Robertson-Ceco II Corporation d/b/a Ceco Building Systems v. DVLPMNT MARKETING, INC. / Domain Administrator
Claim Number: FA1406001564933
Complainant is Robertson-Ceco II Corporation d/b/a Ceco Building Systems (“Complainant”), represented by Kay Lyn Schwartz of GARDERE WYNNE SEWELL LLP, Texas, USA. Respondent is DVLPMNT MARKETING, INC. / Domain Administrator (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cecobuildingsystems.com>, registered with DNC Holdings, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 16, 2014; the National Arbitration Forum received payment on June 16, 2014.
On June 17, 2014, DNC Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <cecobuildingsystems.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, 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 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 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@cecobuildingsystems.com. Also on June 24, 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 July 23, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant uses the CECO mark in connection with its framing and siding products. (United States Patent and Trademark Office ("USPTO") Reg. No. 523,359 registered April 4, 1950.) The domain name is confusingly similar to the CECO mark as Complainant does business as “Ceco Building Systems.” The addition of the generic top-level domain ("gTLD") is not meaningful.
Respondent has no rights or legitimate interests. Respondent is not commonly known by the disputed domain name. Respondent is using the domain name strictly to promote various related and unrelated advertised offers.
Respondent registered and is using this name in bad faith. Respondent is allowing competitive ads to litter this website in a manner that disrupts Complainant’s business. Respondent is capitalizing on the likelihood that Internet users who enter <cecobuildingsystems.com> domain name will be justifiably confused as to whether Complainant has endorsed the contents therein. Respondent was on notice of Complainant’s rights in the CECO mark well prior to registration of the domain name.
Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant uses the CECO mark in connection with its framing and siding products. (USPTO Reg. No. 523,359 registered April 4, 1950.) The CECO mark is sufficiently protected under Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant claims the domain name is confusingly similar to the CECO mark in that Complainant does business as “Ceco Building Systems.” Complainant asserts the addition of the generic top-level domain ("gTLD") is not meaningful. The phrase “building systems” is descriptive of Complainant’s business, and a gTLD adds no relevant distinction to this mark. See Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity). Therefore, the Panel finds Policy ¶ 4(a)(i) confusing similarity with respect to the <cecobuildingsystems.com> domain name.
Complainant has proven this element.
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.”).
Complainant claims Respondent is not commonly known by the disputed domain name. Complainant has never authorized Respondent’s use of the CECO mark in domain names. The listed Registrant in the WHOIS record for <cecobuildingsystems.com> is DVLPMNT MARKETING, INC. The Panel finds there is no basis for finding Respondent to be commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant claims Respondent is using the domain name strictly to promote various related and unrelated advertised offers. The resolving website for the <cecobuildingsystems.com> domain name contains various hyperlink advertisements to construction and roofing service contractors. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found that use of a confusingly similar domain name for hyperlink listings created no Policy ¶ 4(c)(i) bona fide offering of goods or services, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds Respondent’s use of the domain name is not a Policy ¶ 4(c)(i) or ¶ 4(c)(iii) protectable interest.
Complainant has proven this element.
Complainant claims Respondent is allowing competitive ads on this website in a manner that disrupts Complainant’s business. The domain name appears to resolve to a website filled with advertisements to various contractors who deal in roofing and general construction. In DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), the panel found competing hyperlinks to serve as sufficient evidence of Policy ¶ 4(b)(iii) bad faith.
The Panel finds that the hyperlinks present on the disputed domain name’s website are evidence of Policy ¶ 4(b)(iii) bad faith.
Complainant further claims Respondent is capitalizing on the likelihood that Internet users who enter <cecobuildingsystems.com> domain name will be justifiably confused as to whether Complainant has endorsed the contents therein. The Panel finds that this use of the domain name is evidence of Respondent’s intent to profit through advertising revenue in the likelihood Internet users will confuse Complainant as a source or origin of the <cecobuildingsystems.com> domain name. See 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). The Panel finds bad faith under Policy ¶ 4(b)(iv).
Complainant claims Respondent was on notice of Complainant’s rights in the CECO mark prior to registration of the domain name. While past panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel here finds that, due to the fame of Complainant's mark, and the use of the mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <cecobuildingsystems.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: July 24, 2014
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