CPFilms, Inc. v. Todd Rudden
Claim Number: FA0604000677747
Complainant is CPFilms, Inc. (“Complainant”), represented by Ryan M. Kaatz, of Ladas & Parry, Digital Brands Practice, 224 South Michigan Avenue, Chicago, IL 60604. Respondent is Todd Rudden (“Respondent”), 3 sieg town road unit 2b, Swaiton, NJ 08210.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <llumarfilm.com>, <llumarautotint.com>, <llumarprecuttint.com>, <llumartint.com>, <llumartintprecut.com> and <precutllumartint.com>, registered with Go Daddy Software, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 11, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 14, 2006.
On April 12, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <llumarfilm.com>, <llumarautotint.com>, <llumarprecuttint.com>, <llumartint.com>, <llumartintprecut.com> and <precutllumartint.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 8, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@llumarfilm.com postmaster@llumarautotint.com, postmaster@llumarprecuttint.com, postmaster@llumartint.com, postmaster@llumartintprecut.com, postmaster@precutllumartint.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 12, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <llumarfilm.com>, <llumarautotint.com>, <llumarprecuttint.com>, <llumartint.com>, <llumartintprecut.com> and <precutllumartint.com> domain names are confusingly similar to Complainant’s LLUMAR mark.
2. Respondent does not have any rights or legitimate interests in the <llumarfilm.com>, <llumarautotint.com>, <llumarprecuttint.com>, <llumartint.com>, <llumartintprecut.com> and <precutllumartint.com> domain names.
3. Respondent registered and used the <llumarfilm.com>, <llumarautotint.com>, <llumarprecuttint.com>, <llumartint.com>, <llumartintprecut.com> and <precutllumartint.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, CPFilms, Inc., is a subsidiary of Solutia, a worldwide provider of applied chemistry products. Complainant manufactures solar control and safety window film for both automotive and building applications. Complainant is the world’s largest manufacturer of window film and uses the LLUMAR mark in connection with an innovative, micro-thin, high-performance window film.
Complainant has registered the LLUMAR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,089,700 issued April 18, 1978).
Respondent registered the disputed domain names on January 18, 2005. Respondent is using the disputed domain names to redirect Internet users to a website at the <shoreshade.com> domain name, which advertises “Shore Shade Window Tinting.” The website displays a phone number and online entry form for “Window Tinting Estimates.”
Respondent called Complainant on March 27, 2006, offering to transfer the disputed domain names in exchange for a roll of LLUMAR film, which, according to Complainant is valued at between $250 and $300 per roll. When Complainant called Respondent on April 4, 2006, Respondent withdrew the offer, stating that it had received other offers and was listing the domain names for sale at values between $25,000 and $50,000. On April 7, 2006, Respondent contacted Complainant and stated it would transfer the disputed domain names for a roll of film per domain name, amounting to almost $1,800. As of that date, Respondent was also listing the disputed domain names for sale at values between $1,000 and $5,000.
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."
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(e), 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.”).
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.
Because Complainant
has registered the LLUMAR mark with the USPTO, Complainant has established
rights in the mark under Policy ¶ 4(a)(i).
See Vivendi Universal Games v. XBNetVentures Inc., FA 198803
(Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”);
see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
In addition, the <llumarfilm.com>, <llumarautotint.com>, <llumarprecuttint.com>, <llumartint.com>, <llumartintprecut.com> and <precutllumartint.com> domain names are confusingly similar to Complainant’s LLUMAR mark because each contains the entire registered mark and merely adds generic terms related to Complainant’s window film business, including “film,” “tint,” “precut” and “auto.” Panels have held that the addition of generic terms describing a complainant’s business does not negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business). Therefore, Respondent’s domain names are confusingly similar to Complainant’s LLUMAR mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights to or legitimate interests in the disputed
domain names. See Geocities v. Geocities.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Respondent has registered the domain names as “Todd Rudden,” and there is no other evidence in the record suggesting that Respondent is commonly known by the disputed domain names. Consequently, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Moreover, Respondent’s disputed domain names, which include
Complainant’s LLUMAR mark, resolve to a website selling window tinting and film
products in direct competition with Complainant. In Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003), respondent
registered the <wwwzyban.com> domain name and was redirecting Internet
users to a pharmaceutical site offering products that competed with
Complainant. The panel held that the
respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii). Id. Therefore, Respondent’s use of the
disputed domain name to divert Internet users to its own competing website for
commercial gain does not constitute a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use of the domain name pursuant to Policy ¶ 4(c)(iii). See Ultimate
Elecs., Inc. v. Nichols, FA 195683 (Nat.
Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain
name (and Complainant’s mark) to sell products in competition with Complainant demonstrates
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the name”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has offered to sell the disputed domain name
registrations to Complainant in exchange for rolls of window film and also at
various prices as high at $50,000.
Because Respondent is offering the domain name registrations for sale at
prices in excess of its out-of-pocket
costs, Respondent has registered and used the domain names in bad faith
pursuant to Policy ¶ 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent
registered the disputed domain name and offered to sell it to Complainant for $10,600.
This demonstrates bad faith registration and use pursuant to Policy ¶
4(b)(i).”); see also Gutterbolt,
Inc. v. NYI Bldg. Prods. Inc., FA 96076 (Nat. Arb. Forum Dec. 29, 2000)
(finding that the consideration demanded in exchange for a domain name registration
does not have to be monetary in nature to run afoul of Policy ¶ 4(b)(i), but
can be anything of value that exceeds the amount spent in registering and
maintaining the domain name).
Moreover, Respondent is using domain names confusingly
similar to Complainant’s LLUMAR mark to operate a competing commercial
website. Therefore, the Panel concludes
that Respondent has registered the disputed domain names for the primary
purpose of disrupting Complainant’s business pursuant to Policy ¶
4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters,
D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive
relationship between the complainant and the respondent, the respondent likely
registered the contested domain name with the intent to disrupt the
complainant's business and create user confusion); see also S.
Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered
the domain name in question to disrupt the business of the complainant, a competitor
of the respondent).
Furthermore, Respondent has registered and is using the disputed
domain names in bad faith pursuant to Policy ¶ 4(b)(iv), because Respondent is
attempting to attract, for commercial gain, Internet users to its own website
where it sells products that compete with Complainant. In Busy Body, Inc. v. Fitness Outlet, Inc.,
D2000-0127 (WIPO Apr. 22, 2000), the panel found that the respondent registered
and was using the <efitnesswarehouse.com> domain name in bad faith
because it was in the same line of business as the complainant, which had
registered the FITNESS WAREHOUSE mark with the USPTO, and was attempting to
attract complainant’s customers to its own website for commercial gain. Likewise,
Respondent, who is in the same line of business as Complainant, is taking
advantage of the confusing similarity between the domain names and
Complainant’s LLUMAR mark in order to profit from the goodwill associated with
the mark in violation of Policy ¶ 4(b)(iv).
See Nokia Corp. v. Private,
D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant
to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered
similar products as those sold under the complainant’s famous mark).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <llumarfilm.com>, <llumarautotint.com>, <llumarprecuttint.com>, <llumartint.com>, <llumartintprecut.com> and <precutllumartint.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 25, 2006
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