U.S. Green Building Council v. David Wardell / Leed International / Wardell Consulting / leedinternational / leedsaudiarabia
Claim Number: FA1612001705557
Complainant is U.S. Green Building Council (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is David Wardell / Leed International / Wardell Consulting / leedinternational / leedsaudiarabia (“Respondent”), Oklahoma, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <leedabudhabi.com>, <leedbahrain.com>, <leeddubai.com>, <leedinternational.biz>, <leedinternational.net>, <leedintl.biz>, <leedintl.info>, <leedintl.org>, <leedjordan.com>, <leedksa.com>, <leedksa.org>, <leedkuwait.com>, <leedmiddleeast.com>, <leedqatar.net>, <leedsaudiarabia.com>, <leeduae.com>, <leedintl.net>, and <leedintl.com>, registered with Tucows Domains 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 2, 2016; the Forum received payment on December 2, 2016.
On December 2, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <leedabudhabi.com>, <leedbahrain.com>, <leeddubai.com>, <leedinternational.biz>, <leedinternational.net>, <leedintl.biz>, <leedintl.info>, <leedintl.org>, <leedjordan.com>, <leedksa.com>, <leedksa.org>, <leedkuwait.com>, <leedmiddleeast.com>, <leedqatar.net>, <leedsaudiarabia.com>, <leeduae.com>, <leedintl.net>, and <leedintl.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 December 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@leedabudhabi.com, postmaster@leedbahrain.com, postmaster@leeddubai.com, postmaster@leedinternational.biz, postmaster@leedinternational.net, postmaster@leedintl.biz, postmaster@leedintl.info, postmaster@leedintl.org, postmaster@leedjordan.com, postmaster@leedksa.com, postmaster@leedksa.org, postmaster@leedkuwait.com, postmaster@leedmiddleeast.com, postmaster@leedqatar.net, postmaster@leedsaudiarabia.com, postmaster@leeduae.com, postmaster@leedintl.net, and postmaster@leedintl.com. Also on December 6, 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 January 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, U.S. Green Building Council, is a membership-based, nonprofit organization. Complainant uses its LEED mark to run a certification program that promotes sustainable, green building construction around the world. Complainant has rights to the LEED mark based upon registration with the United States Patent and Trademark Office (“USPTO”) and other trademark agencies throughout the world (e.g., Reg. No. 2,763,993, registered Sept. 16, 2003).
Respondent’s <leedabudhabi.com>, <leedbahrain.com>, <leeddubai.com>, <leedinternational.biz>, <leedinternational.net>, <leedintl.biz>, <leedintl.info>, <leedintl.org>, <leedjordan.com>, <leedksa.com>, <leedksa.org>, <leedkuwait.com>, <leedmiddleeast.com>, <leedqatar.net>, <leedsaudiarabia.com>, <leeduae.com>, <leedintl.net>, and <leedintl.com> are confusingly similar to Complainant’s LEED mark because they each incorporate the mark entirely and merely add geographic descriptors (“abudhabi,” “bahrain,” “dubai,” “international,” “intl,” “jordan,” “ksa,” “kuwait,” “middle east,” “qatar,” “saudi arabia,” “uae”) and a generic top-level domain (“gTLD”) (“.com,” “.biz,” “.net,” “.org”).
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by any name related to the LEED family of marks, and Complainant has never granted Respondent any license or other rights to use the marks in commerce for any purpose. Respondent’s domain names do not resolve to any active content, thus failing to reflect the presence of any bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and used the domain names in bad faith. First, Respondent has 18 domain names involved in this dispute, and has been involved in litigation resulting in a District Court order enjoining the use of <leedintl.net>, and <leedintl.com> for trademark infringement, dilution, and cybersquatting. Respondent also registered and used the domain names with actual knowledge of Complainant and its rights in the LEED marks because the marks have no meaning other than as identifying Complainant. All the domain names incorporate the mark entirely, and the previous litigation in which both parties were involved prior to Respondent’s registration of 12 of the domain names at issue further support a finding of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is U.S. Green Building Council of Washington, DC, USA. Complainant is the owner of domestic registrations for the mark LEED and numerous related marks, constituting the LEED family of marks. Complainant has continuously used the LEED mark since at least as early as 1996 in connection with its provision of a certification program for those involved in the use of sustainable, green building improvements, enhancements and construction.
Respondent is David Wardell / leedinternational of Waxahachie, TX, USA. Respondent’s registrar’s address is listed as Toronto, ON, Canada. The Panel notes the disputed domain names were created on or about the following dates;
<leedabudhabi.com>............................................................. February 26, 2016;
<leedbahrain.com>................................................................. August 18, 2016;
<leeddubai.com>..................................................................... February 26, 2016;
<leedinternational.biz>.......................................................... August 16, 2016;
<leedinternational.net>.......................................................... August 16, 2016;
<leedintl.biz>............................................................................ July 20, 2014;
<leedintl.info>........................................................................... July 20, 2014;
<leedintl.org>........................................................................... July 20, 2014;
<leedjordan.com>................................................................... August 18, 2016;
<leedksa.com>......................................................................... August 14, 2014;
<leedksa.org>.......................................................................... February 26, 2016;
<leedkuwait.com>................................................................... February 26, 2016;
<leedmiddleeast.com>........................................................... February 26, 2016;
<leedqatar.net>........................................................................ August 18, 2016;
<leedsaudiarabia.com>......................................................... February 26, 2016;
<leeduae.com>........................................................................ February 26, 2016;
<leedintl.net>............................................................................ July 9, 2008; and
<leedintl.com>.......................................................................... June 27, 2008.
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 (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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities controlling the domain names at issue are effectively controlled by the same person and/or entity, operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends:
1. each of the domains incorporate USGBC’s valuable LEED Family of Marks with either geographic descriptors of Middle Eastern countries or the word, or abbreviation for, ‘international;’
2. all of the Domains list David Wardell as the owner in the WHOIS information; and
3. the WHOIS information for each of the Domains shows that the David Wardell listed as the owner is the same David Wardell for each despite different addresses and phone numbers because (a) many of the domains are registered at the same address, demonstrating that the registrant for the domains registered at the same address is the same individual named David Wardell, even if the registrations list different alleged registrant organizations; (b) at least one domain that uses each of the three addresses has listed the fake company Leed International as the registrant organization, confirming that the individual allegedly residing at each of those addresses is the same David Wardell residing at other addresses; (c) seventeen (17) of the Domains share an email address in common with another domain registered at a different address and the eighteenth (18th) domain uses the email address associated with one
of the other registered Domains at issue, again confirming overlap in ownership; and (d) sixteen (16) of the Domains are hosted at the same IP address, and the remaining two (2) Domains were part of the federal litigation that USGBC filed against Respondent, confirming that, despite the information included in the WHOIS records for those Domains, the individual residing at the Waxachie address (and now the Tulsa address) owns those domains (discussing two domains); (containing proof of service of complaint at Waxachie address).
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled.
Complainant claims rights to the LEED mark based upon registration with the USPTO and other trademark agencies throughout the world (e.g., Reg. No. 2,763,993, registered Sept. 16, 2003). USPTO registrations demonstrate rights. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). This Panel here finds that Complainant’s USPTO registrations indicate its rights in the LEED mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <leedabudhabi.com>, <leedbahrain.com>, <leeddubai.com>, <leedinternational.biz>, <leedinternational.net>, <leedintl.biz>, <leedintl.info>, <leedintl.org>, <leedjordan.com>, <leedksa.com>, <leedksa.org>, <leedkuwait.com>, <leedmiddleeast.com>, <leedqatar.net>, <leedsaudiarabia.com>, <leeduae.com>, <leedintl.net>, and <leedintl.com> are confusingly similar to Complainant’s LEED mark because they each incorporate the mark entirely and merely add geographic descriptors (“abudhabi,” “bahrain,” “dubai,” “international,” “intl,” “jordan,” “ksa,” “kuwait,” “middle east,” “qatar,” “saudi arabia,” “uae”) and a gTLD (“.com,” “.biz,” “.net,” “.org”). Geographic terms and gTLDs have been found to be nondistinguishing features. See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel here finds that the disputed domains are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent makes no contention with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes 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). Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by any name related to the LEED family of marks, and Complainant has never granted Respondent any license or other rights to use the marks in commerce for any purpose. Where no response is on record, WHOIS information is typically seen as important in consideration of Policy ¶ 4(c)(ii). See The Toronto-Dominion Bank v. RD BANK /-, FA1404001554468 (Forum May 13, 2014) (“WHOIS information for the <rdbank.com> domain name lists ‘RD BANK /-‘ as the domain name’s registrant. However, there is nothing in the record that corroborates the WHOIS data’s suggestion that Respondent may be commonly known by the <rdbank.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to [UDRP] Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies Respondent as “David Wardell / Leed International / Wardell Consulting / leedinternational / leedsaudiarabia” which would support that Respondent is commonly known by the terms of the domain names, if additional evidence was present. But see Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). Complainant notes that although Respondent once registered a business under the name Leed International LLC, Respondent allowed that business name to go defunct when faced with an infringement lawsuit filed by Complainant.
Further, Complainant points out that there is no evidence to suggest Respondent has conducted any business using that name. The Panel here finds that Respondent is not commonly known by any of the domain names under Policy ¶ 4(c)(ii).
Next, Complainant contends that Respondent’s domain names do not resolve to any active content, which negates a conclusion of bona fide offering of goods or services or any legitimate noncommercial or fair use. Inactive holding of a domain is evidence of a respondent’s lack of rights or legitimate interests in a domain. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel here finds that Respondent’s inactive holding of the disputed domain names is evidence of its lack of rights or legitimate interests in the domain names for failure to make a bona fide offer of goods or services or a legitimate non-commercial or fair use.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant argues that Respondent registered and used the domain names in bad faith. First, Complainant notes that Respondent has 18 domain names involved in this dispute, and has been involved in litigation resulting in a District Court order enjoining the use of <leedintl.net>, and <leedintl.com> for trademark infringement, dilution, and cybersquatting. Merely possessing several infringing domain names can be evidence of a pattern of bad faith under Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). The Panel here finds that Respondent has demonstrated a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant also argues Respondent’s prior use of two “LEED formative domains” to create a false association between Respondent’s consulting services and Complainant confirms Respondent had no intention to use the disputed domain in good faith. Attempts to confuse and attract Internet users for commercial gain can be evidence of bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (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). Complainant does not provide evidence for intent to confuse or likely commercial gain in the instant case, but points to Respondent’s prior conduct in targeting the LEED mark. The Panel here finds that Respondent intended to confuse and attract consumers for commercial gain in the instant case and finds Respondent acted in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant further contends that Respondent’s bad faith is evident through its inactive holding of the disputed domain name. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). Respondent’s domain names resolve to a site that reads, “This site is under construction.” The Panel here finds Complainant’s inactive holding supports the conclusion that Respondent registered and is using the domains in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <leedabudhabi.com>, <leedbahrain.com>, <leeddubai.com>, <leedinternational.biz>, <leedinternational.net>, <leedintl.biz>, <leedintl.info>, <leedintl.org>, <leedjordan.com>, <leedksa.com>, <leedksa.org>, <leedkuwait.com>, <leedmiddleeast.com>, <leedqatar.net>, <leedsaudiarabia.com>, <leeduae.com>, <leedintl.net>, and <leedintl.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 19, 2017
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