U.S. Green Building Council v. David Wardell / leedinternational
Claim Number: FA1612001705900
Complainant is U.S. Green Building Council (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is David Wardell / leedinternational (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leedintl.us>, 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 5, 2016; the Forum received payment on December 5, 2016.
On December 5, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <leedintl.us> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 7, 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@leedintl.us. Also on December 7, 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.
On January 3, 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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.
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 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 <leedintl.us> is confusingly similar to Complainant’s LEED mark, as it contains the mark in its entirety, merely differing through the addition of the geographic descriptor “intl,” and the country code top-level domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in the disputed domain name. 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 does not resolve to an active page, evincing Respondent’s failure to use the domain for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent should be considered as having registered and used the disputed domain in bad faith. Respondent’s registration and use of <leedintl.us> is part of a pattern of bad faith registration and use as described in Policy ¶ 4(b)(ii). Further, Respondent has failed to make an active use of the domain name, further evidence of bad faith under Policy ¶ 4(a)(iii). Finally, Respondent had actual knowledge of Complainant’s rights in the mark at the time it registered the disputed domain, as the domain was registered after Complainant filed for a U.S. Federal court order to enjoin such conduct.
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 name was created on or about July 20, 2014.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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.”).
Complainant claims rights in the <leedintl.us> mark based upon registration with the USPTO (e.g., Reg. No. 2,763,993, registered Sept. 16, 2003). Registration of a mark with the USPTO is sufficient to establish rights in that mark. 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). The Panel here finds that Complainant’s registration of the LEED mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <leedintl.us> is confusingly similar to Complainant’s LEED mark, as the domain contains the mark in its entirety, merely differing through the addition of the geographic descriptor “intl,” and the ccTLD “.us.” Addition of a geographic term and a gTLD are insufficient to distinguish a mark under a Policy ¶ 4(a)(i) analysis for confusing similarity. See Tyco International Services GmbH v. TYCOINT SCOT, FA 1590501 (Forum Dec. 22, 2014) (“The disputed domain name is identical to Complainant’s registered trademark, but for the addition of the term “intl,” a common abbreviation for the generic term “international,” and the “.com” top-level domain. These additions do not substantially diminish the similarity with Complainant’s mark.”); see also Lockheed Martin Corp. v. Roberson, FA 323762 (Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark). The Panel here finds that Respondent’s <leedintl.us> is confusingly similar to Complainant’s LEED mark pursuant to 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 <leedintl.us> as Respondent is not commonly known by the disputed domain name, nor has Complainant granted Respondent license or other rights to use the LEED mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, despite being listed as such in WHOIS. 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).”). Respondent did not file a response, however, the WHOIS information of record identifies Respondent as “David Wardell” with “leedinternational.” Lack of evidence in the record indicating the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar Int’l Corp. v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel here finds that under Policy ¶ 4(c)(iii), Respondent has not been commonly known by the disputed domain name.
The Panel further finds that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). In fact, Complainant provides evidence of a U.S. District Court order barring Respondent from using the LEED mark in any capacity. Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain names is evinced by the failure to use the names for a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent’s <leedintl.us> resolves to an inactively-held page. 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 <leedintl.us> is evidence of its lack of rights or legitimate interests in the disputed domain name and failure to make a bona fide offer of goods or services or a legitimate non-commercial or fair use.
Respondent makes no contentions with regard to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action, the 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 contends that Respondent’s registration of <leedintl.us> is part of a pattern of bad faith registration. A showing of a history of bad faith registration can itself be evidence of bad faith. See Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”) Complainant points to eighteen additional domain names, addressed in a separate UDRP complaint, containing the LEED mark, which were registered by Respondent. The Panel here finds that Respondent’s registration of multiple domains targeting the LEED mark is evidence of bad faith registration and use in this case per 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 argues 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 <leedintl.us> resolves to a site that says it is “under construction.” The Panel here finds Respondent’s actions constitute inactive holding and finds Respondent registered and/or is using the domain 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 <leedintl.us> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 17, 2017
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