DoorKing, Inc. v. Roger Arnaud
Claim Number: FA1406001567371
Complainant is DoorKing, Inc. (“Complainant”), represented by Jeffrey E. Faucette of Skaggs Faucette LLP, California, USA. Respondent is Roger Arnaud (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <doorkingparts.com>, registered with 1&1 Internet AG.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Héctor Ariel Manoff as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2014; the National Arbitration Forum received payment on June 27, 2014.
On July 1, 2014, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <doorkingparts.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 July 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 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@doorkingparts.com. Also on July 2, 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.
A timely Response was received and determined to be complete on July 21, 2014.
Additional Submission by the Complainant was received on July 28, 2014. Respondent also filed an Additional Submission which was received on the same date.
On July 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Héctor Ariel Manoff 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant DoorKing, Inc. provides access control systems in residential, commercial, and industrial applications. Complainant’s goods and services include telephone entry devices, access controls, gate operators, and parking control devices. DoorKing, Inc. has offered these goods and services since 1948 and has been using the trademark DOORKING in connection with these goods and services since 1951, mainly for electronic controllers for the operation of moveable gates, parking barriers and utility doors along with related equipment. Complainant has also used the mark DKS in connection with the cited goods and services since 2000 and for an unbroken period of more than 13 years.
Complainant’s common law use of the mark DOORKING has continued for an unbroken period of more than 62 years.
Complainant has registrations for DOORKING in US (Registrations No. 4,207,587 and 4,307,588 granted in 2013) and DKS (Registrations No. 4,333,595 and 4,340,819 granted on May 14 and May 28, 2013).
Complainant had registered the trademark DOORKING on August 24, 1954 based on first use in commerce since 1951. This registration expired on May 28, 2005 due to failure of renewal.
Complainant launched the website at <doorking.com> in 1996.
Complainant had also got registrations for DOORKING (No. 2,367,899 and 2,387,089) which had been granted in 2000 and were cancelled in 2007 due to failure to file a Section 8 declaration).
Respondent has registered the domain name <doorkingparts.com>, adding only “parts” at the end of Complainant’s mark, to divert consumers interested in Complainant’s goods and services to trade unfairly on the goodwill associated with the Complainant’s. The domain name was registered in 2005 when Complainant’s federal registrations for DOORKING were in force and effect. Respondent uses the disputed domain name in bad faith to divert consumers to a website which offers goods and services similar to and competitive with those offered by Complainant. Respondent’s website encourages visitors to “go to our Main Store! Click on the Link Directly Below” and clicking on that link takes visitors to <upswung.com> where Respondent offers goods sold by different gate operator and telephone access control manufacturers.
Complainant has never authorized or licensed Respondent’s use of the DOORKING and/or DKS marks.
Respondent registered and is using the domain name in bad faith because it knew of the well-known DOORKING and DKS marks at the time of registration and Respondent has no rights or legitimate interest in the domain name.
B. Respondent
Respondent has been a DoorKing, Inc. master dealer and a distributor for over a decade and was the first authorized reseller for DoorKing, Inc.
Respondent has been an internet company from the start of the Doorking distributorship agreement with Doorking’s full knowledge and consent of Complainant.
Respondent states that <doorkingparts.com> offers only Doorking parts and service on the <doorkingparts.com> website as an authorized reseller.
Respondent argues that there is no diversion or misleading of customers to another website and that the website <doorkingparts.com> is dedicated and displays over a 100 pages of only DoorKing, Inc. parts without any other manufacturer’s products displayed on this website with a special box for ordering DoorKing, Inc. parts at top of the page.
Respondent claims <doorkingparts.com> is a cooperative effort to sell Doorking parts to the benefit of DoorKing, Inc.
Respondent states that <doorkingparts.com> clearly states in large font on the home page that they are authorized sales and services distributor and that the website carries the Upswung Logo and clearly illustrates that <doorkingparts.com> is not a DoorKing website. There are no statements that imply that <doorkingparts.com> is a corporate Doorking website.
Respondent has never offered any domain names for sale.
Respondent has acted in a faithful cooperative manner in the previous ten year period as an authorized reseller.
Respondent argues that the reason for its links <doorkingparts.com> to Upswung.com is to complete the total package of a gate installation which is the normal course of any successful sale. It is necessary to use Upswung.com as a resource for the necessary accessories for any Doorking, Inc. sale.
Complainant has made no objection to the use of its marks until this arbitration.
Respondent was approved at the beginning of the Respondent’s distributor agreement with Doorking as an internet reseller with the permission to promote and sell Doorking products via website.
C. Additional Submissions
Complainant restates that links on Respondent’s webpage are gate operator related. Complainant submits evidence in this respect.
Complainant states that in November 2007, Complainant notified Respondent that he had registered and was using the domain name <doorkingparts.com> in bad faith and submits copy of the letter as sent.
Respondent argues that Doorking letter of November 2007 was never received by the Respondent.
Respondent re-states that the links at bottom of the page were for back linking purposes only, not for the intention to divert sales away from Doorking; back listing is a very common practice for any website to building better organic listing in Google and to increase traffic.
Complainant DoorKing, Inc. provides access control systems in residential, commercial, and industrial applications, has offered these goods and services since 1948 and has been using the trademark DOORKING in connection with these goods and services since 1951 and the mark DKS since 2000. Complainant has currently registrations for DOORKING and DKS in US and registered the trademark DOORKING for first time on August 24, 1954.
Complainant launched the website at <doorking.com> in 1996.
Respondent registered the domain name <doorkingparts.com> in 2005 and uses the disputed domain name to sell Complainant’s products. The Respondent’s website also includes links which take visitors to <upswung.com> where Respondent offers goods sold Complainant’s competitors.
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.
Complainant argues that DoorKing, Inc. provides access control systems in residential, commercial, and industrial applications and has offered these goods and services since 1948 and has been using the trademark DOORKING in connection with these goods and services since 1951 and the mark DKS since 2000.
Complainant submits evidence to show that Doorking, Inc. has currently registrations for DOORKING and DKS in US and registered the trademark DOORKING for first time on August 24, 1954. (Exhibit C).
Complainant submits evidence to show that when Respondent’s registered the domain name in 2005, Doorking, Inc. had trademark registrations in force. Therefore, the Panel holds that Complainant has rights in the marks pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant contends that Respondent’s <doorkingparts.com> domain name is confusingly similar to Complainant’s DOORKING mark. Complainant claims that Respondent uses Complainant’s DOORKING mark, while merely adding the generic term “parts.”
This Panel holds that the addition of generic terms to Complainant’s mark is not sufficient to distinguish a disputed domain name. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark).
Consequently, the Panel holds that Respondent’s <doorkingparts.com> domain name is confusingly similar to Complainant’s DOORKING mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or legitimate interests on the <doorkingparts.com> domain name, since it is not commonly known by the cited domain names. The WHOIS information corresponding to the domain name confirms this fact since it bears no resemblance to it.
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). 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); 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.”).
Additionally, Complainant states that Doorking, Inc. has never authorized or licensed Respondent’s use of the DOORKING and/or DKS marks.
The Panel finds that Respondent argues to have been a distributor of Doorking’s products but did not submit concrete and sufficient evidence to prove it. Respondent filed Exhibit D and E and described them as: Distributor / Dealer Web Portal log in information e-mail from Doorking, Inc. and Distributor / Dealer Correspondent e-mail from Doorking, Inc.; however they do not show reference to a distributor relationship between Complainant and Respondent. Moreover, the only invoices submitted by Respondent (Exhibit F and G) refer to purchases performed by Upswung LLC on January 23, 2014 and March 27, 2014.
According to the Panel’s conclusion, there has not been submitted evidence to prove the fact stated by Respondent as regards being a distributor.
Based on the fact that Respondent has not licensed or otherwise authorized Respondent to register the disputed domain names, the Panel holds that Respondent is not commonly known by the disputed domain names for the purposes of Policy ¶ 4(c)(ii). See also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). See also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
As mentioned before, this Panel concludes that there was not filed evidence about a distribution relation between Complainant and Respondent. In addition, even if it had been the case, this Panel finds that Respondent fails to meet the test for a reseller according to Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). In this respect, according to Complainant’s evidence Respondent does not sell only the trademarked goods. The disputed domain name resolves in a website where there are links to Complainant’s competitors and encourages visitors to click on a link for a main store which redirects to <upswung.com> in which there are Complainant and competitor’s goods for sale.
Previous Panels have noted that redirecting a domain name to other domain names is not a bona fide offering of goods and services. See Nortel Networks Limited v. Dimitar Dimitrov d/b/a ICDSoft.com, FA 360565 (Nat. Arb. Forum Dec. 20, 2004) (Respondent uses the disputed domain names to redirect Internet users to a website that purports to sell new and used products manufactured by Complainant. Respondent’s use of domain names confusingly similar to Complainant’s registered mark to divert Internet users to a website that sells Complainant’s products is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).).
This Panel finds that Respondent’s use of the disputed domain names 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) because Respondent has not met the test for a reseller according to Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001).
Moreover, Respondent does not have rights or legitimate interests in the domain names and does not satisfy Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
This Panel holds that Respondent’s registration and use of the disputed domain names constitutes bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). Respondent used confusingly similar domain names to sell both Complainant’s products (without authorization to do so) and other Complainant’s competitor’s ones. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
This Panel finds that Complainant submitted clear evidence to prove that Respondent does not offer only the trademarked goods but also Complainant’s competitors goods. The disputed domain name resolves in a website where there are links to Complainant’s competitors and the website also encourages visitors to click on a link for a main store which redirects to <upswung.com> in which there are Complainant and competitor’s goods for sale.
Respondent’s argument about the apparent common practice of back linking to building better organic listing in Google and to increase traffic is not sufficient to support Respondent’s position and this Panel finds the use of the domain name is in bad faith. See Univ. of Houston Sus. v. Salvia Corp., FA 637920 (Nat. Arb. Forum March 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non competing websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to UDRP 4 (b) (iv)).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <doorkingparts.com> domain name be TRANSFERRED from Respondent to Complainant.
Héctor Ariel Manoff, Panelist
Dated: August 14, 2014
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