BFS Brands, LLC v. Alans Roofing
Claim Number: FA0612000868916
Complainant is BFS Brands, LLC (“Complainant”), represented by Douglas
A. Rettew, of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P., 901 New York Avenue NW, Washington, DC 20001. Respondent is Alans Roofing (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <firestoneroofing.com>, registered with Network Solutions, 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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 14, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 15, 2006.
On December 14, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <firestoneroofing.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 December 18, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 8, 2007 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@firestoneroofing.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <firestoneroofing.com> domain name is confusingly similar to Complainant’s FIRESTONE mark.
2. Respondent does not have any rights or legitimate interests in the <firestoneroofing.com> domain name.
3. Respondent registered and used the <firestoneroofing.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BFS Brands, LLC, is a subsidiary of Bridgestone Americas Holding, Inc. (“Bridgestone”). In 1990, Bridgestone merged with The Firestone Tire and Rubber Company to become “Bridgestone Firestone.” One of its subsidiaries, Firestone Building Products Company, LLC, is a world leader in roofing products.
Complainant holds a trademark with the United States Patent and Trademark Office (“USPTO”) for its FIRESTONE mark (Reg. No. 140,804 issued March 29, 1921). Complainant received a subsequent trademark with the USPTO (Reg. No. 1,445,182 issued June 30, 1987) for its FIRESTONE mark to be used specifically in association with the promotion of its roofing materials and products. Complainant also registered the domain name <firestone.com> in 1996 to advertise and sell its products.
Respondent, Alans Roofing, registered the <firestoneroofing.com> domain name on May 19, 2000. Respondent uses the disputed domain name to advertise Respondent’s roofing services, as well as the resale of Complainant’s products and the sale of competitors’ products.
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’s registration of the FIRESTONE mark with the USPTO, as well as its subsequent registration with the USPTO to specifically associate the mark with Complainant’s roofing materials and products, predates Respondent’s registration of the disputed domain name. Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark to a complainant. Thus, the Panel finds that Complainant has established rights in the FIRESTONE mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2000) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., 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.”).
Respondent’s <firestoneroofing.com> domain name uses Complainant’s mark in its entirety and adds the generic term “roofing.” This term describes the nature of Complainant’s business. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s FIRESTONE mark pursuant to Policy ¶ 4(a)(i) since the addition of the generic top-level domain “.com” is without significance to this analysis. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <firestoneroofing.com> 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). Because of the Respondent’s failure to respond to the Complaint, the panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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 does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant has alleged that Respondent has never been commonly known by the <firestoneroofing.com> domain name. The WHOIS information identifies Respondent as “Alans Roofing,” which is the name the company uses to conduct its business. Despite the fact that Respondent advertises Complainant’s products for resale, Respondent is not affiliated with Complainant. The Panel can find no other evidence in the record suggesting that Respondent is commonly known by the name. Therefore, the Panel finds that Respondent is not commonly known by the <firestoneroofing.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Respondent is using the <firestoneroofing.com> domain name to advertise its own services
as well as Complainant’s and competitors’ products. Respondent is using Complainant’s FIRESTONE
mark for its own benefit, and such use constitutes 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). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7,
2002) (finding no bona fide offering of goods or services where the
respondent used the complainant’s mark without authorization to attract
Internet users to its website, which offered both the complainant’s products
and those of the complainant’s competitors); see also Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <firestoneroofing.com> domain name, which is confusingly similar to Complainant’s FIRESTONE mark, is likely to cause confusion among customers searching for Complainant’s products. Specifically, customers could become confused as to the affiliation, endorsement, or sponsorship of Respondent’s services with Complainant and its competitors’ products. This use of the disputed domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Respondent uses the <firestoneroofing.com>
domain name, which is confusingly similar to Complainant’s FIRESTONE mark, to advertise
and sell products manufactured by Complainant’s competitors. This use also constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (finding that the respondent’s use of the <saflock.com> domain name
to offer goods competing with the complainant’s illustrates the respondent’s
bad faith registration and use of the domain name pursuant to Policy ¶
4(b)(iv)); see also 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 <firestoneroofing.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: January 23, 2007
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