Classic Metal Roofs, LLC v. Interlock
Industries, Ltd.
Claim Number: FA0606000724554
PARTIES
Complainant is Classic Metal Roofs, LLC (“Complainant”), represented by Kay Lyn Schwartz, of Gardere Wynne Sewell, LLP, 1601 Elm Street, Suite 3000, Dallas, TX 75201. Respondent is Interlock Industries, Ltd. (“Respondent”), represented by Owen Dukelow, of Kolisch Hartwell, P.C., 520 SW Yamhill, Ste 200, Portland, OR 97204.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <classicmetalroofing.com>,
registered with Domainpeople Inc.
PANEL
The undersigned 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.
Honorable Richard B. Wickersham, Judge (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 1, 2006; the National Arbitration Forum received a hard
copy of the Complaint on June 5, 2006.
On June 2, 2006, Domainpeople Inc. confirmed by e-mail to the National
Arbitration Forum that the <classicmetalroofing.com>
domain name is registered with Domainpeople Inc. and that the Respondent is the
current registrant of the name. Domainpeople
Inc. has verified that Respondent is bound by the Domainpeople 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 June 6, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 26, 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@classicmetalroofing.com by e-mail.
On June 26, 2006, Respondent requested, pursuant to Supplemental Rule
6, an extension of eleven days to respond, because Respondent did not procure
counsel until June 20, 2006, leaving it with insufficient time to investigate
the underlying claim. On June 27, 2006,
the National Arbitration Forum, with Complainant’s consent, granted Respondent
an extension and set a new deadline of July 11, 2006 for a filing of a
Response.
A timely Response was received and determined to be complete on July
11, 2006.
Additional Submissions from Complainant and Respondent were received on
July 18, 2006 and July 25, 2006, respectively, and the National Arbitration
Forum determined both to be timely and complete according to Supplemental Rule
#7.
On July 18, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Richard B. Wickersham, Judge (Ret.), as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Classic
Metal Roofs has used continuously since 2004, and is currently using, the mark
“CLASSIC METAL ROOFS,” in connection with roofing products and services. Classic Metal Roofs has acquired extensive
rights and associated goodwill through its continuous use of the “CLASSIC METAL
ROOFS” mark and “CLASSIC METAL ROOFS and design” mark (collectively the
“CLASSIC METAL ROOFS Marks”). Classic
Metal Roofs’ website at <classicmetalroofs.com> provides information
concerning Classic Metal Roof’s business and the use of its marks. Classic Metal Roofs’ valuable trademarks are
sufficiently distinctive and have come to be associated with the Complainant,
Classic Metal Roofs. In addition, Classic
Metal Roofs has developed substantial good will as a result of its use of the
CLASSIC METAL ROOFS Marks. Further,
Classic Metal Roofs is affiliated with the Metal Roof Alliance (MRA), and has
achieved a five-star rating from Service Magic, an organization that prescreens
and rates companies specializing in home improvement goods and services.
The predominant portion of Respondent’s domain name, <classicmetalroofing.com>,
is virtually identical to the CLASSIC METAL ROOFS Marks, and/or is confusingly
similar to such Marks. A domain name
is, by definition, identical or confusingly similar, when the domain name
incorporates Complainant’s mark, thus creating a presumption that the domain
name is affiliated with the Complainant.
See Wyndham Int’l, Inc. v. Golden
Door Designs, FA 146932 (Nat. Arb. Forum Apr. 2, 2003); see also Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000).
The fact that Respondent includes the top level domain designation
“.com” or that the domain name omits the final letter “S” in “ROOFS” and adds
“ING” (i.e., the term “ROOFING” is used instead of the term “ROOFS”) does not
negate the confusion created by Respondent’s domain name. A domain name is identical or confusingly
similar to a mark “when the domain name includes the trademark, or a
confusingly similar approximation, regardless
of the other terms in the domain name.”
See College Summit, Inc. v. Yarmouth Educational Consultants, Inc.
D2000-1575 (WIPO Jan. 17, 2001) (inclusion of term “net” into contested domain
name, collegenetsummit, did not render domain name sufficiently dissimilar to
mark, COLLEGE SUMMIT, as to preclude confusion of internet user); 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); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr.
30, 2001) (finding that <mysticlake.net> is plainly identical to
Complainant’s MYSTIC LAKE trademark and service mark).
In addition, the domain name at issue, when entered into an internet
browser, immediately resolves to the Respondent’s website at
<interlockroofing.com>.
Respondent is the competitor of Complainant, and also specializes in
metal roofing products and related services.
Classic Metal Roofs submits that the domain name, <classicmetalroofing.com>,
is likely to cause confusion among consumers and internet users. When consumers enter the domain name at
issue, <classicmetalroofing.com>, into a web browser expecting to
find information about Classic Metal Roofs or its website, it is highly likely
that those consumers will be puzzled when they reach Respondent’s website at
<interlockroofing.com> and wonder why or how Respondent – who is
Complainant’s competitor – is associated with Complainant. The fact is – there is no association or
affiliation between Complainant and Respondent – yet the domain name registered
in the name of Respondent, and presently directed to Respondent’s main website,
creates substantial confusion.
Furthermore, there have been instances of actual confusion among
Complainant’s customers regarding Respondent’s domain name.
For all of these reasons, Classic Metal Roofs submits that the first
element required under Rule 3 of the ICANN Rules has been clearly
established. Classic Metal Roofs has
substantial rights in the CLASSIC METAL ROOFS Marks, and the domain name at
issue, <classicmetalroofing.com>, clearly employs the CLASSIC
METAL ROOFS Marks, and is substantially identical or confusingly similar to
trademarks and service marks in which Classic Metal Roofs has rights.
Respondent, Interlock Industries, Ltd., is one of Classic Metal Roofs’
competitors and offers metal roofing products and installation services as
evidenced by Respondent’s website.
Respondent clearly has no rights in “CLASSIC” and is not known by the
phrase, “CLASSIC METAL ROOFING.” Upon
information and belief, Respondent registered the domain name at issue, <classicmetalroofing.com>,
with full knowledge of Classic Metal Roofs and its CLASSIC METAL ROOFS Marks,
in order to divert traffic away from Classic Metal Roofs and to Respondent and
its website, <interlockroofing.com>.
Such conduct clearly shows that Respondent has no rights or legitimate
interests in the domain name at issue.
Respondent was on at least constructive notice, and upon
information and belief, had actual notice, of Classic Metal Roofs’ rights when
it registered <classicmetalroofing.com>
on May 27, 2005. Respondent and
Complainant’s headquarters are located 45 miles from each other. Considering
the activities of both Complainant and Respondent in the New England area, it
is difficult to imagine that Respondent was not aware of Classic Metal
Roofs at the time it registered the domain name, <classicmetalroofing.com>. In addition, Classic
Metal Roofs, LLC and Respondent compete for the same customers, as many of
Classic Metal Roofs’ customers indicate that their ultimate choice of a roofing
provider came down to Interlock and Classic Metal Roofs, LLC. Surely, if Interlock loses a customer to a
competitor, good business practices mandate knowledge of that competitor so as
to potentially avoid losing another potential customer to that competitor. Further, at the time Respondent registered the domain name at issue, a
search of the Internet would have revealed information concerning Classic Metal
Roofs and its Marks as its website at <classicmetalroofs.com> was on-line
months prior to Respondent’s registration of <classicmetalroofing.com>.
B. Respondent
Respondent, Interlock Industries, Ltd., claims that it registered the
<classicmetalroofing.com> domain name in good faith in order to
advertise and sell metal roofing products.
Respondent argues that Complainant has not offered any evidence of its
rights in the CLASSIC METAL ROOFS mark before Respondent registered the
disputed domain name on May 27, 2005.
Complainant also is apparently restricted from using the mark outside of
three and one-half states in the United States by the “veiled real
party-in-interest” in the present case, Classic Metal Roofing Systems. Under the arbitration rules and relevant
trademark law, then, Complainant should be denied the transfer of the disputed
domain name.
Complainant has provided no evidence that it used the CLASSIC METAL
ROOFS mark continuously since 2004 and has actually only used it since May
2005, after Respondent registered the <classicmetalroofing.com>
domain name. In addition, the terms of
the domain name are of common usage, making Complainant’s burden to show it has
rights in the mark particular high in this instance. Many other roofing companies use the CLASSIC METAL ROOFS mark to
refer to their services.
Respondent claims that Complainant’s real
party in interest is another company that recently changed its name to Classic
Metal Roofing Systems and that this party suffers from “domain name envy.” Thus, this is not a straightforward attempt
by a senior trademark owner to obtain a domain name in which it has a legitimate
interest but a reverse domain name hijacking attempt by a party that adopted a
mark long after Respondent had registered and begun use of the <classicmetalroofing.com>
domain name.
Respondent asserts that it has rights and legitimate interests in the
disputed domain name because it is comprised of three descripted keywords:
classic, metal and roofing, and these terms improve Respondent’s ranking in
search results.
C. Complainant’s Additional Submission
COMPLAINANT’S ADDITIONAL SUBMISSION IN REPLY TO RESPONDENT’S RESPONSE
This is an Additional Submission by Complainant Classic Metal Roofs, LLC (“Classic Metal Roofs”) in reply to Respondent’s Response, timely submitted on or before July 17, 2006 (five Calendar Days, which excludes Sunday in accordance with NAF Supp. Rule 1(f), from July 11, 2006, the date Respondent’s Response was received by the National Arbitration Forum).
“CLASSICMETALROOFING.COM” IS IDENTICAL OR CONFUSINGLY SIMILAR TO SERVICE MARKS IN WHICH CLASSIC METAL ROOFS HAS RIGHTS.
1. CLASSIC METAL ROOFS’ SERVICE MARK RIGHTS
Classic Metal Roofs, LLC was organized in September 2004 and is headquartered in Stow, Massachusetts. Since at least as early as 2004, Classic Metal Roofs has provided roof installation and consultation services to consumers under the CLASSIC METAL ROOFS Marks. Classic Metal Roofs’ Marks are protected under United States “common law.”
Possession of a federal registered
trademark is not required in order to prevail under the UDRP – common law
rights are sufficient. As previous
panels have recognized, a fundamental principle of trademark law is that rights
in a trademark can be acquired through use, and such rights exist even though
the trademark may not be registered. See Imperial College
v. Christophe Dessimoz, WIPO Case No. D2004-0322. In addition, “rights” in a mark exist
when a party shows that there is enough goodwill and reputation in and to a
name and sufficient association of the same with the party itself, no matter
how strong or weak those trademark and service mark rights may be. See,
e.g., Action Sports Videos v. Reynolds, D2001-1239 (WIPO Dec. 13, 2001) (although
registration of mark on USPTO’s supplemental register indicated a “descriptive”
mark without secondary meaning, the Panel still found that sufficient “rights”
in the mark existed). In addition, the
fact that trademark rights may only exist in a small geographic area does not
limit complainant’s rights in a common law trademark. The Policy makes no
distinction between localized and widespread trademark rights, and there is no
requirement that a Complainant own a famous mark to invoke the protections of
the Policy. See UEFA v. Fuzi
Furniture, D2000-0710 (WIPO Oct. 25, 2000) (complainant need not establish
exclusive rights across all territorial boundaries, only a bona fide basis for making the
complaint).
This submission influenced Panel’s decision. It was timely received on July 17, 2006.
D. Respondent’s Additional Submission
Respondent asserts that Complainant’s Additional Submission includes
“several factual allegations that should have been field as part of
Complainant’s prima facie case because, without the new allegations,
Complainant simply has no evidence of trademark rights.” Respondent claims that Complainant is
raising new issues about conflicting that the Panel cannot disentangle because
“Complainant is unilaterally controlling the information about its alleged
rights.”
Complainant’s Additional Submission further highlights its lack of
trademark rights in the CLASSIC METAL ROOFS mark and Complainant is still
hiding information about its connection to the “shadow-complainant, Classic
Products.” The only evidence
Complainant provides of its rights in the mark is a coupon distributed by
ValPak in February 2005.
Respondent contends that it was not aware of Complainant before this
proceeding and that Complainant is merely a licensee of the CLASSIC METAL ROOFS
mark and therefore has no standing to bring the Complaint.
DISCUSSION
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:
(1)
the domain name
registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
FINDINGS and LAW
Complainant alleges that it does
not have a valid trademark registration for the CLASSIC METAL ROOFS mark. Nevertheless, the Panel decides that
Complainant is not required to own a trademark registration for the CLASSIC METAL
ROOFS mark in order to establish rights in the mark pursuant to 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 Great Plains Metromall, LLC v. Creach,
FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a
trademark be registered by a governmental authority for such rights to
exist.”).
Complainant asserts that it has continuously used the CLASSIC METAL ROOFS mark in connection with roofing products and services since 2004, before Respondent registered the <classicmetalroofing.com> domain name on May 27, 2005. Complainant states that it is a member of the Metal Roof Alliance and that it has a five-star rating with ServiceMagic, a service that rates home improvement companies. Complainant also claims that consumers associate the CLASSIC METAL ROOFS mark with Complainant and that the mark has developed “substantial goodwill.” The Panel finds that Complainant has provided sufficient evidence to show the CLASSIC METAL ROOFS mark has acquired secondary meaning in association with Complainant’s roofing products and services, and the Panel holds that Complainant has established common law rights in the mark under Policy ¶ 4(a)(i). See Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
In addition, Complainant asserts that the <classicmetalroofing.com> domain name is confusingly similar to its CLASSIC METAL ROOFS mark because the disputed domain name contains the first two terms of the mark, CLASSIC and METAL, and merely alters the final term of the mark, ROOFS, by omitting “s” and adding “ing.” The Panel finds that such a small alteration does not sufficiently distinguish the <classicmetalroofing.com> domain name from Complainant’s mark and thus Respondent’s domain name is confusingly similar to the CLASSIC METAL ROOFS mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that the respondent’s domain name, <americanonline.com>, is confusingly similar to the complainant’s famous AMERICA ONLINE mark); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to the complainant’s mark BEANIE BABIES).
The Panel notes that Complainant has the initial burden of making a prima facie case that Respondent has no rights or legitimate interests in the <classicmetalroofing.com> domain name under Policy ¶ 4(a)(ii), and if Complainant does, the burden then shifts to Respondent to prove that it has rights or legitimate interests. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”).
Complainant maintains that the
WHOIS information lists the registrant of the domain name as “Interlock
Industries, Ltd.” and that there is no other evidence in the record suggesting
that Respondent is commonly known by the <classicmetalroofing.com>
domain name. Complainant also alleges
that it has not authorized or licensed Respondent to register or use a domain
name incorporating a variation of Complainant’s CLASSIC METAL ROOFS mark. The Panel agrees that Respondent is not
commonly known by the disputed domain name, and the Panel finds that Respondent
does not have rights or legitimate interests in the <classicmetalroofing.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected); see also
Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat.
Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Additionally, Complainant asserts
that Respondent is a competitor of Complainant and that Respondent’s <classicmetalroofing.com>
domain name redirects Internet users to Respondent’s <interlockroofing.com>
domain name, where Respondent sells metal roofing products and offers
installation services. The Panel finds
that Respondent is redirecting Internet users searching for Complainant’s metal
roofing products and services to Respondent’s competing website at the
<interlockroofing.com> domain name for commercial gain and that such
diversionary use is not 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 DLJ
Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski,
FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of
the disputed domain name to redirect Internet users to a financial services
website, which competed with the complainant, was not a bona fide offering of goods or services).
Complainant asserts that Respondent’s use of the <classicmetalroofing.com> domain name to redirect Internet users to Respondent’s competing website suggests that Respondent registered the disputed domain name for the primary purpose of disrupting Complainant’s business. The Panel accepts Complainant’s assertion and finds that Respondent has registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by diverting Internet users to its own website selling competing products and services. 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 EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
Moreover, Complainant claims that
Respondent is intentionally attempting to attract Internet users seeking
Complainant’s metal roofing products and services under the CLASSIC METAL ROOFS
mark to Respondent’s competing website at the <interlockroofing.com>
domain name for commercial gain.
Complainant alleges that some of its customers have mistakenly reached
Respondent’s website and became confused as to the affiliation Complainant had
with the <classmetalroofing.com> domain name. Based on Complainant’s claims, the Panel
finds that Respondent is taking advantage of the confusing similarity between
the disputed domain name and Complainant’s mark in order to profit from the
goodwill associated with the CLASSIC METAL ROOFS mark, which constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also MathForum.com,
LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith
under Policy ¶ 4(b)(iv) where the respondent registered a domain name
confusingly similar to the complainant’s mark and the domain name was used to
host a commercial website that offered similar services offered by the
complainant under its mark).
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 <classicmetalroofing.com>
domain name be TRANSFERRED from Respondent to Complainant.
Richard B. Wickersham, Judge (Ret.), Panelist
Dated: August 1, 2006
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