General Steel Domestic Sales, LLC d/b/a General Steel Corporation and Anthem Steel Corp., LLC d/b/a Anthem Steel Corporation v. Rodney Chamness, Esq. / ICON Domains, LLC
Claim Number: FA1509001636155
Complainant is General Steel Domestic Sales, LLC d/b/a General Steel Corporation and Anthem Steel Corp., LLC d/b/a Anthem Steel Corporation (“Complainant”), Colorado, USA. Respondent is Rodney Chamness, Esq. / ICON Domains, LLC (“Respondent”), represented by Marcus Mataga of Pakis, Giotes, Page & Burleson, P.C., Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <general-steel-buildings.com>, <anthem-steel-buildings.com>, and <anthem-steel.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 2, 2015; the Forum received payment on September 2, 2015.
On September 2, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <general-steel-buildings.com>, <anthem-steel-buildings.com>, and <anthem-steel.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 September 4, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 2015 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@general-steel-buildings.com, postmaster@anthem-steel-buildings.com, and postmaster@anthem-steel.com. Also on September 4, 2015, 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 September 23, 2015.
On September 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
· General Steel has statutory and common-law trademark rights in its pre-fabricated steel building name and products bearing the name General Steel Corporation.
· General Steel owns federal trademark Registration No. 2,668,226 for “GENERAL STEEL CORPORATION and Design”. This registration was filed on May 18, 2001 and issued on December 31, 2002. General Steel’s federal trademark registration is incontestable. An incontestable registration is conclusive evidence of the validity of the mark, its registration, the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark on the goods specified in the registration. This means that General Steel has incontestable trademark rights in the words “General Steel” and “General Steel Corporation” because these words are a salient part of the registered mark.
· General Steel owns federal trademark Registration No. 85779218 for “GENERAL STEEL CORPORATION” standard character word mark. This registration was filed on November 14, 2012 and issued on July 31, 2013.
· For the past twenty years, all aspects of the pre-fabricated steel buildings General Steel sells throughout the country have been identified with the name and stylized logo for General Steel. The actual steel building component parts have the name and logo for General Steel affixed to the steel. The building plans and documents bear the name and logo for General Steel. All of General Steel’s marketing materials bear the name and logo for General Steel. General Steel markets its name and pre-fabricated steel building products to millions of customers nationwide, having spent millions of dollars for such advertising and marketing.
· General Steel is one of the world’s leading providers of pre-fabricated steel buildings. See, www.gensteel.com; www.generalsteel.com; www.generalsteelcorporation.com; www.thenewgeneralsteel.com. General Steel’s name has become widely known throughout the United States and the world when consumers are looking to purchase a pre-engineered steel building. General Steel has statutory and common-law trademark rights in its pre-fabricated steel building name and products bearing the name General Steel Corporation.
· For the past twenty years, General Steel has advertised on syndicated radio shows such as The Rush Limbaugh Show, The Paul Harvey Show, The Sean Hannity Show, and others. Links to some of these ads can be found on General Steel’s website at www.gensteel.com. The ads for General Steel on these shows alone have reached approximately 12 - 14 million listeners per week. General Steel has also advertised extensively in newspapers and other print media reaching millions more.
· General Steel has also used the Internet extensively to market its name and products. In the steel and metal building market, the most commonly searched terms on the Internet used by consumers looking to purchase steel/metal buildings are “steel buildings” and “metal buildings.” General Steel is at the top of all companies in their relevant steel/metal building market. General Steel currently ranks second in the Google rankings for “steel buildings” searches and third in “metal buildings” searches. General Steel’s main website, www.gensteel.com receives approximately 50,000 Unique Visitors each month.
· General Steel’s name is, accordingly, one of the top two or three most well-known names in its pre-engineered steel building market. As shown herein, General Steel has a strong and incontestable trademark in its name “General Steel.”
Anthem Steel Trademark
· Anthem Steel is a sister company to General Steel. Anthem Steel and General Steel do business from the same corporate offices in Littleton, Colorado.
· Anthem Steel has been doing business since 2004.
· Anthem Steel Corp., LLC owns a federal trademark (Registration No. 4,458,518)(registration date 12/31/13) with the USPTO for the word mark “Anthem Steel”.
· Anthem Steel has statutory and common-law trademark rights in its pre-fabricated steel building name and products bearing the name Anthem Steel. All aspects of the pre-fabricated steel buildings Anthem sells throughout the country are identified with the name and stylized logo for Anthem Steel. The actual steel building component parts have the name and logo for Anthem Steel affixed to the steel. The building plans and documents bear the name and logo for Anthem Steel.
· Anthem Steel has advertised extensively since 2004 on the internet and in other media. All of Anthem Steel’s marketing materials bear the name and logo for Anthem Steel. Anthem Steel markets its name and pre-fabricated steel building products to many thousands of customers nationwide, spending many thousands of dollars per year for such advertising and marketing.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[All three elements of the Policy must be alleged and proved by the Complainant. UDRP Para. 4(a).] [The analysis in this section may require more space than provided, but the entire Complaint shall not exceed fifteen (15) pages. FORUM Supp. Rule 4(a).]
[a.] Specify in the space below the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
a. General-steel-buildings. This domain name being used by Respondent is plainly identical and/or confusingly similar to General Steel’s trademark.
b. Anthem-steel-buildings. This domain name being used by Respondent is plainly identical and/or confusingly similar to Anthem Steel’s trademark.
c. Anthem-steel. This domain name being used by Respondent is plainly identical and/or confusingly similar to Anthem Steel’s trademark.
[b.] Specify in the space below why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(c).
Screen Shots of Respondent’s webpages for each of the domains (general-steel-buildings; anthem-steel-buildings; and anthem-steel) were submitted with the Complaint.
Respondent Icon Building Systems is a competitor of General Steel with offices in Texas. Respondent Icon Building Systems uses its “metalbuildingdepot.com” website/domain to market steel buildings to the public. The domains in dispute using General Steel and Anthem Steel’s marks go to Respondent’s web pages advertising competing steel building products.
Respondent Icon Building Systems has no rights or legitimate interest whatsoever to use General Steel or Anthem Steel’s names in its internet domain names. Plainly, Respondent is using General Steel and Anthem Steel’s names on the internet to steal General Steel and Anthem Steel’s customers and goodwill. General Steel and Anthem Steel have spent years protecting their names and building their names on the internet.
[c.] Specify in the space below why the domain name(s) should be considered as having been registered and being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(b).
Respondent’s use of General Steel and Anthem Steel’s names to redirect General Steel customers and potential customers to their own competing steel building websites is blatantly in bad faith. General Steel’s customers and potential customers looking on the internet for General Steel and/or Anthem Steel will be taken to Respondent’s identical or confusingly similar domain names and hijacked by Respondent. There could be no conceivable “good faith” basis for Respondent to claim to have the right to use the domain names in question. Respondent knows full well that General Steel and its sister company, Anthem Steel, are some of the most well known and searched terms in their industry. Respondent’s claim to be the “Google or Microsoft of the metal building industry” according to their owner Mark Moore. Respondent’s blatant disregard of General Steel and Anthem Steel’s rights is without question done in bad faith.
Indeed, the general-steel-building.com webpage being used by Respondent states in relevant part as follows:
General Steel Buildings
Build and Buy Online!
Thank you for visiting General Steel Buildings. We provide the best service and prices when shopping for metal buildings or steel buildings.
Respondent is misrepresenting that they are General Steel and they sell General Steel Buildings. Their domain name and website are false and being used in bad faith to steal General Steel’s customers and harm General Steel.
And the anthem-steel-building.com webpage (and anthem-steel.com) being used by Respondent states in relevant part as follows:
Anthem Steel Buildings
Build and Buy Online!
Thank you for visiting Anthem Steel Buildings. We provide the best service and prices when shopping for metal buildings or steel buildings.
B. Respondent
The <general-steel-buildings.com>, <anthem-steel-buildings.com> and <anthem-steel.com> domain names were registered February 14, 2005. Respondent claims he is not the authorized representative of ICON Domains, LLC (although he was their attorney in the past). Respondent has not represented ICON Building Systems, LLC since March 2009. Respondent has never agreed to serve as the registrant or to allow its name to be used as the registrant of the disputed domain names. Prior to receiving notice of this proceeding, Respondent claims that it was unaware his name had been used to register the disputed domain names. Respondent does not know the current contact information for ICON Building Systems, LLC or ICON Domains, LLC. Respondent argues that it has no knowledge regarding the use of the disputed domain names, and therefore does not respond to the merits of Complainant’s allegations.
Respondent requests that the Panel finds that Respondent Rodney Chamness is not affiliated with nor the authorized representative of ICON Domains, LLC or ICON Building Systems; that Respondent Rodney Chamness did not authorize the use of his name as the registrant of the domain names and has no control of those domain names; and that Respondent Rodney Chamness does not have and has never had access or control over the email address r.chamness@icon-domains.com; and that Respondent Rodney Chamness should be removed as the registrant of record for the domain names in question.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 General Steel is one of the world’s leading providers of pre-fabricated steel buildings. Complainant owns federal trademark rights in the GENERAL STEEL CORPORATION mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,668,226, registered Dec. 31, 2002). Registration of a mark with a trademark authority (such as the USPTO) is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See 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)). Complainant’s USPTO registration is sufficient to establish Complainant’s rights in the GENERAL STEEL CORPORATION mark under Policy ¶ 4(a)(i).
Complainant owns common law rights to the ANTHEM STEEL mark, as evidenced by Complainant’s extensive advertising efforts since 2004. The Policy does not require Complainant’s trademark be registered by a government authority or agency to establish rights in the mark under ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Complainant has established a secondary meaning in the ANTHEM STEEL mark and asserts common law rights in the mark through its continuous use of the mark since 2004 and its extensive advertising expenditures. All aspects of the pre-fabricated steel buildings are identified with the name and stylized logo for ANTHEM STEEL, and the actual steel building component parts have the name and logo for ANTHEM STEEL affixed to the steel. All of Complainant’s marketing materials bear the ANTHEM STEEL name and logo, and its pre-fabricated building products have been marketed to many thousands of customers nationwide. Complainant has established secondary meaning in its mark. Complainant owns common law rights in the ANTHEM STEEL mark, satisfying the initial requirement of Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning).
Complainant owns federal trademark rights in the Anthem Steel through its registration with the USPTO (Reg. No. 4,458,518 registered Dec. 31, 2013, with a date of first use in commerce of November 2004…which predates the registration of the Anthem Steel related domain names). Registration of a mark with a trademark authority (such as the USPTO) is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See 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)). In this case, the Panel decides the effective date of the registration should related back to the date of first use. Complainant’s USPTO registration is sufficient to establish Complainant’s rights in the Anthem Steel mark under Policy ¶ 4(a)(i).
Complainant claims the <general-steel-buildings.com> domain name is confusingly similar to Complainant’s GENERAL STEEL CORPORATION mark. Respondent inserts two hyphens, adds the generic term “buildings,” removes the word “corporation,” and inserts the gTLD “.com.” The <anthem-steel-buildings.com> and <anthem-steel.com> domain names are confusingly similar to Complainant’s ANTHEM STEEL mark. In the <anthem-steel-buildings.com> domain name, Respondent (or the person impersonating Respondent) adds hyphens, the generic term “buildings,” and inserts the gTLD “.com.” In the <anthem-steel.com> domain name, Respondent inserts a hyphen and attaches the gTLD “.com.” The addition of hyphens is irrelevant to the analysis of confusing similarity under a Policy ¶ 4(a)(i) analysis. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). The addition of generic terms, such as “buildings,” does not prevent a finding of confusing similarity under a Policy ¶4(a)(i) analysis. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Removing a portion of a complainant’s mark does not adequately distinguish the disputed domain name from the registered mark. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). The addition of a gTLD does nothing to prevent a finding of confusing similarity under Policy ¶4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the disputed domain names are confusingly similar to Complainant’s marks under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 should be considered as having no rights or legitimate interests in respect of the disputed domain names. Respondent appears to agree and claims he never registered the domain names in question. The WHOIS information for the disputed domain names refers to “Rodney Chamness, Esq. / ICON Domains, LLC” as the registrant of record. Respondent claims his identity was stolen to register the disputed domain names. With these facts, Respondent has no claim to have any rights to the disputed domain names. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims Respondent has failed to provide a bona fide offering of goods and services or a legitimate noncommercial or fair use through the disputed domain names. Once again, Respondent appears to agree. Complainant claims Respondent uses the disputed domain names to market competing steel building services. One of Complainant’s competitors appears to be the beneficiary of the disputed domain names (and Respondent disclaims any affiliation with that competitor). There is no doubt the resolving web site competes with Complainant. Using of a confusingly similar domain name to market competing products and services is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Respondent’s domain names are not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Finally, the WHOIS information for the disputed domain names is fictitious. In a commercial context, this raises the rebuttable presumption Respondent has no rights to the disputed domain names. This Respondent expressly disclaims any rights or relationships to these domain names (and claims he was impersonated when the domain names were registered). The “beneficiary” of the registration apparently did not want to register the domain names in its own name. Respondent has no relationship to the “beneficiary” since 2009. Therefore, this Panel agrees Respondent has acquired no rights to the disputed domain names.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s registration and use of the disputed domain names disrupts Complainant’s business by misleading Complainant’s consumers. The disputed domain names to redirect Complainant’s customers and potential customers to a competing steel building website. Respondent claims never to have registered the disputed domain names and claims someone else did so by impersonating him. There is bad faith under Policy ¶ 4(b)(iii) when a confusingly similar domain name diverts a complainant’s customers to a competing business. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶4(b)(iii) by redirecting Internet users to the respondent’s competing website). Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
The WHOIS contact information is incorrect in this case. Someone impersonated Respondent to use his name to register the disputed domain names. This raises a rebuttable presumption of bad faith registration and use by the person who impersonated Respondent (who disclaims any interest in the disputed domain names). This alone justifies a finding of bad faith registration and use.
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <general-steel-buildings.com>, <anthem-steel-buildings.com> and <anthem-steel.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, October 12, 2015
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