Marvin Lumber and Cedar Company d/b/a Marvin Windows and Doors v. Jorge Lanfranco
Claim Number: FA1208001458279
Complainant is Marvin Lumber and Cedar Company d/b/a Marvin Windows and Doors (“Complainant”), represented by Miki Griffin of Marvin Lumber and Cedar Company d/b/a Marvin Windows and Doors, Minnesota, USA. Respondent is Jorge Lanfranco (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <windowsbyinfinity.com>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2012; the National Arbitration Forum received payment on August 15, 2012.
On August 16, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <windowsbyinfinity.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 2012 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@windowsbyinfinity.com. Also on August 16, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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’s Allegations
B. Respondent
Respondent failed to submit a Response in this proceeding.
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."
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.
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.”).
Complainant has presented the Panel with evidence of its trademark registrations for the INFINITY mark with the USPTO (e.g., Reg. No. 1,552,897 registered August 22, 1989) to support its claim of rights in the mark. The Panel holds that Complainant’s registrations with the USPTO establish Complainant’s rights in the INFINITY mark under 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).”).
Respondent’s <windowsbyinfinity.com> domain name incorporates Complainant’s INFINITY mark in its entirety, merely adding the descriptive term “windows” and the generic term “by.” The Panel finds that the term “windows” is descriptive of Complainant’s business, as Complainant manufactures and distributes windows and doors under the INFINITY mark. The Panel also finds that Respondent’s addition of the terms “windows” and “by” is not sufficient to distinguish the disputed domain name for the purposes of Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the addition of the term “batteries” was insufficient to distinguish the respondent’s <duracellbatteries.com> from complainant’s DURACELL mark).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent is not commonly known the <windowsbyinfinity.com> domain name for the purposes of Policy ¶ 4(c)(ii). Complainant contends that any use by Respondent of the INFINITY mark in connection with the sale of windows or doors is unauthorized and illegitimate, based on Complainant’s prior registration of the trademark for use in connection with windows and doors. The Panel notes that the WHOIS information for the disputed domain name identifies the domain name registrant as “Jorge Lanfranco.” The Panel also notes that Respondent has failed to satisfy its burden of providing the Panel with a Response, leaving no evidence in the record to refute Complainant’s claims. Based on the foregoing, the Panel concludes that Respondent is not commonly known by the <windowsbyinfinity.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that 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 respondent was commonly known by the disputed domain names, and complainant had not authorized respondent to register a domain name containing its registered mark).
Complainant alleges that Respondent is using the <windowsbyinfinity.com> domain name to host a website which sells products and services in direct competition with Complainant’s products and services. Complainant posits that such use of its mark is presumably for Respondent’s own commercial gain and does not constitute 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). The Panel agrees, finding that the use of a disputed domain name to market competing products and services does not demonstrate rights or legitimate interests under Policy ¶ 4(a)(ii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with complainant did not give rise to any legitimate interest in the domain name).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
This Panel finds that the fact that Respondent is engaged in direct competition with Complainant indicates that Respondent had actual notice of Complainant’s rights. Therefore, the Panel finds that Respondent registered the <windowsbyinfinity.com> domain name in bad faith according to Policy ¶ 4(a)(iii).
Complainant alleges that Respondent’s <windowsbyinfinity.com> domain name and resulting website are capable of creating a likelihood of confusion as to Complainant’s source, sponsorship and affiliation. Complainant points out that Respondent has registered a domain name which includes Complainant’s INFINITY mark and resolves to a website which displays images of windows and doors, and asserts that this is likely to confuse Internet users into believing Respondent is in some way connected to Complainant. Complainant also asserts that Respondent is using the <windowsbyinfinity.com> domain name for its own commercial benefit, as Respondent is engaged in selling products in direct competition with Complainant’s products. The Panel determines that there is a reasonable likelihood that customers intending to purchase Complainant’s products may resolve to Respondent’s website instead and purchase Respondent’s competing products. The Panel finds that Respondent’s activity in this regard represents attraction for commercial gain, evidencing bad faith registration and use Policy ¶ 4(b)(iv). See 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 to those services offered by the complainant under its mark).
Thus, 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 <windowsbyinfinity.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: September 21, 2012
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