Vulcan Materials Company v. Milen Radumilo
Claim Number: FA2210002014590
Complainant is Vulcan Materials Company (“Complainant”), represented by Jake M. Gipson of Bradley Arant Boult Cummings LLP, US. Respondent is Milen Radumilo (“Respondent”), RO.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vulcan-materials.com>, registered with Tucows Domains 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to Forum electronically on October 4, 2022; Forum received payment on October 4, 2022.
On October 4, 2022, Tucows Domains Inc. confirmed by e-mail to Forum that the <vulcan-materials.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 October 4, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 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@vulcan-materials.com. Also on October 4, 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On October 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Bruce E. Meyerson as Panelist (the “Panel”).
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
(1) Complainant, Vulcan Materials Company, offers construction materials and related products. Complainant has rights in the VULCAN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,730,991 registered April 23, 2019).
(2) Respondent’s <vulcan-materials.com>[1] domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the VULCAN mark in its entirety and adds the term “materials”, a hyphen, and the “.com” generic top-level domain (“gTLD”).
(3) Respondent has no legitimate interests in the <vulcan-materials.com> domain name. Respondent is not commonly known by the domain name and Complainant has not authorized or licensed Respondent any rights in the VULCAN mark.
(4) Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the domain name resolves to a webpage with various unrelated third party pay-per-click links.
(5) Respondent also holds the webpage out for sale to the public.
(6) Respondent registered and uses the <vulcan-materials.com> domain name in bad faith. Respondent offers the webpage for sale. Respondent registered the domain name in order to divert customers for commercial gain.
(7) Respondent registered the domain name in order to participate in phishing.
(8) Finally, Respondent makes use of a privacy service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the VULCAN mark. Respondent’s domain name is confusingly similar to Complainant’s VULCAN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <vulcan-materials.com> domain name and that Respondent registered and uses the domain name 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 asserts rights in the VULCAN mark based upon the registration of the mark with the USPTO (e.g., Reg. No. 5,730,991 registered April 23, 2019). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). As Complainant provides evidence of registration of the VULCAN mark with the USPTO, the Panel holds that the Complainant has rights in the mark under Policy 4(a)(i).
Complainant argues Respondent’s <vulcan-materials.com> domain name is identical or confusingly similar to Complainant’s VULCAN mark. The addition of a gTLD, a hyphen, and a descriptive term fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). The <vulcan-materials.com> domain name contains the VULCAN mark in its entirety while adding in the term “materials”, a hyphen, and the “.com” gTLD. Therefore, the <vulcan-materials.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <vulcan-materials.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.) The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent lacks rights or legitimate interests in the <vulcan-materials.com> domain name since Respondent is not commonly known by the domain name and Complainant has not authorized or licensed to Respondent any rights in the VULCAN mark. WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by a domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS information for the <vulcan-materials.com> domain name lists the registrant as “Milen Radumilo”. Complainant further asserts, without contradiction in the record, it has not licensed or otherwise authorized Respondent to use Complainant’s VULCAN mark. Therefore, the Panel holds that Respondent is not commonly known by the <vulcan-materials.com> domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <vulcan-materials.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the domain name instead resolves to a page displaying links related and unrelated to the goods and services associated with Complainant and its competitors. Where a respondent uses a domain to redirect users to competing services or third party services, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows 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).”). Here, Complainant provides evidence of that the <vulcan-materials.com> domain name resolving to a page displaying pay-per-click third party links. Therefore, the Panel holds that Respondent fails to use the <vulcan-materials.com> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <vulcan-materials.com> domain name in bad faith because Respondent attempts to take advantage of confusion with Complainant’s well-known mark and attract Internet users to Respondent’s competing website for commercial gain. Use of a domain name that is confusingly similar to a well-known mark can be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”). In addition, use of a domain name incorporating the mark of another to redirect consumers to competing goods or services can be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides evidence of the <vulcan-materials.com> domain name resolving to a page displaying pay-per-click third party links. Therefore, Respondent registered and uses the <vulcan-materials.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant further contends that, because Respondent made use of a privacy service, Respondent has demonstrated bad faith registration and use. Use of a privacy service may be considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). Complainant provides evidence of Respondent’s use of a privacy shield. Because the Panel agrees, the Panel holds that Respondent’s registration and use of the <vulcan-materials.com> domain name is in bad faith, pursuant to Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vulcan-materials.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 8, 2022
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