Armor Building Solutions, LLC v. Al Perkins
Claim Number: FA1708001745973
Complainant is Armor Building Solutions, LLC (“Complainant”), represented by J. Richard Hoel, South Carolina, USA. Respondent is Al Perkins (“Respondent”), Jersey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <armorbuildingsolutions.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 Forum electronically on August 24, 2017; the Forum received payment on August 24, 2017.
On August 25, 2017, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <armorbuildingsolutions.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 29, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 2017 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@armorbuildingsolutions.com. Also on August 29, 2017, 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 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 operates a full service company which designs, manufactures and installs screens, shutters and storm protection systems and provides warranty service after the sale. Complainant conducts its business and serves customers in both South Carolina and Georgia. Complainant holds common law rights in the ARMORBUILDINGSOLUTIONS.COM mark, as it has invested a substantial amount of money in building its brand since inception in June 13, 2013. Additionally, anyone would readily recognize Complainant’s rights in the mark if they conducted a simple Google search for “Armor Building Solutions,” as Complainant’s business appears as the first content returned when searched. Further, Complainant recently applied with the United States Patent and Trademark Office (“USPTO”) for rights to the ARMORBUILDINGSOLUTIONS.COM mark.
Respondent has no rights or legitimate interests in the <armorbuildingsolutions.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent simply registered the domain name for the purpose of selling it back to Complainant, as Complainant used to hold the domain name registration prior to Complainant inadvertently allowing it to expire. Further, Respondent uses the disputed domain name to redirect users to a different domain name, <fiftytplus.com>.
Respondent registered and uses the <armorbuildingsolutions.com> domain name in bad faith. Respondent only registered the disputed domain name for the purpose of selling it back to Complainant for $9,800, well in excess of the out-of-pocket expenses. Further, Respondent has previously engaged in bad faith registration and has numerous prior adverse UDRP decisions against it. Moreover, Respondent damages Complainant’s reputation by using the disputed domain name to resolve to a different, unrelated website, confusing customers into wondering whether Complainant remains in operation. Further, Respondent’s website previously resolved to a website containing pornographic material, further damaging Complainant’s business.
Respondent:
Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the <armorbuildingsolutions.com> domain name on or about July 18, 2017.
Additional Submission - Complainant
Pursuant to an interlocutory order, Complainant provided additional arguments and evidence on October 20, 2017. In said submission, Complainant provides evidence of common law rights to ARMOR BUILDING SOLUTIONS, including advertisements evidencing use of this mark since 2014. Complainant also alleges that it attends two or more trade shows annually using said mark.
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.”).
Complainant claims that it holds common law rights in the ARMOR BUILDING SOLUTIONS and the ARMORBUILDINGSOLUTIONS.COM marks and does not currently hold a trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). The Panel therefore looks to Complainant’s rights as they may exist under the common law.
To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Complainant’s uncontested allegations and evidence in its Complaint and Additional Submission (as detailed above) provides sufficient evidence of secondary meaning.
Respondent’s domain name is identical to Complainant’s marks, simply removing the spaces between the words ARMOR BUILDING SOLUTIONS.
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has no rights or legitimate interests in the <armorbuildingsolutions.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Al Perkins” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by its mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Accordingly, the Panel agrees that Respondent is not commonly known by the <armorbuildingsolutions.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that it previously held registration rights in the <armorbuildingsolutions.com>, and when it contacted Respondent about the inadvertent misstep and purchasing the domain name, Respondent offered the domain name for sale for $9,800. A complainant can also use arguments that a complainant previously held rights in a disputed domain name to evince a lack of respondent’s rights and legitimate interests. See Raise Labs, Inc. v. Hong young jin, FA 1685247 (Forum Sept. 1, 2016) (“[The disputed domain name was] registered by Complainant on or about September 20, 2013. The registration was inadvertently allowed to lapse and was registered by Respondent at a subsequent date… As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Accordingly, the Panel finds that Complainant previously held the rights to the domain name, and Respondent opportunistically registered the domain name for the purpose of selling it back to Complainant, the original owner, in excess of out-of-pocket expenses.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant alleges Respondent has previously engaged in bad faith registration and has numerous prior adverse UDRP decisions against it. See Fandango, LLC v. 21562719 Ont Ltd, FA 1464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Examples of Respondent’s history of bad faith includes the following: Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 26, 2017); Michael Heald v. Al Perkins, D2017-0959 (WIPO June 29, 2017); and Elan LLC v. Al Perkins, FA 1731999 (Forum June 26, 2017). These cases all involved the same practice by Respondent of opportunistically registering someone else’s trademark when a domain name for that mark expired and subsequently offering to re-sell it to the mark owner at a substantial mark-up.
The Panel agrees that the foregoing constitutes evidence that the instant dispute is merely a piece of a larger pattern of Respondent’s pattern of bad faith domain name registration and usage under Policy ¶ 4(b)(ii).
Moreover, Respondent purportedly damages Complainant’s reputation by using the disputed domain name to resolve to a different, unrelated website, confusing customers into wondering whether Complainant remains in operation. In addition, Respondent’s website previously resolved to a website containing pornographic material, further damaging Complainant’s business. See MySpace, Inc. v. Myspace Bot, FA 1672161 (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 Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA 1596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”).
Thus, Complainant has also 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 <armorbuildingsolutions.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: November 3, 2017
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