Pella Corporation v. Private Whois Service
Claim Number: FA1107001400490
Complainant is Pella Corporation (“Complainant”), represented by Patricia I. Reding of Faegre & Benson LLP, Minnesota, USA. Respondent is Private Whois Service (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwpella.com>, registered with Internet.bs Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2011; the National Arbitration Forum received payment on July 28, 2011.
On July 28, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <wwwpella.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 August 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@wwwpella.com. Also on August 2, 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 August 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <wwwpella.com> domain name is confusingly similar to Complainant’s PELLA mark.
2. Respondent does not have any rights or legitimate interests in the <wwwpella.com> domain name.
3. Respondent registered and used the <wwwpella.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pella Corporation, manufactures windows, doors, and related products and provides related services. Pella markets its products and services under the PELLA mark, which it has registered with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 811,964 registered August 2, 1966;
Reg. No. 836,191 registered October 3, 1967; &
Reg. No. 1,184,785 registered January 5, 1982.
Respondent, Private Whois Service, registered the <wwwpella.com> domain name on March 15, 2003. The disputed domain name features a list of sponsored pay-per-click links and related searches that compete with Complainant by offering window and door products under titles like “Replacement Window Sale,” “Fiberglass Windows,” “Marvin Replacement Windows,” and “Andersen Windows.”
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, in an effort to protect its brand and reputation, has repeatedly registered its PELLA mark with the USPTO:
Reg. No. 811,964 registered August 2, 1966;
Reg. No. 836,191 registered October 3, 1967; &
Reg. No. 1,184,785 registered January 5, 1982.
Due to the long history of trademark registration and the official nature of the USPTO, past panels have determined that a federal trademark registration is prima facie evidence of Complainant’s rights in a mark. 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 Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office). Based on this precedent, the Panel concludes that Complainant’s USPTO registrations similarly prove Complainant’s rights in the PELLA mark according to Policy ¶ 4(a)(i).
Respondent’s <wwwpella.com> domain name contains Complainant’s PELLA mark combined with the generic top-level domain suffix (“gTLD”) “.com” and the prefix “www” without the period separating it from the rest of the domain name. Complainant asserts that these two elements are commonly found or required in domain names. Complainant argues that they are such minor changes that, even with their addition, the disputed domain name nevertheless remains confusingly similar to Complainant’s PELLA mark. The Panel, supported by Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002), and Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), determines that neither the prefix “www” nor the gTLD suffix “.com” has any effect, and, therefore, the <wwwpella.com> domain name is confusingly similar to Complainant’s PELLA mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
In a UDRP proceeding, Complainant bears the initial burden of making a prima facie case against Respondent. If Complainant fails to accomplish this task, Respondent has no responsibility to prove anything in its defense. In this proceeding, the Panel finds that Complainant’s arguments and accompanying evidence are sufficient to establish a prima facie case that Respondent lacks rights and legitimate interests. As a result, the burden shifts to Respondent, who must demonstrate rights and legitimate interests if it hopes to counter Complainant’s allegations. Complainant has received nothing but silence from Respondent, however, giving the Panel no evidence or arguments to consider on the side of Respondent. Due to Respondent’s lack of engagement, the Panel infers that Respondent neither contests Complainant’s allegations nor has any evidence that it wishes to present in support of rights and legitimate interests. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). Accordingly, the Panel concludes that Respondent does not have rights and legitimate interests but will nevertheless continue to examine the evidence against the Policy ¶ 4(c) factors.
Complainant alleges that Respondent does not have any rights and legitimate interests in the <wwwpella.com> domain name, in part because Complainant has not licensed Respondent to use the PELLA mark in any way. The WHOIS information for the <wwwpella.com> domain name corroborates Complainant’s claim because it does not reflect that Respondent is associated with the disputed domain name in any way. Based on Complainant’s evidence and the lack of any contrary evidence supporting Respondent’s side, the Panel concludes that Respondent is not commonly known by the <wwwpella.com> domain name and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gambro AB v. Family Health & Wellness Ctr., D2001-0447 (WIPO May 25, 2001) (finding that the respondent did not submit any evidence to support its suggestion that its employee was known by the nickname “Gambro”).
Complainant argues that Respondent’s resolving website at the <wwwpella.com> domain name displays search term links for competing window and door products and companies, as well as sponsored links that also advertise Complainant’s competitors. Complainant asserts that Respondent presumably receives referral fees from these links. In line with previous cases, such as Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) and ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), the Panel determines that Respondent’s activities at the <wwwpella.com> domain name do not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant contends that Respondent registered the <wwwpella.com> domain name as a domain name that includes Complainant’s well-known PELLA mark preceded by “www,” which is commonly used for website addresses. Complainant argues that by failing to include the period that typically separates the “www” prefix from the rest of the domain name, Respondent intentionally hoped to catch Internet users inadvertently omitting that period while searching for Complainant’s website. The Panel agrees with Complainant’s allegation that this behavior is typosquatting. As seen in Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003), and RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003), typosquatting indicates a lack of rights and legitimate interests. In accordance with this precedent, the Panel here finds that Respondent’s typosquatting provides additional proof that Respondent does not possess rights and legitimate interests in the <wwwpella.com> domain name according to Policy ¶ 4(a)(ii).
The Panel concludes Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has a pattern of bad faith registration and use of domain names as Respondent has been involved in multiple prior UDRP proceedings. The Panel, however, finds that the respondent named, “Private Whois Service,” is a privacy shield service provided by the registrar and thus can refer to a variety of different actual registrants. Because the respondent named here is not necessarily the same individual in all the cases cited by Complainant, the Panel declines to find a pattern of bad faith registration and use on the part of Respondent “Private Whois Service.”
Complainant describes the sponsored links and search term links displayed at Respondent’s <wwwpella.com> domain name as having titles like “Fiberglass Windows,” “Andersen Windows,” “Marvin Replacement Windows,” and “Replacement Windows.” Complainant argues that the products and companies advertised through these links compete with Complainant because they are in the same industry. By resolving the <wwwpella.com> domain name that uses Complainant’s PELLA mark to a website featuring a listing of competing products and companies, Respondent abuses Complainant’s mark by taking advantage of its fame and goodwill for the benefit of other companies not connected with Complainant. The Panel finds that Respondent’s efforts to disrupt Complainant’s business by hijacking Complainant’s mark and using it to advertise for competitors represents bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant argues that Respondent’s <wwwpella.com> is nearly identical to Complainant’s mark as the primary difference is the failure to include the standard period between the “www” prefix and the term “PELLA.” Because the disputed domain name thus consists primarily of Complainant’s mark, it seems clear that Respondent registered the disputed domain name to take advantage of the value of the PELLA mark as a sought-after identifier of quality goods. Consumers searching for PELLA products might easily arrive at the disputed domain name, intending to buy Complainant’s products, only to be confronted with a confusing array of competing options as advertised in the pay-per-click links on the resolving website. The similarity between the goods offered by Complainant and the goods advertised in the links could lead to confusion regarding the source or affiliation of the resolving website. As the links are presumed pay-per-click links that generate profit when clicked, the Panel holds that Respondent’s use of the disputed domain name to attract, confuse, and profit demonstrates bad faith registration and use as described in Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, 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 the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); 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)).
Complainant asserts, and the Panel has already agreed, that Respondent’s registration of the <wwwpella.com> domain name is typosquatting. As typosquatting is a form of domain name registration intended to infringe on another’s mark, the Panel finds that Respondent’s registration and use of the confusingly similar <wwwpella.com> domain name reveals bad faith registration and use under Policy ¶ 4(a)(iii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith).
Complainant asserts that its PELLA mark was sufficiently distinctive and famous at the time of the disputed domain name’s registration that Respondent had constructive notice of Complainant’s rights in the PELLA mark. The Panel finds, however, that constructive knowledge has not generally been held sufficient to support a finding of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also The Way Int’l Inc. v. Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of the complainant, the trade mark owner.”). Due to the obvious use of a Complainant’s distinctive PELLA mark in the disputed domain name, however, as well as the relevance of the pay-per-click links to Complainant’s line of business, the Panel infers that Respondent had actual notice of the mark when it registered the disputed domain name, indicating bad faith registration and use under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwpella.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 7, 2011
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