Texas Wind Power Company v. Wind Works c/o Savvy Dog Design, LLC
Claim Number: FA0903001252746
PARTIES
Complainant is Texas Wind Power Company (“Complainant”), represented by Peter D. Kennedy, of Graves, Dougherty, Hearon & Moody, P.C.,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <texaswindworks.com>, registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 25, 2009, and an amended copy of the Complaint on April 01, 2009.
On March 18, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <texaswindworks.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 22, 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@texaswindworks.com by e-mail.
A Response was received in electronic copy on April 22, 2009, prior to the Response deadline; however the hard copy was not received prior to the Response deadline. The National Arbitration Forum therefore does not consider the Response to be in compliance with ICANN Rule 5.
On April 27, 2009, Complainant filed an Additional Submission, which was timely filed, in accordance with the FORUM’s Supplemental Rule 7.
On
April 28, 2009, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed Carol M. Stoner, Esq., as
Panelist.
Respondent’s Response was submitted only in electronic format prior to the Response deadline; the hard copy was not received prior to the Response deadline. Thus, while the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5, the Panel, in its allowed discretion, has decided to accept and consider this Response. Respondent’s failure to submit what is, in essence, a duplicate filing, in a timely manner should not result in the Respondent incurring the extreme remedy of a default judgment. The matter should be decided on its merits, rather than on procedural precision. See J.W. Spear & Sons PLC v. Fun League Mmgmt., FA 180628 (Nat. Arb. Forum Oct.17, 2003) (finding that where 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”).
RELIEF SOUGHT
Complainant requests that the domain name <texaswindworks.com> be transferred from Respondent to Complainant and that Respondent’s Response be struck.
PARTIES’ CONTENTIONS
A. Complainant
Since 1994, Texas Wind has used the
trademark and tradename Texas Wind Power Company in association with its
The WHOIS database shows that Respondent, Wind Works, who is also in the wind-generated electricity business, registered the Internet domain name <texaswindworks.com> on or about December 14, 2004. The domain at issue merely adds a generic descriptive word, “works.” The disputed domain name is therefore identical or confusingly similar to Complainant’s trademark.
Respondent Wind Works has no rights or legitimate interests in the domain name, and the Respondent is not commonly known as Texas Wind Works or Texas Wind.
Complainant issued a cease-and-desist letter on August 8, 2009 citing actual confusion and dilution of distinctiveness. In response, Respondent agreed not to use the disputed marks in future marketing, but denied Complainant’s request to terminate their use of the disputed domain name. Complainant cites as evidence of bad faith the fact that Respondents name is Wind Works, not Texas Wind Works. In accordance with Respondent’s website, attached as Annex 5, Respondent has not ceased using the disputed domain name, nor referring to itself as Texas Wind Works on its website.
B. Respondent
The use of the domain name <texaswindworks.com>by Wind
Works, LLC is in good faith and demonstrates a bona fide use of the domain.
The Company is called Wind Works and is based in the State of
The mark owned by Complainant fails
to provide them with superior rights. Complainant, during prosecution of its
mark, agreed to disclaim any exclusive right to use the terms “Wind Power
Company” apart from the mark as a whole.
The only term in which Complainant has rights is “
C. Additional Submissions
In its Additional Submission, Complainant alleges that Respondent’s Response fails to conform to the stands set forth in ICANN, by failing to respond specifically to the statements and allegations contained in the Complaint and should be struck.
Complainant refutes Respondent’s “disclaimer argument” as irrelevant and states that TWP has not disclaimed the right to “Texas Wind” or its rights to protect itself from the use of confusingly similar marks or domain names.
FINDINGS
(1) the domain name <texaswindworks.com> 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.
DISCUSSION
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:
(4) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(5) the Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered and is being used in bad faith.
Complainant asserts
its rights in the TEXAS WIND POWER COMPANY mark through its registration of the
mark with the USPTO (Reg. No. 2,706,342 issued April 15, 2003). The Panel finds that this federal
registration has secured Complainant’s rights in the mark under Policy Par. ¶ 4(a)(i). See Microsoft Corp. v.
Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“(Complainant has established rights in the
MICROSOFT mark through registration of the mark with the USPTO.”); see also
Complainant
contends that the disputed <texaswindworks.com>
domain name, which contains the “TEXAS WIND” portion of Complainant’s TEXAS
WIND POWER COMPANY mark, is confusingly similar to Complainant’s registered
mark. The disputed domain name removes
the remainder of the mark, adds the term “works,” and adds the generic
top-level domain “.com.” The Panel notes
that the addition of a top-level domain is irrelevant. Moreover, the Panel finds that the inclusion
of the word “works” is a term of trade that represents Complainant’s
operations. Thus, the confusing similarity
between the disputed domain name and the Complainant’s registered mark is
heightened and intensified. Finally,
the Panel finds that the removal of a bland portion of the mark does not negate
confusing similarity, since it finds that the dominant or colorful portion of
the mark, that is, “texas wind” remains as a calling card for customers. Given the above findings, the Panel concludes
that the disputed domain name is confusingly similar to Complainant’s mark under
Policy ¶ 4(a)(i).
See Jerry Damson,
Inc. v.
addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i).
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); 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.”). Here, the Complainant offers sufficient credible evidence that Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent is not commonly known by the disputed domain name and is not permitted to use Complainant’s mark. The WHOIS information lists Respondent as “Wind Works c/o Savvy Dog Design, LLC.” The Panel has found no additional evidence in the record demonstrating that Respondent is commonly known by the disputed domain name. Therefore, the Panel has made a determination that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416 (Nat. Arb. Forum Jan. 12, 2004) (“Though Respondent’s WHOIS information lists Respondent as ‘SRW Hotels Worldwide,’ part of which constitutes the disputed domain name, there is no evidence before the Panel that Respondent was actually commonly known by that name.”).
Complainant contends that the
parties are competitors within the wind-generated electricity business in
Complainant. In fact, Complainant submits as Annex 4, a January 07, 2009 response from Respondent’s attorney to Complainant’s cease and desist letter, wherein Respondent has agreed (without agreeing to Complainants facts and legal conclusions) to refrain from the future use of
the name “Texas Wind Works” in its communications, marketing efforts and public announcements, but has declined to terminate its future use of the disputed domain name. The Panel agrees with Complainant and finds that Respondent has not created a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004) (“Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.”); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website).
As the Respondent is engaged in the
same line of business in the same territory, and registered the disputed domain
name a full ten (10) years after Complainant entered the business, even the
most cursory market research would have revealed a conflict in name
choice. Moreover, a federal trademark or
service mark registration is constructive notice of the use of a commercial
mark. The Panel finds that Respondent selected the disputed domain name to
disrupt Complainant’s business for its own benefit in the marketplace, and
therefore the Panel rules that Respondent has registered and used the disputed
domain name in bad faith under Policy ¶ 4(b)(iii). See
Complainant contends that Respondent’s use of a confusingly similar domain name to compete with Complainant has created a likelihood of confusion as to Complainant’s affiliation or endorsement of the disputed domain name and the corresponding competitive website. The Panel finds that Complainant and Respondent are competitors in the same business in the same geographic area. This likelihood of confusion, and the resultant intended commercial benefits that inured to the Respondent, constitutes sufficient cause for the Panel to find that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
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 <texaswindworks.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner, Esq., Panelist
Dated: May 12, 2009
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