A. O. Smith Corporation v. JAKE PROSSER / JOHN WOODS CANADA
Claim Number: FA1608001687444
Complainant is A. O. Smith Corporation (“Complainant”), represented by Thomas A. Agnello, Wisconsin, United States. Respondent is JAKE PROSSER / JOHN WOODS CANADA (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <johnwoodscanada.com>, registered with eNom, Inc.
The undersigned certifies that he 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 8, 2016; the Forum received payment on August 8, 2016.
On August 9, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <johnwoodscanada.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 10, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2016 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@johnwoodscanada.com. Also on August 10, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant contends as follows:
Complainant is a leading global manufacturer and provider of high quality residential and commercial water heaters, boilers, and storage tanks. Complainant has registered the JOHN WOOD mark with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA112479, registered Dec. 12, 1958), which demonstrates Complainant’s rights in its mark.
Respondent’s domain is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the letter “s,” the geographic term “Canada,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the domain. Respondent is not commonly known by the domain, and Complainant has not consented to Respondent’s use of the JOHN WOOD mark. Further, Respondent is not using the domain in connection with a bona fide offering of good and services or a legitimate noncommercial or fair use. Rather, Respondent uses its domain to sell products that directly compete with Complainant’s business.
Respondent registered and is using the domain in bad faith. First, Respondent uses the domain to sell products that are directly competitive with Complainant’s business. Second, Respondent’s use of the domain to pass itself off as Complainant is further evidence of bad faith registration and use. Third, because Respondent’s resolving website prominently displays Complainant’s JOHN WOOD logo, it is clear that Respondent registered the domain with actual knowledge of Complainant’s mark and rights therein
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the JOHN WOOD mark through its registration of such mark with the Canadian Intellectual Property Office.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark.
Respondent uses its domain to sell products that directly compete with Complainant’s business.
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(f), 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 (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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its JOHN WOOD mark with the Canadian Intellectual Property Office establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See Seiko Epson Corp. v. Citizens News Network, FA 1389991 (Forum June 30, 2011) (finding that complainant had established Policy ¶ 4(a)(i) rights in its mark through its trademark registrations with the USPTO and CIPO).
The at-issue domain name contains Complainant’s entire JOHN WOOD trademark less its space with the letter “s” and the geographic term “canadian” appended thereto. The at-issue domain name is completed by the addition of the top-level domain name, “com.” The differences between Respondent’s <johnwoodscanada.com> domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s JOHN WOOD trademark under Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Reese v. Morgan, FA 917029 (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); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (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)).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the <johnwoodscanada.com> domain name.
WHOIS information for Respondent’s at-issue domain name lists “JAKE PROSSER / JOHN WOODS CANADA” as the domain name’s registrant. Notwithstanding the unauthorized reference to Complainant’s trademark in the WHOIS information there is nothing in the record that suggests Respondent is commonly known by the <johnwoodscanada.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Respondent’s at-issue domain name addresses a website used to sell products that directly compete with Complainant’s business. Such use constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the at-issue domain name pursuant to Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. Circumstance are present under Policy ¶4(b) and otherwise which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and interests, Respondent uses the domain to sell products that directly compete with Complainant’s business. Respondent’s use of the domain name in this manner demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services). Respondent’s use of the domain to pass itself off as Complainant is further evidence of bad faith registration and use under the Policy. Indeed, Respondent’s <johnwoodscanada.com> website homepage falsely states that it is the “Exclusive Dealer for John Wood.” Respondent’s intent to pass itself off as Complainant by and through the confusingly similar <johnwoodscanada.com> domain name shows Respondent’s bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Additionally, Respondent registered the confusingly similar <johnwoodscanada.com> domain name knowing that Complainant had trademark rights in the JOHN WOOD mark. Respondent’s prior knowledge is evident from Respondent’s prominent display of Complainant’s trademark on its <johnwoodscanada.com> website. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <johnwoodscanada.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <johnwoodscanada.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 7, 2016
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