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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carolina Carports, Inc., Adela Herrera and Javier Herrera v. PrivacyProtect.org/Web Master Internet Services Private Limited

Case No. D2014-0147

1. The Parties

The Complainants are Carolina Carports, Inc., Adela Herrera and Javier Herrera of Dobson, North Carolina, United States of America (“U.S”) (collectively, the “Complainant”), represented by Kilpatrick Townsend & Stockton LLP, U.S.

The Respondent is PrivacyProtect.org of Nobby Beach, Queensland, Australia/Web Master Internet Services Private Limited of Maharashtra, India.

2. The Domain Name and Registrar

The disputed domain name <carolinacarports.com> is registered with Tirupati Domains and Hosting Pvt Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 5, 2014 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 10, 2014.

The Center verified that the amended 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 11, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2014.

The Center appointed George R. F. Souter as the sole panelist in this matter on March 11, 2014. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is a manufacturer, distributor, and seller of metal buildings, garage doors, barns, and custom buildings, as well as wood products, and trailers. The Complainant has seven divisions around the U. S, including in Texas, Mississippi, Georgia, Missouri, Indiana, Pennsylvania, and North Carolina, each of which has manufacturing, warehousing, and loading facilities. The Complainant serves customers in many regions of the United States, selling its products through representatives in at least thirty states, and currently has 2,051 distributors in the U.S. who receive commissions for selling Carolina Carports products and use promotional signage, including banners, to make such sales, and approximately 130 independent contractors in the U.S. that provide delivery and installation services.

In 2011 and 2012, the Complainant’s gross revenue amounted to more than USD 98,000,000 and USD 125,000,000 respectively, and the Complainant has invested in the past two years alone more than USD 700,000 in advertisements and promotional activities.

The Complainant does not hold a registration for the trade name CAROLINA CARPORTS.

The disputed domain name was registered on July 7, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the fact that it does not own a US trademark registration of its CAROLINA CARPORTS trademark does not affect its established common law rights in its mark, and has drawn the Panel’s attention to the decision in Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322 in support of its argument.

The Complainant argues that it has established sufficient common law rights in its trademark CAROLINA CARPORTS to satisfy the ownership of trademark rights requirement of paragraph 4(a)(i) of the Policy, and has produced extensive evidence to the Panel of its use of the trademark CAROLINA CARPORTS in commerce, including evidence of advertising and sponsorship.

The Complainant contends that the disputed domain name is confusingly similar to its CAROLINA CARPORTS trademark, in that it consists merely of its CAROLINA CARPORTS trademark, together with the generic Top Level Domain (“gTLD”) indicator, “.com”.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, in particular that there is no relationship between the Complainant and the Respondent giving rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating the Complainant’s CAROLINA CARPORTS name and mark. Further, the disputed domain name is not, nor could it be contended to be, a legitimate name or nickname of the Respondent, nor is it in any other way identified with or related to any rights or legitimate interest of the Respondent.

The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with the website operated under the disputed domain name, which includes links to the Complainant’s direct competitors and third parties involved in the sale of products related to those offered by the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant or be cancelled:

(i) the disputed 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 in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

To succeed under paragraph 4(a)(i) of the Policy, the complainant must first demonstrate that it has rights in the trademark which it relies upon. It is well-established in decisions under the UDRP that ownership of a registered trademark is not a sine qua non for a complainant to satisfy this requirement. In connection with an unregistered trademark, it is the consensus view of panels involved in UDRP proceedings that the complainant must demonstrate that the trademark relied upon has become a distinctive identifier associated with the complainant or its goods or services, and that the relevant evidence as to the trademark’s “secondary meaning” acquired through use should include the length and amount of sales under the trademark, and the nature and extent of advertising of the trademark. In the circumstances of the present case, the Complainant has gone to the trouble of providing extensive evidence of the use and advertising of the Complainant’s CAROLINA CARPORTS trademark, from its first use in 1997, and has provided details of turnover for the years 2011 and 2012. The Panel considers that the evidence presented is sufficient for the Panel to find that the Complainant has satisfied this requirement of paragraph 4(a)(i) of the Policy.

It is well-established in decisions under the UDRP that gTLD indicators (e.g. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trademark and a domain name. The Panel agrees with this view and considers the gTLD “.com” indicator to be irrelevant in the present case.

The Panel has no difficulty in finding the disputed domain name and the Complainant’s CAROLINA CARPORTS trademark to be identical and, consequently, finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy provided the respondent does not come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. The Respondent did not avail itself of the opportunity to be heard in these proceedings. The Panel, therefore, accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel is of the view that the finding that the Respondent has no rights or legitimate interests in the disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the disputed domain name contains the Complainant’s trademark in its entirety and was registered after the Complainant had built up its turnover under its CAROLINA CARPORTS trademark to over USD 100,000,000, as making it appropriate for the Panel to find that the disputed domain name was registered in bad faith and the Panel so finds.

The Respondent’s use of the disputed domain name for a website with sponsored links mainly related to the Complainant’s field of business constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.

It is well-established in prior decisions under the UDRP, with which the Panel agrees, that the use of a website operated under a disputed domain name to potentially divert customers of a complainant to competitors constitutes use in bad faith, and the Panel accordingly finds, in the specific circumstances of the present case, in which the website operated under the disputed domain name includes links to the Complainant’s direct competitors and third parties involved in the sale of products related to those offered by the Complainant , that the disputed domain name is being used in bad faith. The Panel, therefore, finds that the Complainant has satisfied the dual test of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <carolinacarports.com> be transferred to the Complainant.

George R. F. Souter
Sole Panelist
Date: March 25, 2014

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