Complainant as an authorized distributor and/or certified installer of Complainant’s products, or permitted to refer to itself as being the Complainant’s operations in Dallas-Fort Worth.
Despite this, Respondent registered the domain name and set up a website where it obviously falsely claimed to be “Gutter Helmet of Dallas Fort Worth” and a “certified installer” of Complainant’s products.
At this website it also promoted unrelated roofing products and services and, in due course, a third party product that directly competes with the Complainant’s products.
Further, Respondent persisted with this conduct despite numerous requests to cease from Complainant.
Respondent would or should have been aware at all material times that (1) the claims on the website as to its “certification” were untrue, (2) that it was not in fact “Gutter Helmet of Dallas-Fort Worth”, and (3) that it would not in any event have been authorized to promote unrelated or competing products and/or services by reference to Complainant’s GUTTER HELMET brand.
Respondent thereby appears to demonstrate a disregard for its negotiations with the Complainant and the Complainant’s rights, and to have intended to use the Complainant’s trade mark without authorization to promote its own independent business interests regardless of the conclusion of the negotiations with Complainant. Regardless of whether certain employees of Complainant were assisting Respondent with establishing its website, ultimately – even if these employees were unaware - Respondent knew at all times that the deal was not in fact done, but made a decision to do business as if it was and, further, to use the Complainant’s trade mark promote services that were unrelated to the Complainant.
The Panel finds that this is conduct that fits squarely within the description of “bad faith” under Policy 4 b) iv), ie
you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Specifically, for commercial gain the Respondent created a likelihood of confusion with the Complainant’s mark in respect of a) an affiliation of its services with the Complainant’s products when in fact there was none, and b) the endorsement and sponsorship of the Complainant when in fact there was no such sponsorship or endorsement.
The intention for commercial gain and likelihood of confusion were inherent at the time of registration of the domain name (Respondent was never “Gutter Helmet of Dallas-Fort Worth”) and persisted throughout the Respondent’s use of the domain name.
The requirements under Policy Paragraph 4(a)(iii) are therefore met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gutterhelmetofdallasfortworth.com> domain name be TRANSFERRED from Respondent to Complainant.
Aaron B Newell, ESQ, Panelist
Dated: April 12, 2022
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