The AZEK Company v. Mason Valor / Garwood International
Claim Number: FA2105001947295
Complainant is The AZEK Company (“Complainant”), represented by Leonard Searcy of Shook, Hardy & Bacon LLP, Missouri, USA. Respondent is Mason Valor / Garwood International (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <varsatex.com>, registered with NameCheap, Inc..
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2021; the Forum received payment on May 27, 2021.
On May 24, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <varsatex.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 May 28, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 17, 2021 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@varsatex.com. Also on May 28, 2021, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant asserts trademark rights in VERSATEX and relies on a national registration for that trademark. Complainant submits that the domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant manufactures and sells building products by reference to the trademark VERSATEX which is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 3,077,495, registered April 4, 2006;
2. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating the trademark;
3. the disputed domain name was registered on April 12, 2021 and resolves to a webpage displaying sundry links unrelated to Complainant or its business; and
4. the disputed domain name has been used to send emails where Respondent attempts to pass himself off as an employee of Complainant.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding based on Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[i]. Complainant provides evidence of a USPTO certificate of registration for the trademark VERSATEX (in the name of Wolfpac Technologies Inc.) and claims subsequent devolution of rights in the trademark to Complainant. In particular, the Complaint states:
“Versatex is a subsidiary of The AZEK Company. Versatex Building Products, formerly known as Wolfpac Technologies, was founded in 2004 and has been in the business of developing and manufacturing quality building products. Versatex gained a reputation for high quality building products and has accumulated substantial public goodwill. In 2018, Versatex was acquired by CPG International LLC which had previously rebranded itself as The AZEK Company, Complainant. The AZEK Company owns CPG international LLC, Versatex holdings, and Versatex Bulding Products. Complainant has maintained Versatex holdings and Versatex Building Products as subsidiaries under CPG International LLC in its organizational structure.”
What is missing appears to be evidence that Wolfpac Technologies Inc. changed its name to Versatex Building Products LLC. That said, the documentation provided with the Complainant traces generally the relationships described and there is nothing to contradict the assertion of the name change. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory[ii] and in the absence of a Response challanging the claim to ownership the Panel finds that Complainant has rights in the trademark.
The domain name is a trivial misspelling of the trademark, merely substituting the letter “a” for the first occurrence of the letter “e”. There is very little visual or aural difference between the terms. Further, addition of the gTLD “.com” does nothing to disguish the domain name from the trademark. The Panel finds the disputed domain name to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy[iii].
Accordingly, Complainant has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
The name of the underlying domain name owner was shielded from public view but in consequence of these proceedings the Registrar advised the Forum that the domain name holder is “Mason Valor.” That name does not suggest that Respondent may be commonly known by the disputed domain name and there is no evidence that Respondent has trademark rights of its own. Complainant states that it has not authorized Respondent to use the trademark.
Further, Complainant provides screenshots of the resolving webpage carrying miscellaneous third-party links. Finally, Complainant provides evidence of use of the domain name as part of an email address, John Weber jweber@varsatex.com, posing as that of an employee of Complainant and used to send emails with fraudulent invoices to Complainant’s customers requesting payment for goods into a bank account not connected with Complainant. Clearly, Respondent’s use of the domain name is neither a bona fide offering of goods or services under Policy, nor a non-commercial or fair use[v].
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The onus shifts to Respondent to establish a legitimate interest and, absent a Response, that prima facie case is not rebutted. The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) has direct application. The Panel has already found the disputed domain name to be confusingly similar to the trademark; its very nature falsely suggests that the resolving online location is associated with Complainant. The Panel finds registration in bad faith under the Policy. Further, in terms of the Policy the Panel finds that Respondent has intentionally used the domain name to attract, for commercial gain, Internet users to the resolving online location by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that location. The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy[vi].
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <varsatex.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: June 28, 2021
[i] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[ii] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (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; 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.”)
[iii] See, for example, Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (“The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”)
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, Chubb INA Holdings Inc. v. Janice Reading, FA 1908001858786 (Forum Oct. 14, 2019) finding that respondent used an email address associated with the disputed domain name to deceive complainant’s customers into paying fraudulent invoices demonstrating a lack of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii); Progress Rail Services Corporation v. John Woods, FA 1849692 (Forum July 29, 2019) finding that respondent did not make a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii) where respondent used the disputed domain name to pass off as an employee of complainant in an attempt to commit fraud.
[vi] See, for example, Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”).
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