The Complainant is Oldcastle, Inc. of Atlanta, Georgia, United States of America, internally represented.
The Respondent is Name Redacted.1
The disputed domain name <oldcastleapg.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2017. On February 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on March 1, 2017.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on March 29, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant, headquartered in Atlanta, Georgia, is a leading manufacturer of building products and materials in North America. Since as early as 1978, the Complainant has used the OLDCASTLE trademark with its products. The Complainant cites two United States trademark registrations for OLDCASTLE, issued by the United States Patent and Trademark Office (“USPTO”) on December 20, 1994, and December 22, 1998, respectively. The Complainant also has registered the domain name <oldcastle.com>, which the Complainant uses with its website.
The disputed domain name <oldcastleapg.org> was registered on September 15, 2016, according to the Registrar’s WhoIs records. The disputed domain name does not currently resolve to an active website. The Respondent registered the disputed domain name using the name of an officer of Oldcastle Architectural, a wholly owned subsidiary of the Complainant, and also identified the Complainant as the registrant organization. The Complainant uses the initials “APG” when referring to Architectural Products Group on its website.
The Complainant submits that the disputed domain name is identical or confusingly similar to the Complainant’s OLDCASTLE mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant points out that the disputed domain name does not resolve to an active website, and submits there is no evidence of the Respondent’s use, or demonstrable preparation to use the disputed domain name in connection with a bona fide offering or goods or services.
The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent registered the disputed domain to impersonate both the Complainant’s officer and/or the Complainant in furtherance of fraudulent or other unlawful activities.
The Respondent did not reply to the Complainant’s contentions.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds that the disputed domain name <oldcastleapg.org> is confusingly similar to the Complainant’s OLDCASTLE mark, in which the Complainant has established rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
The Complainant’s OLDCASTLE mark is clearly recognizable in the disputed domain name. The additional letters “apg” in the disputed domain name do not dispel the confusing similarity of the disputed domain name to the Complainant’s mark, and may exacerbate the association as the Complainant uses the initials “APG” when referring to its Architectural Products Group.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a”)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark. The record reflects that the Respondent registered the disputed domain name impersonating an officer of the Complainant, and naming the Complainant as the registrant organization. It appears the Respondent since has passively held the disputed domain name.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is evident that the Respondent was aware of the Complainant and the Complainant’s OLDCASTLE mark when registering the disputed domain name. There is in the Panel’s view an extremely high probability that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s mark. The Respondent’s impersonation of the Complainant when registering the disputed domain name presages fraudulent use by the Respondent.
Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s OLDCASTLE mark in mind when registering the disputed domain name. It is clear from the record that the Respondent’s motive in relation to the registration and use of the disputed domain name was to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s mark, with the ultimate aim to profit therefrom.3
That the Respondent appears to have passively held the disputed domain since its registration does not preclude a finding of bad faith registration and use in the circumstances of this case. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. Considerations that supported a finding of bad faith in Telstra are present in this case as well. The Complainant’s OLDCASTLE mark has been used by the Complainant for nearly 40 years, and was first registered in December 1994. The Respondent clearly was aware of the Complainant and the Complainant’s mark, and the Respondent’s registration of the disputed domain name in the attendant circumstances smacks of opportunistic bad faith. There is no evidence of any actual or attempted good faith use of the disputed domain name by the Respondent. Indeed, based on the record in this proceeding, the Panel cannot envision any legitimate or good faith use to which the disputed domain name could be put by the Respondent.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <oldcastleapg.org> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: April 11, 2017
1 As it appears the Respondent has fraudulently used a name of the Complainant’s officers when registering the disputed domain name, the Panel has decided that no purpose can be served by including the named Respondent in this decision, and has therefore redacted the Respondent’s name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
2 See WIPO Overview of WIPO Panel Views and Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 1.2.
3 The Panel considers the Respondent’s act of obtaining a domain name appropriating the Complainant’s mark and falsely registering it in the name of one of the Complainant’s officers as tantamount to identify theft.