Keystone Retaining Wall Systems, Inc. v. 672Domain 672Administrator
Claim Number: FA0604000680859
Complainant is Keystone Retaining Wall Systems, Inc. (“Complainant”), represented by Elizabeth C. Buckingham, of Dorsey & Whitney LLP, 50 South Sixth Street, Suite 1500, Minneapolis, MN 55402-1498. Respondent is 672Domain 672Administrator (“Respondent”), WV 672, CU 53857.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <keystonewall.com>, registered with Enom, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 18, 2006.
On April 17, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <keystonewall.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 April 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 9, 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@keystonewall.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 17, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant has used the KEYSTONE RETAINING WALL SYSTEMS mark in connection with the development, marketing and selling of modular concrete blocks, retaining walls and other landscaping products continuously since 1985.
Complainant owns thirty-seven trademark applications and registrations worldwide for variations of the KEYSTONE mark, and, in particular, Complainant has registered the KEYSTONE RETAINING WALL SYSTEMS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,468,614 issued July 17, 2001).
Complainant registered the <keystonewalls.com> domain name on September 20, 1996.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent registered the <keystonewall.com> domain name on December 26, 2004.
Respondent is using the disputed domain name to operate an adult-oriented website.
Respondent’s <keystonewall.com> domain name is confusingly similar to Complainant’s KEYSTONE RETAINING WALL SYSTEMS mark.
Respondent does not have any rights or legitimate interests in the <keystonewall.com> domain name.
Respondent registered and uses the <keystonewall.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. 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 established rights in the KEYSTONE RETAINING
WALL SYSTEMS mark pursuant to Policy ¶ 4(a)(i) by registering the mark with the
USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.” See also Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a
mark be registered in the country in which a respondent operates, it being
sufficient that a complainant can demonstrate registration of its mark in some
jurisdiction).
Complainant asserts that Respondent’s <keystonewall.com> domain name is confusingly similar to Complainant’s KEYSTONE RETAINING WALL SYSTEMS mark pursuant to Policy ¶ 4(a)(i), and Respondent does not deny this allegation. We agree with Complainant’s contention because the contested domain name includes the predominant elements of the mark and merely omits the terms “retaining” and “systems.” On the point, see In WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001), where a panel found the <westjets.com> domain name to be confusingly similar to a complainant’s WEST JET AIR CENTER mark despite the omission of two terms from the mark. Therefore, Respondent does not sufficiently differentiate the domain name <keystonewall.com> from Complainant’s KEYSTONE RETAINING WALL SYSTEMS mark by omitting two terms from the mark. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <keystonewall.com> domain name. Complainant must first make a prima facie case in support of its allegations. The burden then shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts
to Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
See also Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that once a complainant asserts that a 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.”)
Respondent’s failure to answer the Complaint thus raises a
presumption that Respondent lacks rights or legitimate interests in the <keystonewall.com>
domain name. See Geocities v.
Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that a respondent
has no rights or legitimate interests in a domain name because the respondent
never submitted a response or provided the panel with evidence to suggest
otherwise); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, a
respondent has failed to invoke any circumstance which could demonstrate rights
or legitimate interests in a domain name).
However, the Panel will nonetheless examine
the record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
There is no evidence in the record of this proceeding
indicating that Respondent is commonly known by the <keystonewall.com>
domain name. Respondent has registered
the domain name under the name “672Domain 672Administrator.” Moreover it is
undisputed that Complainant has not authorized or licensed Respondent to
register a domain name incorporating its KEYSTONE RETAINING WALL SYSTEMS mark
or any variation. As a result,
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Great S.
Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that a respondent was
not commonly known by the domain name <greatsouthernwood.com> where the
respondent linked the domain name to <bestoftheweb.com>); see also 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).
Moreover, Respondent is using the <keystonewall.com> domain name, which is confusingly similar to Complainant’s KEYSTONE RETAINING WALL SYSTEMS mark, in order to operate an adult-oriented website. In Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), a panel found that a respondent’s diversionary use of the <isleworthcountryclub.com> website to misdirect Internet users seeking the complainant’s ISLEWORTH mark to adult-oriented websites did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Because Respondent is also diverting Internet users to a website displaying adult-oriented content, Respondent’s use of the disputed domain name does not represent 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). See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to a pornographic website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <keystonewall.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because the disputed domain name includes the critical portions of Complainant’s KEYSTONE RETAINING WALL SYSTEMS mark and resolves to an adult-oriented website with links to pay-per-view adult websites. The Panel infers that Respondent receives click-through fees for each consumer it diverts to other adult websites. In Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003), a respondent registered the <holidayinnakron.com> domain name and linked it to a pornographic website. The panel noted that, “[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.” Id. Therefore, Respondent’s diversionary use of the disputed domain name to operate an adult-oriented website for its own commercial gain provides evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that, absent contrary evidence, linking contested domain names to graphic, adult-oriented websites is evidence of bad faith).
In addition, it appears that Respondent registered the
contested domain name with either actual or constructive knowledge of
Complainant’s rights in the KEYSTONE RETAINING WALL SYSTEMS mark by virtue of
Complainant’s prior registration of that mark with the United States Patent and
Trademark Office. Registration of a
confusingly similar domain name despite such actual or constructive knowledge
evidences bad faith registration and use of the domain name pursuant to Policy
¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <keystonewall.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 31, 2006
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