Panda Windows and Doors v. Deonnetti De Antoni
Claim Number: FA0603000654768
Complainant is Panda Windows and Doors (“Complainant”), represented by Christopher Nichols, 5032 Cecile Ave, Las Vegas, NV 89131. Respondent is Deonnetti De Antoni (“Respondent”), P.O. Box 73428, San Clemente, CA 92673.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <pandawindows.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 8, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 14, 2006.
On March 10, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <pandawindows.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 March 22, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 11, 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@pandawindows.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 17, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <pandawindows.com> domain name is confusingly similar to Complainant’s PANDA WINDOWS & DOORS mark.
2. Respondent does not have any rights or legitimate interests in the <pandawindows.com> domain name.
3. Respondent registered and used the <pandawindows.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Panda Windows and Doors, has been manufacturing, marketing and selling windows and doors for eighteen years under the PANDA WINDOWS & DOORS mark. Complainant also maintains a website at the <panda-windows.com> domain name (registered October 1, 2002). Complainant has filed for a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Serial No. 78,705,948 filed September 2, 2005) for the PANDA WINDOWS AND DOORS mark, which is still pending.
Respondent registered the disputed domain name on April 29, 2005. Respondent is using the disputed domain name to redirect Internet users to its own website at the <deonnetti.com> domain name, where it offers the same door application that Complainant manufactures under the PANDA WINDOWS & DOORS mark.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant is not
required to own a trademark registration to establish rights in the PANDA
WINDOWS & DOORS mark under Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish
between registered and unregistered trademarks and service marks in the context
of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”); see also SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist).
Complainant has established common law rights in the PANDA
WINDOWS & DOORS mark through continuous and extensive use of the mark in
connection with its windows and doors business for the past eighteen
years. Therefore, the Panel finds that
Complainant’s PANDA WINDOWS & DOORS mark has acquired secondary meaning
sufficient to establish common law rights in the mark. See
Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding
common law rights in a mark where its use was continuous and ongoing, and
secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001)
(“[O]n account of long and substantial use of [KEPPEL BANK] in connection with
its banking business, it has acquired rights under the common law.”).
Respondent’s <pandawindows.com> domain name is confusingly similar to Complainant’s PANDA WINDOWS & DOORS mark under Policy ¶ 4(a)(i), because it includes the predominant terms of the mark and merely omits the ampersand and the term “doors.” In Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000), the panel found that the <asprey.com> domain name was confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks despite the omission of terms from the marks. Therefore, Respondent’s omission of terms from Complainant’s PANDA WINDOWS & DOORS mark does not sufficiently distinguish the name from the mark pursuant to Policy ¶ 4(a)(i). See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <pandawindows.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights to or legitimate interests in the <pandawindows.com>
name. See Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent has no rights or legitimate interests in the
domain name because the respondent never submitted a response or provided the
panel with evidence to suggest otherwise); see also Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in
its failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”). However, the Panel will now examine the record to determine if
Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Deonnetti De Antoni,” and there is no other evidence in the record suggesting that Respondent is commonly known by the <pandawindows.com> domain name. As a result, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Moreover, Respondent’s <pandawindows.com>
domain name, which is confusingly similar to Complainant’s PANDA WINDOWS &
DOORS mark, resolves to a website selling products that compete with
Complainant. In Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003), respondent
registered the <wwwzyban.com> domain name and was redirecting Internet
users to a pharmaceutical site offering products that competed with
Complainant. The panel held that the
respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii). Id. Therefore, Respondent’s use of the
disputed domain name to misdirect Internet users to its own competing website
for commercial gain does not constitute a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use of the domain name pursuant to Policy ¶ 4(c)(iii). See Ultimate
Elecs., Inc. v. Nichols, FA 195683 (Nat.
Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain
name (and Complainant’s mark) to sell products in competition with Complainant
demonstrates neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the name”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Because Respondent is using a domain name confusingly
similar to Complainant’s PANDA WINDOWS & DOORS mark to operate a competing
commercial website, Respondent has registered the <pandawindows.com>
domain name for the primary purpose of disrupting Complainant’s business
pursuant to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters,
D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive
relationship between the complainant and the respondent, the respondent likely
registered the contested domain name with the intent to disrupt the
complainant's business and create user confusion); see also S.
Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered
the domain name in question to disrupt the business of the complainant, a
competitor of the respondent).
Furthermore, Respondent has registered and is using the <pandawindows.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because Respondent is
attempting to attract, for commercial gain, Internet users to its own website
where it sells products that compete with Complainant. In Busy Body, Inc. v. Fitness Outlet, Inc.,
D2000-0127 (WIPO Apr. 22, 2000), the panel found that the respondent registered
and was using the <efitnesswarehouse.com> domain name in bad faith
because it was in the same line of business as the complainant, which had
registered the FITNESS WAREHOUSE mark with the USPTO, and was attempting to
attract complainant’s customers to its own website for commercial gain. Likewise,
Respondent, who is in the same line of business as Complainant, is taking
advantage of the confusing similarity between the domain name and Complainant’s
PANDA WINDOWS & DOORS mark in order to profit from the goodwill associated
with the mark in violation of Policy ¶ 4(b)(iv). See Nokia Corp. v.
Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and
use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website
that offered similar products as those sold under the complainant’s famous
mark).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pandawindows.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 1, 2006
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