Jeld-Wen, Inc. v. TECH DOMAIN SERVICES PRIVATE LIMITED
Claim Number: FA1004001318227
Complainant is Jeld-Wen,
Inc. (“Complainant”), represented by Steven
E. Klein, of Stoel Rives LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <jeldwen.net>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2010.
On April 12, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <jeldwen.net> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 21, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 2010 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@jeldwen.net by e-mail. Also on April 21, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <jeldwen.net> domain name is confusingly similar to Complainant’s mark.
2. Respondent does not have any rights or legitimate interests in the <jeldwen.net> domain name.
3. Respondent registered and used the <jeldwen.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Jeld-Wen, Inc., utilizes its JELD-WEN mark to market and sell its window and door manufacturing, home building, and home remodeling services. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its JELD-WEN mark (e.g., Reg. No. 1,388,339 issued April 1, 1986).
Respondent registered the <jeldwen.net> domain name on October 13, 2005. The disputed domain name resolves to a website that contains numerous third-party hyperlinks relating to window and door manufacturing, home building, and home remodeling. The majority of the links resolve to third-parties that compete with Complainant.
Respondent has been a respondent in multiple UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants in those cases. See Mac Acquisition IP LLC v. Tech Domain Servs. Private Ltd., FA 1304373 (Nat. Arb. Forum Mar. 10, 2010); see also LEGO Juris A/S v. Tech Domain Servs. Private Ltd., D2009-1617 (WIPO Jan. 22, 2010).
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 holds trademark registrations with the USPTO for
its JELD-WEN mark (e.g., Reg. No. 1,388,339 issued April 1,
1986). While Respondent resides in
Complainant claims that Respondent’s <jeldwen.net> domain name is confusingly similar to Complainant’s JELD-WEN mark. The disputed domain name removes the hyphen separating the terms of the mark and adds the generic top-level domain (“gTLD”) “.net.” The Panel determines that the removal of a hyphen and the addition of a gTLD fail to distinguish the disputed domain name from Complainant’s JELD-WEN mark. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Consequently, the Panel concludes that Respondent’s <jeldwen.net> domain name is confusingly similar to Complainant’s JELD-WEN mark.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <jeldwen.net> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <jeldwen.net> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant alleges that Respondent is not commonly known by the <jeldwen.net> domain name. Complainant asserts that Respondent is not licensed or authorized to utilize Complainant’s JELD-WEN mark. Complainant argues, and the Panel agrees, that the WHOIS information identifying the domain name registrant is not similar to the disputed domain name. The Panel examines the evidence in the record and does not find any evidence that would support a finding that Respondent is commonly known by the disputed domain name. Due to Respondent’s failure to provide such evidence and the information provided by Complainant, the Panel finds that Respondent is not commonly known by the <jeldwen.net> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Respondent uses the <jeldwen.net> domain name to resolve to a website that features third-party hyperlinks. Many of the third-parties compete with Complainant in the window and door manufacturing, home building, and home remodeling industries. Complainant alleges that Respondent receives click-through fees from the hyperlinks contained on the resolving website. The Panel holds that Respondent’s use of the <jeldwen.net> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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).”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges Respondent’s use of the <jeldwen.net>
domain name is a part of a pattern
of bad faith use and registration.
Respondent has been a respondent in multiple UDRP proceedings in
which disputed domain names were transferred from Respondent to the
complainants in those cases. See Mac Acquisition IP LLC v. Tech Domain
Servs. Private Ltd., FA
1304373 (Nat. Arb. Forum Mar. 10, 2010); see also LEGO Juris A/S v. Tech Domain Servs. Private Ltd.,
D2009-1617 (WIPO Jan. 22, 2010). The
Panel finds this constitutes a pattern of bad faith registration and use of
domain names under Policy ¶ 4(b)(ii). See Westcoast
Contempo Fashions Ltd. v.
Respondent’s <jeldwen.net> domain name resolves to a website that features third-party hyperlinks that resolve to websites offering services which compete with Complainant’s window and door manufacturing, home building, and home remodeling services. Internet users interested in purchasing these services from Complainant may instead purchase the same services from one of Complainant’s competitors. Therefore, Complainant’s business is disrupted with a loss of a potential commercial gain due to Respondent’s registration of the confusingly similar disputed domain name. The Panel finds Respondent’s use of the <jeldwen.net> domain name constitutes a bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant claims that Respondent receives click-through fees
from the aforementioned hyperlinks.
Respondent attempts to profit from the confusion as to Complainant’s
affiliation with and sponsorship of the disputed domain name and resolving
website. The Panel determines that
Respondent’s use of the <jeldwen.net> domain name constitutes bad
faith registration and use under Policy ¶ 4(b)(iv). See Maricopa Cmty. Coll. Dist.
v. College.com, LLC, FA 536190 (Nat. Arb.
Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through
fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical
to Complainant’s
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <jeldwen.net> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 2, 2010
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