Van Beek Drywall, Inc. v. Al Perkins
Claim Number: FA1602001660084
Complainant is Van Beek Drywall, Inc. (“Complainant”), represented by Molly A. Terwilliger of Summit Law Group, PLLC, Washington, United States. Respondent is Al Perkins (“Respondent”), Jersey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vanbeekdrywall.com>, registered with GoDaddy.com, LLC.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 8, 2016; the Forum received payment on February 8, 2016.
On February 9, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <vanbeekdrywall.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 February 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 29, 2016 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@vanbeekdrywall.com. Also on February 9, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 4, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 has been offering a variety of drywall services since approximately 1981. Complainant employs some of the top craftsmen in their trades, and offers its clients services including the supply, installation, and finishing of drywall, metal stud framing, shaft wall assemblies, wood framing, insulation, acoustic ceiling, priming, and texturing. Based on Complainant’s continued use of the VAN BEEK DRYWALL mark in connection with its goods and services since 1981, it owns common law rights in the mark. The disputed domain was registered by Complainant in 2008. In 2016, Complainant accidentally allowed the domain registration to lapse, and Respondent then registered it. The <vanbeekdrywall.com> domain is identical to Complainant’s mark because it wholly incorporates Complainant’s mark, merely eliminating the spaces between the words of the mark.
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent’s domain redirects users to the website, <pornolaba.com>, which contains graphic and pornographic materials. Additionally, Respondent is demanding $9,800 to return to Complainant its former domain. The Panel notes Attached Appendix E is a copy of the E-mail exchange between Complainant and various representatives at GoDaddy regarding the sale of the domain.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent has attempted to sell the domain for an amount in excess of its out-of-pocket costs for acquiring the domain. Second, Respondent has attempted to profit through its use of a domain that is identical to Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on December 5, 2008.
C. Additional Submissions
Rather than filing a Response, the Respondent sent the Forum a series of five, threatening and unprofessional emails. After offensively describing the Complainant, one email states as follows:
I smell a rat a big fat rat....I have over 3000 cases i want the defendant to answer each and every one (should keep them busy for a few weeks)
I want to file the response otherwise i go to court and stop the complaint...
The Panel finds that the disputed domain name is confusingly similar to the common law trademark of the Complainant, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration of the disputed domain name.
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(f), 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 Panel finds that there is no doubt that the disputed domain name is confusingly similar to Complainant’s common trademark VAN BEEK DRYWALL as the disputed domain name merely incorporates the mark in its entirety, excluding spaces, and adds the gTLD “.com”. The Respondent apparently has no permission or license to register the disputed domain name and is not commonly known by this appellation.
The only real question is whether Complainant has established common law rights in or to the trademark VAN BEEK DRYWALL as it has not been plead that it is registered with any governmental authority. To establish common law rights, Complainant must establish that it has used the trademark and that, through this use, consumers have come to recognize it as an identifier of the source of its goods or services, not, in this case, merely referring to a person.
Save for one sentence, Complainant fails to adequately plead that the VAN BEEK DRYWALL mark has secondary meaning. In order to adequately plead that a non-registered mark has secondary meaning, the Complainant needs to show advertising attempts, surveys (if they exist), or other evidence to establish that the mark has come to represent the goodwill of the Complainant. The sentence that saves Complainant’s complaint reads as follows:
Van Beek Drywall has worked hard to develop and maintain a solid reputation in Washington, particularly in Whatcom and Skagit counties.
Complaint at para. [7].
Elsewhere, Complainant claims that it has used the mark since 1981; however, it does not seem to include any evidence the Panel might rely on to support that assertion.
As this is a default case, the Panel accepts as true all well-plead and reasonable assertions. As Respondent has, contrary to the email threats it sent to the Forum, failed to file a responsive Response in this matter, the Panel accepts Complainant’s assertion regarding secondary meaning as true.
As such, the Panel finds that the mark VAN DEEK DRYWALL has secondary meaning and, as such, the disputed domain name is confusingly similar to the VAN BEEK DRYWALL mark.
The Panel further finds that Respondent has no rights or legitimate interest in or the disputed domain name. Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Respondent has no license or authorization to use Complainant’s mark. The WHOIS information merely lists “Al Perkins” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration.
As such, the Panel finds that the Respondent has no rights or legitimate interests in or to the disputed domain name.
Finally, the Panel finds that the Respondent engaged in bad faith use and registration of the disputed domain name. Respondent has attempted to sell the domain for an amount in excess of its out-of-pocket costs for acquiring the domain. This constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(i).
Also, Respondent has attempted to profit through its use of a domain identical to that of Complainant. When, as here, a respondent uses a domain to redirect Internet users to an adult-oriented website bad faith registration and use is established pursuant to Policy ¶ 4(b)(iv).
Complainant’s complaint is, however, very nearly deficient as it fails to allege that Respondent registered the disputed domain name with knowledge of its prior rights in or to the mark VAN DEEK DRYWALL. However, given the totality of the circumstances, the Panel finds that it is impossible for Respondent to have known and registered an identical domain name without knowledge of Complainant’s prior rights.
Therefore, the Panel finds that the Respondent engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <vanbeekdrywall.com> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: March 6, 2016
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