EMCO Enterprises, Inc. v. Domain's
Administration
Claim Number: FA0601000624378
PARTIES
Complainant is EMCO Enterprises, Inc. (“Complainant”), represented by Randel S. Springer, of Womble Carlyle Sandridge & Rice, PLLC, One West Fourth Street, Winston-Salem, NC 27101. Respondent is Domain's Administration (“Respondent”), GPO Box 221, Central, HK.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed Domain Name is <emco.com>,
registered with Enom, Inc. (“Enom”).
PANEL
The undersigned, David H Tatham, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(“the NAF”) electronically on January 10, 2006; the NAF received a hard copy of
the Complaint on January 13, 2006.
On January 10, 2006, Enom confirmed by e-mail to the NAF that the
disputed Domain Name was registered with them and that the Respondent was the
current registrant of the name. Enom
has verified that Respondent is bound by the Enom registration agreement and
has thereby agreed to resolve Domain Name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On January 13, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 2, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@emco.com by e-mail.
A timely Response was received and determined to be complete on January
31, 2006.
On February 6, 2006 an Additional Submission was received from
Complainant and was deemed to have been timely filed in compliance with the
NAF’s Supplemental Rule 7.
On February 6, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the NAF
appointed David H. Tatham as Panelist.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from
Respondent to Complainant.
FACTUAL BACKGROUND
Complainant
Complainant is the owner of two U.S. trademark registrations, copies of which were annexed to the Complaint –
No. 2,421,429 EMCO for “metal doors and non-metal doors” registered as from January 16, 2001 but claiming use since February 1977, and
No. 2,707,441 FOREVER for “metal door screens, hardware for doors and windows, namely metal locks; metal entry doors” registered as from April 15, 2003 but claiming use since February 1977.
Complainant is a manufacturer of storm doors and it has been in that business for nearly 30 years. Complainant has used its EMCO and FOREVER trademarks in connection with metal and non-metal doors continuously since at least as early as 1977.
In addition, Complainant owns and uses the Domain Name <www.emcodoors.com> to promote its products, as was evidenced by an Annex to the Complaint consisting of two pages from Complainant’s website.
Respondent
Respondent has not provided any information
about itself.
PARTIES’ CONTENTIONS
Complainant
Complainant provided a copy of the WHOIS records to show that the disputed Domain Name is currently registered to Respondent, Domain’s Administration with a Post Office Box address in Hong Kong. Before the Complaint was filed, as can be seen from an Annex to the Complaint, a visitor to the disputed Domain Name was taken to a website which was a portal to a variety of links to websites offering storm doors. These links also included links to third party retailers such as Lowe’s and Home Depot which offer products in competition with those of the Complainant. Complainant points out that its EMCO trademark appears in multiple places on the website, and that the site also contains references to its FOREVER trademark.
Complainant further contends as follows –
A. The Domain Name Is Confusingly Similar to Complainant’s
Trademark.
The disputed Domain Name is legally equivalent and confusingly similar to Complainant’s EMCO mark. The fact that the disputed Domain Name adds the “.com” top level domain to Complainant’s trademark does not keep the Domain Name from being confusingly similar to Complainant’s mark. A number of panels applying the Policy have held that the addition of a top level domain, such as “.us,” “.com,” “.net,” or “.org,” to a trademark does not sufficiently differentiate the resulting Domain Name from the trademark, and that such a Domain Name is still confusingly similar to the incorporated trademark and Complainant referred to the Decision in VAT Holding AG v. vat.com, D2000-0607 (WIPO Sept. 11, 2000).
Because the disputed Domain Name consists of Complainant’s entire EMCO trademark, the Domain Name is confusingly similar to Complainant’s trademark.
B. Respondent Has No Rights or Legitimate Interests in the
Domain Name.
Respondent has no connection or affiliation with Complainant, and Complainant has not consented to Respondent’s use of the disputed Domain Name. Further, neither Respondent nor its business are known by the EMCO mark. Decisions applying the Policy have found that the fact that a Respondent is not known by a mark indicates that the Respondent has no rights in the mark and Complainant referred to the Decision in Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 17, 2000).
Moreover, Respondent’s use of the Domain Name to advertise competing products is not a bona fide offering of goods or services or a legitimate use under the Policy, and Complainant referred to the Decision in The American Heart Ass’n v. Whois Privacy Prot. Serv., FA 463122 (Nat. Arb. Forum May 31, 2005), which found that use of <americanheartassociation.com> to operate a search engine featuring health-related websites was not a bona fide offering of goods or services or legitimate use.
Consequently, Complainant asserts that Respondent has no legitimate rights or interest in the disputed Domain Name.
C. Respondent Has Registered and Is Using the Domain Name in Bad
Faith.
Paragraph 4(b) of the Policy sets forth a non-exclusive list of factors for determining bad faith. These factors include whether the Domain Name has been used to attract users to the Respondent’s website by creating a likelihood of confusion with the complainant’s mark for the respondent’s commercial gain.
Clearly, Respondent registered the Domain Name with the intent to divert users seeking information about Complainant’s goods to Respondent’s website. Respondent has registered a Domain Name consisting solely of the Complainant’s entire mark. Respondent has registered the Domain Name with the expectation that users seeking information about the Complainant from Complainant’s website will not type the additional word “doors.” Furthermore, the repeated use of Complainant’s EMCO and FOREVER trademarks throughout the site is a blatant attempt to mislead viewers to believe that the website is associated with Complainant. It can also be inferred that Respondent is using the Domain Name to profit by advertising various competing door retailers on its websites and Complainant referred to the Decision in Wilson v. Whois Privacy Prot. Serv., FA 417186 (Nat. Arb. Forum Mar. 29, 2005), which found that, “the Panel infers that Respondent receives click-through fees for diverting Internet users to various music related websites.” Complainant also referred to Yahoo! Inc. v. Whois Privacy Prot. Serv., FA 412705 (Nat. Arb. Forum Mar. 17, 2005), which found that, “the Panel infers that Respondent receives click-through fees in conjunction with its Internet search engine.”
Finally, Respondent’s constructive knowledge of Complainant’s EMCO mark prior to registration of the Domain Name further supports an inference of bad faith on the part of the Respondent. Complainant’s federal registration serves as constructive notice of its rights in the EMCO mark and Complainant referred to the Decisions in Pfizer, Inc. v. United Pharmacy, Ltd., D2001-0446 (WIPO June 25, 2001) and Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO April 18, 2000).
Consequently, Complainant asserts that the Respondent has
registered the Domain Name in bad faith.
Respondent
Respondent’s Response was short and
is reproduced below in full:
A. Respondent's registration
of the Domain Name predates the very creation of the Complainant's trademark.
1) Complainant's word trademark (EMCO) registration date is January 16,
2001 and filing date is February 22, 2000.
2) The Domain Name <emco.com> creation date was November 23,
1998. See ODE-Optimum Digital
Enters. v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) ("We are of the unanimous view that the
trademark must predate the Domain Name.").
B. Trademark owner in Country A is unable to
produce evidence that a Domain Name registrant in Country B would or should
have known of the fame of the mark.
1) Complainant and trademark owner is in USA and trademark mainly being
used in USA.
2) Respondent is in Hong Kong and has never heard of the trademark name
EMCO before this case. See Univ.
of Md. Univ. Coll. v. NUCOM Domain Name Brokers, D2002-0081 (WIPO Apr. 29,
2002) ("The case is no different from the many WIPO cases where a
trademark owner in Country A is unable to produce evidence from which a Panel
can infer that a Domain Name registrant in Country B would or should have known
of the fame of the mark.").
Based on the above two reasons, the Complainant cannot claim or prove that Respondent registered and used the Domain Name in bad faith. Therefore the Respondent should have the right to retain registration and use of the disputed Domain Name, <emco.com>.
Additional Submission
In its
Additional Submission, Complainant points out that neither of the two claims in
Respondent’s response is accurate.
A. Complainant’s Trademark Rights Substantially
Predate the “Creation” of the Domain Name.
Complainant has used its EMCO and FOREVER trademarks in commerce within
the United States in connection with storm doors since at least as early as
1977. Complainant has therefore, under
US law, established substantial common law rights in these trademarks long
before the disputed Domain Name was registered in 1998. Moreover the Policy does not require that the
trademark be registered prior to the registration of a disputed Domain Name –
and Complainant referred to a number of UDRP Decisions to this effect.
The ODE case relied upon by Respondent involved circumstances
that were completely distinct from this case.
In that case the Domain Name was registered in 1997, while Complainant
did not even begin to use its trademarks until 2000. Other Panels have transferred Domain Names in cases where the
Complainants trademark registrations were issued after the disputed Domain Name
was registered, provided the Complainant had established rights in those marks
that predated registration of the Domain Name, and Complainant cited AB
Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003). Thus, the fact that Complainant’s trademark
registrations issued after the disputed Domain Name was registered has no
bearing on whether Complainant “has rights” to the trademarks. Complainant’s trademarks were in use in the
USA for more than 20 years prior to the registration of the disputed Domain
Name and, as a consequence, Complainant has acquired substantial enforceable
rights in those marks long before Respondent registered the disputed Domain
Name.
B. Respondent’s Conduct Indicates That It had
Knowledge of Complainant and Its
Trademarks.
Respondent’s second claim is that no evidence was produced that it had
knowledge of Complainant’s trademark, and it could not have such knowledge
because it is located in Hong Kong.
In reply, Complainant contends, firstly, that the WHOIS record for the
disputed domain name apparently contains an inaccurate address so “it is far from clear that Respondent is in
fact located in Hong Kong.”
Secondly, prior to the filing of the Complaint, the website at the
disputed Domain Name included numerous references to Complainant’s trademarks
EMCO and FOREVER in connection with storm doors. In an effort to conceal its bad faith, Respondent has directed
the disputed Domain Name to the <google.com> site. Furthermore, because the trademarks EMCO and
FOREVER are distinctive of doors, it cannot be a coincidence that Respondent
chose to display prominently these two trademarks along with content relating
to storm doors and with links to retailers selling both Complainant’s products
as well as those of its competitors.
Thus, this demonstrates that Respondent is familiar with Complainant’s
trademarks and that its statement to the contrary is clearly false.
Thirdly, by registering a Domain Name which is identical to
Complainant’s trademark EMCO, and by linking it to a website containing
numerous references to that mark in connection with storm doors, (i.e. the very
same products which Complainant sells under its marks EMCO and FOREVER),
Respondent has acted in bad faith.
Fourthly, Respondent does not dispute that this name is identical to
Complainant’s trademark EMCO.
In conclusion, Complainant asserts that Respondent has not set forth
one legitimate reason for its registration and use of the disputed Domain Name.
DISCUSSION AND FINDINGS
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the Complainant must prove
each of the following three elements to obtain an order that a Domain Name
should be cancelled or transferred:
(i)
the Domain Name
registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(ii)
the Respondent
has no rights or legitimate interests in respect of the Domain Name; and
(iii)
the Domain Name
has been registered and is being used in bad faith.
Complainant has produced evidence of a
registration in the United States for the trademark EMCO. In the Complaint, Complainant only alleges
confusing similarity between this mark and the disputed Domain Name, but this
charge is upgraded to identicality in its Additional Submission. In the opinion of the Panel, there is no
doubt that Complainant’s mark is identical to the disputed Domain Name because,
when making a comparison between a trademark and a domain name, it is customary
in UDRP disputes to disregard a suffix such as “.com.”
Respondent has alleged that its rights
predate those of Complainant’s and implies that therefore the Complaint must
fail. On the face of it this claim is
correct as the disputed Domain Name was registered on November 23, 1998, and
registration of the trademark EMCO occurred just over 2 years later, on January
16, 2001. However the US trademark
system, unlike those in almost the whole of the rest of the world, is based on
use and no trademark can be registered in the United States unless it has been
used. As can be seen from the copy of
the registration certificate filed by Complainant, the EMCO trademark claimed
use since 1977 so, if the mark has been in continuous use since then, then
Complainant could have acquired substantial common law rights in the EMCO
name. Paragraph 4(a)(i) of the Policy
only requires that a Complainant should have “rights” in a trademark or service
mark and it is by now well established that these can be common law rights.
The “WIPO Overview of Panel Views on Selected
UDRP Questions” published in 2005 (“the WIPO Overview”) states that the
consensus view among Panelists is that in order to rely on common-law or
unregistered trademark rights a Complainant “must show that the name has become a distinctive identifier associated
with the complainant or its goods and services.” In this case, Complainant has only filed
copies of extracts from its website and no specific evidence showing actual use
of the name and trademark EMCO. However
the Panel has visited Complainant’s website and confirmed therefrom that
Complainant has clearly been in business for many years using the EMCO name to
sell its storm doors. Also, the
trademark registrations of these names both claim use since 1977 and, as the US
Patent & Trademark Office insists on seeing proof before accepting a claim
for prior use, Complainant must have filed such proof dating back to 1977.[1] Consequently, the Panel is prepared to
accept that Complainant has long-established rights in the EMCO name that
substantially pre-date the registration of the disputed Domain Name.
Thus, the Panel concludes that Policy ¶
4(a)(i) is proved.
It is well established that once a
Complainant has made out a prima facie
case, the burden shifts to a Respondent to establish that he does have rights
or legitimate interests in a disputed Domain Name.
Paragraph 4(c) of the Policy sets out 3
circumstances which could demonstrate that a Respondent has rights or a
legitimate interest in a disputed Domain Name, although these are not
exclusive.
In this case, Complainant has made out a
strong prima facie case, and in reply
Respondent alleges only that he had never heard of Complainant’s trademark
before registering his Domain Name, pointing out that he is located in Hong
Kong while Complainant is in the United States. Complainant contends that there is some doubt about Respondent’s
claim to reside in Hong Kong, but adduces no evidence for this assertion. The Panel can find no fault with
Respondent’s address on the WHOIS record, which is the same as in the
Complaint. Furthermore the NAF has not
supplied the Panel with any evidence that any of its communications to Respondent
were returned marked “not known.” Also,
a Response was filed so clearly Respondent did receive all the papers which
Complainant claims to have sent in accordance with ICANN Rule # 2(b). The Panel concludes therefore that the
Respondent’s claim to be in Hong Kong is correct.
Respondent’s claim that geography prevented
it from knowing of Complainant’s name and trademark conflicts with
Complainant’s contention that Respondent had constructive knowledge of its EMCO
trademark simply because it was registered.
On this latter point, the WIPO Overview states: “Most panels have declined to introduce the concept of constructive
notice into the UDRP” unless
(in a few cases) the parties were located in the same country. The Panel in this case is firmly on the side
of the majority in this and so rejects Complainant’s argument on this
point. Nevertheless there is much more
to be said for Complainant’s other contention regarding the remarkable
“coincidence” that even though Complainant is based in Iowa and Respondent in
Hong Kong, and so are separated by a distance of some 12,300 Kilometers,
Respondent is using a name which is identical to Complainant’s and which links
to a website that contains frequent references to Complainant’s products. It is inconceivable therefore that he hit
upon the name EMCO by chance, and in the view of the Panel there is absolutely
no justification for his claim to have rights or legitimate interests in the
disputed Domain Name. As evidenced by
one of the attachments to the Complaint, the website at the disputed Domain Name
at the time of the Complaint contained five references to Complainant’s
trademark EMCO and four references to its trademark FOREVER. Also, the website is wholly devoted to
doors, especially storm doors. These
are, if not Complainant’s only product, certainly their principle product. There is no indication that these references
were placed there as part of some automatic computer programme and not
deliberately by Respondent, so Respondent’s claim never to have heard of
Complainant has no basis in fact. As
the Panel can confirm, the disputed Domain Name now diverts all visitors to the
<google.com> website.
Respondent’s use of the disputed Domain Name
to redirect Internet users interested in Complainant’s products and services to
Respondent’s website is not a use in connection with a bona fide
offering of goods or services, or a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Dot Stop,
FA 145227 (Nat. Arb. Forum March 17, 2003)
(finding that the respondent’s diversionary use of the complainant’s
mark to attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use of the disputed
Domain Names); see also Computer Doctor
Franchise Sys., Inc. v. The Computer Doctor, FA 95396 (Nat. Arb. Forum
Sept. 8, 2000) (which found that the respondent’s website, which was blank but
for links to other websites, was not a legitimate use of the Domain Names).
Therefore the Panel concludes that the Domain
Name was registered, and is used, by Respondent with the purpose of
misdirecting Internet users seeking information either about storm doors or
about Complainant and so earning revenue from click-through fees. See Yahoo Inc. v. Whois Privacy Prot. Serv., Inc., FA 412705 (Nat. Arb. Forum March
17, 2005) (which found that use was not legitimate where Respondent received
click-through fees to advertise services that competed with those of
Complainant).
It is clear to the Panel that Respondent has
no rights or legitimate interests in the disputed Domain Name and he finds that
Policy ¶ 4(a)(ii) is proved.
Paragraph 4(b) of the Policy sets out 4
circumstances which could demonstrate that a Respondent has registered a
disputed Domain Name in bad faith.
In the opinion of the Panel, at least 2 of
them are obviously present in this case, namely:
1.
The disputed
Domain Name was registered with the prime intention of disrupting Complainant’s
business.
How else can one view a situation in which, as mentioned above,
Respondent has registered and is using a name which is identical to
Complainant’s mark and which links to a website that contains frequent
references to Complainant’s products.
This is in clear breach of the Policy.
For example, the Decision in G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002), found that the
respondent registered and used the Domain Name in bad faith because the
respondent was using the confusingly similar Domain Name to attract Internet
users to its commercial website. See
Perot Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2002) (which found bad faith where the Domain
Name in question was obviously connected with the complainant’s well-known
marks, thus creating a likelihood of confusion strictly for commercial gain); see
also eBay, Inc v. Progressive Life
Awareness Network, D2001-0068 (Nat. Arb. Forum Mar. 16, 2001) (which found
bad faith where the respondent was taking advantage of the recognition that
eBay has created for its mark and therefore profiting by diverting users
seeking the eBay website to the respondent’s site).
2.
The disputed
Domain Name has been used intentionally to attract, for commercial gain,
Internet users to the website at it by creating a likelihood of confusion with
Complainant’s trademark.
The Panel entirely agrees with Complainant when it said that Respondent has registered the Domain Name with the expectation that some users seeking information about the Complainant from Complainant’s website might fail to type the additional word “doors,” and that the repeated use of Complainant’s EMCO and FOREVER trademarks throughout the site is a blatant attempt to mislead viewers into believing that the website is associated with Complainant. See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (which found that the respondent acted in bad faith by attracting Internet users to a website that competed with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 13, 2000) (which found that the respondent diverted business from the complainant to a competitor’s website in violation of paragraph 4(b)(iii) of the Policy).
Consequently, the
Panel finds that Policy ¶ 4(a)(iii) is also proved.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emco.com>
Domain Name be TRANSFERRED from Respondent to Complainant.
David H Tatham, Panelist
Dated: February 20, 2006
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[1] In fact, the history of Complainant
on its website states that the name EMCO was adopted as early as “the 1950s”.