International Barrier Technology, Inc. v. Hoover Treated Wood Products, Inc.
Claim Number: FA1401001538467
Complainant is International Barrier Technology, Inc. (“Complainant”), represented by Stuart R. Hemphill of Dorsey & Whitney LLP, Minnesota, USA. Respondent is Hoover Treated Wood Products, Inc. (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pyrotite.com>, registered with Network Solutions, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2014; the National Arbitration Forum received payment on January 10, 2014.
On January 13, 2014, Network Solutions, LLC. confirmed by e-mail to the National Arbitration Forum that the <pyrotite.com> domain name is registered with Network Solutions, LLC. and that Respondent is the current registrant of the name. Network Solutions, LLC. has verified that Respondent is bound by the Network Solutions, LLC. 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 January 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2014 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@pyrotite.com. Also on January 14, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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. 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
Complainant makes the following contentions:
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that developed and now manufactures and markets fire-resistant technology under the PYROTITE trademark.
2. Complainant owns rights in the PYROTITE mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,494,614 registered September 2, 2008).
3. Respondent registered the disputed domain name on August 24, 2010.
4. The <pyrotite.com> domain name redirects Internet users to Respondent’s own website, which promotes fire-retardant goods and services that directly compete with those offered by Complainant under the PYROTITE mark.
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 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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant states that it owns rights in the PYROTITE mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,494,614 registered September 2, 2008). See Complainant’s Exhibit D. The Panel notes that previous panels have held that a complainant’s registration of a mark with the USPTO establishes the complainant’s rights in the mark under Policy ¶ 4(a)(i). See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Pursuant to this precedent, the Panel holds that Complainant’s registration of its mark with the USPTO sufficiently establishes Complainant’s rights in the PYROTITE mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s PYROTITE trademark. Complainant alleges that the <pyrotite.com> domain name is identical to Complainant’s PYROTITE mark because it incorporates the PYROTITE mark in its entirety and merely adds gTLD “.com.” The Panel notes that previous panels have held that a disputed domain name is identical to a complainant’s mark where the domain name appropriates the mark in its entirety and merely adds the “.com” gTLD. See, e.g., SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”). Here, the Panel similarly reasons that the <pyrotite.com> domain name is identical to Complainant’s PYROTITE mark under Policy ¶ 4(a)(i) because it fully incorporates the PYROTITE mark and merely adds the gTLD “.com.”
Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s PYROTITE trademark and to use it in its domain name without making any alterations;
(b) The <pyrotite.com> domain name redirects Internet users to Respondent’s own website, which promotes fire-retardant goods and services that directly compete with those offered by Complainant under the PYROTITE mark;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant asserts that Respondent is commonly known as “Pyro-guard,” and not by the disputed <pyrotite.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant argues that it has not authorized Respondent to use its PYROTITE mark in a domain name since Respondent is a competitor of Complainant in the fire safety industry. The Panel notes that it has previously been held that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii) where the complainant asserts that it has not authorized the respondent to use the appropriated mark in a domain name and there is no evidence in the record, including the WHOIS information, to suggest that Respondent is commonly known by the disputed domain name. See, e.g., 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). Here, the Panel notes that the WHOIS information identifies “Hoover Treated Wood Products, Inc.” as the registrant of the disputed domain name, and the Panel thus holds that the WHOIS information does not suggest that Respondent is commonly known as “Pyrotite.” The Panel also notes that a screenshot submitted by Complainant tends to support Complainant’s assertion that Respondent is a competitor of Complainant that markets products under the PYRO-GUARD mark. See Complainant’s Exhibit F. Therefore, the Panel accepts Complainant’s contention that it did not authorize Respondent to use the PYROTITE mark in a domain name. For the foregoing reasons, the Panel holds that Respondent is not commonly known as <pyrotite.com> pursuant to Policy ¶ 4(c)(ii);
(e) Complainant next asserts that Respondent is not using the <pyrotite.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use Policy ¶ 4(c)(iii), because the disputed domain name redirects Internet users to Respondent’s own website, which promotes fire-retardant goods and services that directly compete with those offered by Complainant under the PYROTITE mark. See Complainant’s Exhibit F. Screenshots submitted by Complainant tend to show that the <pyrotite.com> domain name resolves to the official page of Respondent, “Hoover Treated Wood Products, Inc.” See id (containing the message, “Copyright 2013 Hoover Treated Wood Products, Inc.”). According to Complainant’s screenshots, the website resolving from <pyrotite.com> displays the error message, “PAGE NOT FOUND!” and also promotes links to “fire-retardant” products including “Pyro-Guard (Specs)” and “Pyro-Guard Backing Board.” See id. The Panel concludes from this screenshot that Respondent is using the <pyrotite.com> domain name to redirect Internet users to its own website that offers fire-retardant products that directly compete with those offered by Complainant under the PYROTITE mark. Previous panels have held that the use of a disputed domain name to promote competing goods is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See, e.g., Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel holds that the use of the <pyrotite.com> domain name to promote Respondent’s own competing “Pyro-guard” products is not protected as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant suggests that Respondent’s registration and use of the <pyrotite.com> domain name constitutes bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). As discussed above, Complainant has submitted evidence that tends to show that the <pyrotite.com> domain name resolves to a website that promotes fire-retardant “Pyro-guard” goods that directly compete with the fire-retardant goods offered under Complainant’s PYROTITE mark. See Complainant’s Exhibit F. Previous panels have held that a respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(iii) where the respondent is a competitor of the complainant and registers the disputed domain name with the primary purpose of disrupting the complainant’s business. See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”). Here, as the panel found in Marriott Int’l, supra, the Panel finds that Respondent is a competitor of Complainant in the fire safety industry. The Panel also infers from Respondent’s use of the <pyrotite.com> domain name to promote its own “Pyro-guard” products that Respondent registered the disputed domain name for the primary purpose of disrupting Complainant’s business. Therefore, the Panel holds that Respondent has demonstrated bad faith registration and use of the <pyrotite.com> domain name pursuant to Policy ¶ 4(b)(iii).
Secondly, Complainant asserts that by using the <pyrotite.com> domain name to promote its own competing products, Respondent has demonstrated bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). The Panel notes that it has previously been determined that a respondent demonstrates bad faith under Policy ¶ 4(b)(iv) where the disputed domain name is obviously connected to the complainant’s mark and is being used for Respondent’s commercial advantage. See, e.g., Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Previous panels have inferred that a respondent is commercially profiting from a disputed domain name where the domain name resolves to the respondent’s own competing commercial website. See, e.g., Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services). Therefore, the Panel holds that because the <pyrotite.com> domain name promotes Respondent’s own “Pyro-guard” products, Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the PYROTITE mark and in view of the conduct of the Respondent, Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pyrotite.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 7, 2014
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