National Arbitration Forum

 

DECISION

 

Springfield Capital Group, LLC and Castle Windows, Inc. v. Dream House Windows

Claim Number: FA0902001249405

 

PARTIES

Complainant is Springfield Capital Group, LLC and Castle Windows, Inc. (“Complainants”), represented by Alexis Arena, Pennsylvania, USA.  Respondent is Dream House Windows (“Respondent”), represented by Edward W. Hoffman, of Domers & Bonamassa, P.C., New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <castlewindows.info>, registered with Go Daddy, Inc.

 

PANEL

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.

 

Hon. Charles A. Kuechenmeister (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum electronically on February 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 26, 2009.

 

On February 26, 2009, Go Daddy, Inc. confirmed by e-mail to the National Arbitration Forum that the <castlewindows.info> domain name is registered with Go Daddy, Inc. and that the Respondent is the current registrant of the name.  Go Daddy, Inc. has verified that Respondent is bound by the Go Daddy, 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 March 10, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 30, 2009 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@castlewindows.info by e-mail.

 

A Response was received on March 31, 2009.  However because the hard copy of this Response was received after the Response deadline the National Arbitration Forum does not consider this Response to be in compliance with ICANN Rule 5.

 

On April 8, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles A. Kuechenmeister (Retired) as Panelist.

 

RELIEF SOUGHT

Complainants request that the domain name be transferred from Respondent to Complainants.

 

PARTIES’ CONTENTIONS

A.        Complainant

1.         Complainants own the trademark CASTLE WINDOWS, which has been used by them continuously for over 25 years in connection with their windows products.

 

2.         Complainants’ interests include U.S. trademark Registration No. 3,421,726 issued May 6, 2008 for CASTLE WINDOWS, in connection with retail store services featuring windows and doors, held by Complainant Springfield Capital Group, LLC, and Registration No. 1,460,330 issued October 6, 1987 for CASTLE, THE WINDOWS PEOPLE, in connection with window replacement services, issued to Castle Builders & Remodelers, Inc., and subsequently assigned to Complainant Springfield Capital Group, LLC.

 

3.         Complainants use their trademark in connection with the following websites to generate substantial revenue from the purchase and sale of their window products:

 

www.castlewindows.com

www.castlewindows.biz

www.castlethewindowspeople.com

www.nj.castlethewindowspeople.com

 

4.         Complainants’ trademarks, including CASTLE WINDOWS, have obtained regional and national prominence in the market for windows.  The trademarks and associated goodwill are important assets of Complainants.

 

5.         The Respondent, Dream House Windows, is a direct competitor of Complainants.  It advertises and sells confusingly similar window products.

 

6.         Prior to the commencement of this proceeding the <castlewindows.info> domain (the “Domain Name”) was automatically referring customers who visited Respondent’s website at www.castlewindows.info to the website www.dreamhousewindows.com. 

 

7.         The Domain Name is identical to Complainants’ CASTLE WINDOWS trademark, and Respondent’s use of that mark in its website is likely to cause customer confusion as to the source of the window products advertised there.

 

8.         The addition of a generic top-level domain such as “.info” to an otherwise identical mark does not cause the Domain Name to be non-identical under Policy ¶ 4(a)(i).

 

9.         Respondent has no trademark or service mark rights in the CASTLE WINDOWS mark and is not commonly known by it. 

 

10.       Respondent does not sell goods or services in connection with the CASTLE WINDOWS name but has sought only to profit from using the mark to divert customers to its www.dreamhousewindows.com website, which advertises confusingly similar window products.  This is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)

 

11.       Respondent registered the Domain Name with knowledge of Complainants’ products and trademark, intentionally attempting to create a likelihood of confusion as to the source sponsorship, affiliation, or endorsement of the window products that were displayed when a customer visited Respondent’s website.

 

12.       Respondent’s use of the Domain Name is in bad faith and primarily for the purpose of disrupting Complainants’ business and profiting from Complainants’ marks and customer traffic.

 

B.         Respondent

1.         The Domain Name is similar to the CASTLE WINDOWS mark but not confusingly so.  Complainants offer no proof that confusion is actually occurring, and if a customer were in fact diverted to Respondent’s website through the Domain Name he will simply redefine his search to find his intended Castle Windows website.

 

2.         Respondent uses the Domain Name in connection with a bona fide offering of goods and services.  Like Complainants, Respondent is a window installation company.  The Domain Name directs customers to Respondent’s website.  If Complainants’ customers are looking for Complainants’ website they will redefine their search.  There is nothing in the content of Respondent’s website that would cause a reasonable person to be confused about which company’s site they are reviewing.  There is no evidence that Respondent is misleadingly diverting customers.

 

3.         There is no evidence that Respondent acquired the Domain Name primarily to sell it to Complainants.  Neither party has made any offer to the other for such purpose.

 

4.         There is no evidence that Respondent registered the Domain Name to prevent Complainants from registering it.  Complainants registered their domain names a long time ago and could have registered <castlewindows.info> then had they desired to do so.

 

5.         There is no evidence that Respondent registered the Domain Name to disrupt Complainants’ business or to create a likelihood of confusion.  Respondent has recognized the need to utilize the internet to sustain its business and has sought to increase traffic to its website by the use of many domain names.  If Complainants felt that the Domain Name was their exclusive property they should have registered it along with their other domain names.  This only became an issue after they discovered that Respondent had registered the Domain Name.

 

C. Additional Submissions

There were no additional submissions from either party.

 

DISCUSSION AND FINDINGS

Preliminary Issue: Deficient Response

 

Respondent filed a Response that was deficient because the National Arbitration Forum did not receive a hard copy of it before the Response deadline.  The Panel has discretion whether to consider Respondent’s submission, and regarding the amount of weight to give to it because it is not in compliance with ICANN Rule 5.  See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist); see also Bank of Am. Corp. v. NW Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (refusing to accept the respondent’s deficient response that was only submitted in electronic form because it would not have affected the outcome had the Panel considered it).  But see Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. . ."); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).  The Panel finds and determines that the interests of justice and the purposes of the Policy are best served by considering the Response as duly filed.  The electronic copy received is clear and legible.  It does not rely upon or refer to any attachments and is thus complete on its face.  It is the sense of the Panel that when the form of a filing, while technically deficient, is still sufficient to permit a matter to be fully adjudicated on its merits without prejudice to any party, the matter should be adjudicated on that basis. 

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.

 

The Panel makes the findings and determinations set forth below with respect to the matters at issue between the parties.

 

Identical and/or Confusingly Similar

 

1.         Complainants own the trademark CASTLE WINDOWS, which has been used by them continuously for over 25 years in connection with their windows products.

 

2.         Complainants have established rights in the CASTLE WINDOWS mark pursuant to U.S. trademark Registration No. 3,421,726 issued May 6, 2008 for CASTLE WINDOWS, in connection with retail store services featuring windows and doors, held by Complainant Springfield Capital Group, LLC, and Registration No. 1,460,330 issued October 6, 1987 for CASTLE, THE WINDOWS PEOPLE, in connection with window replacement services, issued to Castle Builders & Remodelers, Inc. and subsequently assigned to Complainant Springfield Capital Group, LLC (See, Exhibit B to Complaint).  This satisfies the requirement that Complainants establish rights in the mark pursuant to Policy ¶ 4(a)(i).  See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).

 

3.         The Domain Name consists of Complainant’s CASTLE WINDOWS mark, omitting the space between the two words of the mark, and the addition of the generic top-level domain (“gTLD”) “.info.”  These changes are irrelevant under Policy ¶ 4(a)(i).  The Domain Name is thus identical to Complainants’ CASTLE WINDOWS mark pursuant to Policy ¶ 4(a)(i).  See Microsoft Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“the Panel finds that Respondent’s <windows.info> domain name is identical to Complainant’s WINDOWS mark as the addition of a gTLD is a necessary addition in the creation of any domain name and therefore an indistinguishing characteristic under Policy ¶ 4(a)(i).“); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).

 

4.         Respondent contends that Internet users will not be confused when the <castlewindows.info> domain name redirects them to its <dreamhousewindows.com> website, but such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the panel should resolve whether a mark is identical or confusingly similar “by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used”); see also Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law).

 

5.         The Domain Name is identical or confusingly similar to the CASTLE WINDOWS mark, in which the Complainants have substantial and demonstrated rights.

 

Rights or Legitimate Interests

 

6.         If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to the 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); 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.”).

 

7.         Complainants demonstrate that they have not granted Respondent any license to use their CASTLE WINDOWS mark.  Further, they show that the WHOIS information associated with the Domain Name lists Respondent as “Dream House Windows” (see, Exhibit A to Complaint), a name which has no relationship whatever to CASTLE WINDOWS.  The Panel finds that they have thus presented a prima facie showing that Respondent has no right or legitimate interest in respect of the Domain Name.  It is incumbent upon Respondent to come forward with evidence demonstrating that it does.

 

8.         Respondent’s only evidence that it has any right or legitimate interest in respect of the Domain Name is the fact that it uses it to attract internet users to its website at www.dreamhousewindows.com, where it offers its window installation services.  Respondent claims that it is thus using the Domain Name in connection with a bona fide offering or goods or services under Policy ¶ 4(c)(i).  Given that the CASTLE WINDOWS mark incorporated into the Domain Name belongs to Complainants (direct competitors of Respondent), that Respondent knew of Complainants’ existence and rights in the CASTLE WINDOWS mark, and that Respondent demonstrates no independent, concurrent right in itself to use the CASTLE WINDOWS name, this use, in and of itself, cannot constitute a basis for proving that its use of that name is in connection with a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also 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).

 

9.         Further, Respondent has produced no evidence that it is commonly known by the name CASTLE WINDOWS or any other similar name.  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).  Respondent has thus not established rights or legitimate interests for itself in the Domain Name under Policy ¶ 4(c)(ii). 

 

10.       Accordingly, the Panel finds and determines that the Respondent has no rights or legitimate interests in respect of the subject domain name.

 

Registration and Use in Bad Faith

 

11.       Respondent is a direct competitor of Complainants and is using the Domain Name, which is identical to Complainants’ CASTLE WINDOWS mark, to direct internet traffic to Respondent’s website, at which Respondent sells window products and services similar to those of Complainants.  By doing so, Respondent intends to disrupt Complainants’ business, in effect poaching Internet users in search of Complainants.  This constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also 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).

 

12.       By this same conduct, Respondent is intentionally attracting, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.  This use of the Domain Name also constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).

 

13.       Accordingly, the Panel finds and determines that Respondent has registered and is using the Domain Name in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <castlewindows.info> domain name be TRANSFERRED from Respondent to Complainants.

 

 

 

Honorable Charles A. Kuechenmeister (Ret.)

Dated:  April 22, 2009