Comfort Window Co., Inc. v. AL-SADEQOUN LIL-TASWEEQ LLC
Claim Number: FA1206001447758
Complainant is Comfort Window Co., Inc. (“Complainant”), represented by Philip I. Frankel of Bond, Schoeneck & King, PLLC, New York, USA. Respondent is AL-SADEQOUN LIL-TASWEEQ LLC (“Respondent”), Jordan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <windoows.net> and <windooows.com>, registered with eNom, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Linda M. Byrne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2012; the National Arbitration Forum received payment on June 7, 2012.
On June 11, 2012 and June 12, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <windoows.net> and <windooows.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. (eNom did not provide any information with respect to the subdomains <comfort.windoows.net> and <comfort.windooows.com>.) eNom, Inc. has verified that Respondent is bound by the eNom, 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 June 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2012, 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@windoows.net, and postmaster@windooows.com. Also on June 18, 2012, 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.
A timely Response was received and determined to be complete on July 5, 2012.
On July 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that Respondent’s <windoows.net> and <windooows.com> domain names are associated with the <comfort.windoows.net> and <comfort.windooows.com> websites, and that these domain names and websites are confusingly similar to Complainant’s COMFORT WINDOWS mark. The Complainant argues that the Respondent is intentionally attempting to attract Internet users to Respondent’s competing websites by creating a likelihood of confusion as to Complainant’s sponsorship of, and affiliation with, the disputed domain names. The Complainant also argues that this “typosquatting” is evidence of Respondent’s bad faith registration and use.
B. Respondent
Respondent contends that the <windoows.net> and <windooows.com> domain names essentially contain a slight variation of the generic term “windows.” The Respondent also contends that the sites facilitate an offer of legitimate goods and services (free window replacement estimates). Further, Respondent purposefully includes multiple letter “o”s in order to create a unique design, similar to how Google uses repeating letter “o”s.
Respondent also contends that the <comfort.windoows.net> and <comfort.windooows.com> subdomains do not exist.
Complainant owns a New York state trademark registration for the COMFORT WINDOWS mark (Reg. No. S-14079 registered April 29, 1994) and Complainant owns the <comfortwindows.com> domain name, which Complainant registered on May 26, 1999. Complainant also owns rights in its COMFORT WINDOWS family of marks including trademark registrations with the United States Patent and Trademark Office (“USPTO”) for THE COMFORT ADVANTAGE WINDOW (Reg. No. 1,925,474 registered October 10, 1995) and LIVE IN COMFORT (e.g., Reg. No. 2,496,188 registered October 9, 2001).
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.
The disputed domain names <comfort.windoows.net> and <comfort.windooows.com> are technically dependent on the <windoows.net> and <windooows.com> domain names. In other words, for example, <comfort.windoows.net> cannot be cancelled or transferred separately from <windoows.net>.
The “domain names” <comfort.windoows.net> and <comfort.windooows.com> are not domain names, but subdomain names. A subdomain is a domain that is part of a larger domain. For example, <johndoe.example.com> and <janedoe.example.com> are subdomains of the <example.com> domain. The UDRP rules do not apply to subdomain names. In order for the UDRP Policy to apply, there must be evidence that these subdomains are registered with a registrar. See EFG Bank European Financial Group SA v. Domain Consults, 2011 UDRP LEXIS 2911, *7, D2011-1907 (WIPO Dec. 23, 2011). Because the Complainant has not presented any evidence (or even alleged) that the <comfort.windoows.net> and <comfort.windooows.com> subdomains are registered, the Panel is unable to order transfer of these two subdomain names. Id.
The Panel concludes that Complainant has established rights in the “COMFORT WINDOWS” trademark, but not in the generic word “WINDOWS.” With respect to the two actual domain names at issue, the Panel concludes that <windoows.net> and <windooows.com> are not confusingly similar to Complainant’s COMFORT WINDOWS mark.
In order to succeed, the Complainant must demonstrate all three elements of Paragraph 4(a) of the Policy. In view of the fact that the Complainant has not met its burden with respect to the first factor, the Decision need not address the remaining two factors. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <windoows.net> and <windooows.com> domain names REMAIN WITH Respondent.
Linda M. Byrne, Panelist
Dated: July 25, 2012
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