Andersen Corporation v. Anthony Turner / UKWebs Ltd
Claim Number: FA1104001382529
Complainant is Andersen Corporation (“Complainant”), represented by William D. Schultz of Merchant & Gould P.C., Minnesota, USA. Respondent is Anthony Turner / UKWebs Ltd (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <andersonwindowsanddoors.org>, registered with GoDaddy.com, Inc. (R91-LROR).
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2011; the National Arbitration Forum received payment on April 8, 2011.
On April 8, 2011, GoDaddy.com, Inc. (R91-LROR) confirmed by e-mail to the National Arbitration Forum that the <andersonwindowsanddoors.org> domain name is registered with GoDaddy.com, Inc. (R91-LROR) and that Respondent is the current registrant of the name. GoDaddy.com, Inc. (R91-LROR) has verified that Respondent is bound by the GoDaddy.com, Inc. (R91-LROR) 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 April 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2011 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@andersonwindowsanddoors.org. Also on April 11, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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" 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 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 makes the following assertions:
1. Respondent’s <andersonwindowsanddoors.org> domain name is confusingly similar to Complainant’s ANDERSEN mark.
2. Respondent does not have any rights or legitimate interests in the <andersonwindowsanddoors.org> domain name.
3. Respondent registered and used the <andersonwindowsanddoors.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Andersen Corporation, annually manufacturers more than six million wood windows and doors, with sales worldwide. Anderson uses the ANDERSEN mark in connection with its windows and doors as well as a variety of components and products related to windows and doors. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ANDERSEN mark (e.g., Reg. No. 910,533 issued March 30, 1971).
Respondent, Anthony Turner / UKWebs Ltd, registered the <andersonwindowsanddoors.org> domain name on January 8, 2011. The disputed domain name resolves to a pay-per-click website that provides hyperlinks for third-party websites, some of which offer products that compete with Complainant’s products.
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.
Complainant claims rights in the ANDERSEN mark through its registration of the mark with the USPTO (e.g., Reg. No. 910,533 issued March 30, 1971). The Panel finds that it is irrelevant whether Complainant holds a trademark registration with the trademark authority in the country in which Respondent resides and that Complainant’s registration with the USPTO sufficiently proves its rights in the ANDERSEN mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant avers Respondent’s <andersonwindowsanddoors.org> domain name is confusingly similar to its ANDERSEN mark. Complainant argues that “anderson” looks and sounds like its ANDERSEN mark. In addition, Complainant claims that adding the descriptive terms “windows” and “doors,” which describe its products, and the generic term “and” to its mark fail to adequately distinguish Respondent’s domain name from its mark. Finally, Complainant contends the addition of the generic top-level domain (“gTLD”) “.org” to its mark is irrelevant to the Policy ¶ 4(a)(i) analysis. The Panel finds Respondent’s changes fail to render its domain name distinct from Complainant’s mark. See Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004) (“Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”); 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)); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
According to Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent to prove it has rights or legitimate interests in the <andersonwindowsanddoors.org> domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts it has not licensed or otherwise permitted Respondent to use its ANDERSEN mark. Moreover, the WHOIS information lists “Anthony Turner / UKWebs Ltd” as the registrant of the disputed domain name, which the Panel finds is not similar to the <andersonwindowsanddoors.org> domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant submits screen shots of the website resolving from the disputed domain name. These images show a page that provides hyperlinks to third-party websites, some of which offer windows and doors that compete with Complainant’s windows and doors. The Panel presumes that Respondent profits from its use of the disputed domain name through the receipt of pay-per-click fees. Therefore, the Panel finds Respondent does not use the <andersonwindowsanddoors.org> domain name for 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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 finds Complainant has satisfied Policy ¶ 4(a)(i).
The Panel finds the disputed domain name redirects Internet users seeking Complainant’s products to a website that provides hyperlinks for Complainant’s competitors. Therefore, the Panel concludes Respondent’s domain name disrupts Complainant’s business, which amounts registration and use in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
As previously discussed, Respondent’s <andersonwindowsanddoors.org> domain name is confusingly similar to Complainant’s ANDERSEN mark. In addition, Respondent’s resolving website provides images of windows and doors, which may confuse Internet users into believing Respondent is in some way connected to Complainant. Furthermore, Respondent likely profits from its use of the disputed domain name through the receipt of pay-per-click fees. Based on the evidence in the record, the Panel concludes Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Therefore, the Panel finds Respondent has engaged in registration and use in bad faith under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <andersonwindowsanddoors.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 12, 2011
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