The Complainant is American Woodmark Corporation of Winchester, Virginia, United States of America ("United States"), represented by Gavin Law Offices, PLC, United States.
The Respondent is DN Capital Inc. of Panama City, Panama.
The disputed domain name <americanwoodmarkpro.com> is registered with Fabulous.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 14, 2014. On November 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 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 November 19, 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 amendment to the Complaint on November 20, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for the Response was December 11, 2014. The Center's email records indicate that the Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on December 12, 2014. The Respondent submitted a Response to the Center on December 14, 2014. This was by way of forwarding an email that had purportedly been sent to the Center on December 11, 2014, but not received. It also appears that the Respondent tried to re-send the Response on December 12, 2014, but that this email too was not received.
The Center appointed Jon Lang as the sole panelist in this matter on December 17, 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 the Rules, paragraph 7.
The Respondent maintains that the Response was submitted in time, on December 11, 2014. The Panel accepts that the Center did not receive the Response until December 14, 2014. The Response is therefore out of time. It may be that an incorrect email address is the cause of non-receipt of the Respondent's emails. Whatever the reason, it is the Respondent's responsibility to ensure receipt by the Center of submissions it wishes to provide. Be that as it may, in the interests of fairness, the Panel, in its discretion, shall allow and consider the late Response.
The Complainant has manufactured and sold kitchen and bathroom cabinetry across the United States since its incorporation, in 1980. It is one of the largest cabinetry manufacturers in the United States. The Complainant's cabinetry line AMERICAN WOODMARK PRO includes fifteen different styles of cabinets and is sold to the public nationwide in the United States through the retailer, The Home Depot. The Complainant also sells several other cabinetry lines, with approximately 613 cabinetry styles available for sale through the Complainant's distributors. The Complainant employs close to 5,000 people and operates nine manufacturing facilities throughout the United States.
The Complainant is the proprietor of several United States marks, including those in the table below, which are used to identify kitchen and bathroom cabinetry.
|
Mark |
International Class |
Registration No. |
Registration Date |
|
AMERICAN WOODMARK PRO |
20 |
4,491,319 |
March 4, 2014 |
|
AMERICAN WOODMARK AMERICA'S FIRST CHOICE IN CABINETRY |
20 |
3,214,925 |
March 6, 2007 |
|
AMERICAN WOODMARK |
20 |
3,025,364 |
December 13, 2005 |
|
AMERICAN WOODMARK |
20 |
1,782,707 |
July 20, 1993 |
|
WM AMERICAN WOODMARK CORPORATION |
20 |
1,284,329 |
July 3, 1984 |
The Complainant has also registered many domain names containing its marks including <americanwoodmark.com>, <american-woodmark.com>, <americanwoodmarkcabinets.com>, <americanwoodmarkkitchencabinets.com>, <americanwoodmark.net>. These aforementioned domain names direct users to the Complainant's cabinetry website at "www.americanwoodmark.com".
Not much is known about the Respondent. The Respondent's identity was not apparent from the WhoIs search conducted by the Complainant because it had anonymised its registration. The true identity of the Respondent was only established when the Registrar provided its verification response to the Center.
The Respondent registered the disputed domain name <americanwoodmarkpro.com> (hereafter the Domain Name) on August 31, 2014. The Domain Name resolves to a domain parking site provided by Sedo which displays advertisements either as "Sponsored Listings" or "Related Links".
The Complainant's marks are nationally known in the field of kitchen and bathroom cabinetry and it has invested millions of dollars advertising such marks.
The Domain Name is identical to the Complainant's AMERICAN WOODMARK PRO mark, save for the ".com" suffix and the elimination of spaces (which are not allowed in domain names).
The Domain Name is confusingly similar to the Complainant's AMERICAN WOODMARK mark. The Domain Name contains the AMERICAN WOODMARK mark in its entirety and adds the word "pro." The generic word "pro" is defined as "professional" or "an expert in a field or endeavor". Consumers looking for AMERICAN WOODMARK products who find the Respondent's website may believe that the Respondent is a cabinetry professional affiliated with the Complainant. The Respondent's use of the generic word "pro" does not serve to distinguish the Domain Name from the Complainant's trademark, but rather increases the likelihood of confusion.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent has not taken a license or otherwise obtained permission from the Complainant to use the Domain Name and it is not an authorised distributor or reseller of the Complainant's cabinets. There is no connection between the Complainant and Respondent.
The Domain Name was registered well after the Complainant acquired rights in its marks and well after the Complainant registered and operated the <americanwoodmark.com>, <american-woodmark.com>, <americanwoodmarkcabinets.com>, <americanwoodmarkkitchencabinets.com>, <americanwoodmark.net> (and other) domain names.
The Respondent is not making a bona fide use of the Domain Name for the purposes of paragraph 4(c)(i) of the Policy, and is not currently and never was commonly known by the name reflected in the Domain Name so as to establish a right or legitimate interest for the purposes of paragraph 4(c)(ii) of the Policy. Furthermore, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name under paragraph 4(c)(iii) of the Policy, given that it is clearly seeking commercial gain by establishing a parked website to which the Domain Name resolves, which carries advertisements competitive with the Complainant. Moreover, the Respondent has put up the Domain Name for sale with a price that likely far exceeds the Respondent's out-of-pocket costs.
The Respondent's registration and use of the Domain Name constitutes bad faith registration and use.
The Respondent's bad faith is evidenced by its decision to list the Domain Name for sale for valuable consideration that far exceeds its out-of-pocket costs, upon or within a few months of registration. As at October 10, 2014, the Domain Name was listed for sale at USD 4,799.00.
The Respondent has made no legitimate use of the Domain Name. Advertisements aside, the Respondent has no goods or services listed on its website. The Respondent is not using the website for commentary, discussion or forums. The Respondent has failed to make use of the Domain Name for the purposes of offering bona fide goods and services, but has used it instead for the purposes of advertising goods that compete with the Complainant's goods. The purpose of these advertisements is for the Respondent to generate revenue while it awaits a buyer for the Domain Name. These targeted advertisements appear as "Sponsored Listings" and "Related Links" that divert potential customers of the Complainant to third party sites where competing goods are sold. The "Sponsored Listings" click through to the Complainant's competitors, with each click earning the Respondent money. Additionally, the "Related Links" on Respondent's website connect to a new website page where more sponsored listings can be found. It is the Respondent who is ultimately responsible for the content appearing on the website to which the Domain Name resolves, whether such advertisements are automatically generated or otherwise.
The click-through advertisements generated on the website focus on the United States market. The Respondent knew or should have known of the existence of the Complainant's marks. Actual knowledge can be evidenced by the fact that the Domain Name is identical to the Complainant's AMERICAN WOODMARK PRO mark and confusingly similar to Complainant's AMERICAN WOODMARK mark.
When a domain name is so obviously connected with a Complainant, its very use by a registrant with no authorised connection to the Complainant suggests "opportunistic bad faith."
The Respondent obtained a prior registration of the domain name <ronpaul.org> (The Honorable Ron Paul v. DN Capital Inc., Martha Roberts, WIPO Case No. D2013-0371) which shows that the Respondent is attuned to American culture and brands.
The Respondent has used a privacy service to shield its identity from the WhoIs database. There was no legitimate reason to do so. The Respondent's use of a privacy shield is indicative of the Respondent's bad faith intent in registering and using the Domain Name. Had the Respondent provided contact information, the Complainant would have contacted the Respondent directly regarding the infringement of the Complainant's marks. Instead, the Complainant was forced to file the present Complaint, spending a significant amount of the Complainant's time and resources.
Finally, the Respondent is purportedly in the business of domain name acquisition and management. Its website, located at <dn-capital.com>, states that it provides domain name acquisition services to third party clients, but the only contact information provided is a mailing address and fax number. No telephone or email address is given. Moreover, the words "Contact Form" appear on the contact page but no form or link is provided. The Respondent's website appears to be a mere shell designed to lend it legitimacy.
The Respondent does not address the assertions contained in the Complaint or amendment to the Complaint. Instead it requests, as sought in previous communications from it dated December 3, 2014, and December 9, 2014, that the Domain Name be transferred to the Complainant.
The entirety of the Respondent's Response to the Complaint is set out below.
"The Respondent unilaterally consents to unconditionally transfer the disputed domain name to the Complainant. The domain name was registered in error, and the Respondent would have offered to transfer or delete the domain name if contacted by the Complainant, with or without the current proceedings.
A genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207)."
The Response raises a further preliminary issue, namely whether a full decision should be provided given that the Respondent has consented to the remedy sought by the Complainant.
Clearly, the Respondent would rather not be party to a reasoned Decision against it and contends simply for an order, without reasons, transferring the Domain Name. It says that that Domain Name was registered in error, but does not bother to explain the nature of that error. It says that it would have offered to transfer or delete the Domain Name if contacted by the Complainant. However, the Complainant did not know the true identity of the Respondent at the time of lodging the original Complainant, because the Respondent chose not to reveal its true identity. The Complainant says that it would have contacted the Respondent directly had it known its true identity. In any event, the Complainant responded to the Respondent's email of December 9, 2014, the next day, making clear that it wished to proceed and have the Panel decide the case. The Complainant has paid its fee and is entitled to a reasoned Decision. Accordingly, the Panel sets out below its findings and reasons for those findings.
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
The Complainant clearly has rights in the marks AMERICAN WOODMARK PRO and AMERICAN WOODMARK for the purposes of the Policy. Ignoring the suffix ".com" (as the Panel may do for comparison purposes), the Domain Name is identical to the mark, AMERICAN WOODMARK PRO (it being impossible to provide for a space between characters in a domain name and thus the spaces between AMERICAN and WOODMARK and PRO in the mark should also be ignored for comparison purposes). The Domain Name is also confusingly similar to the mark, AMERICAN WOODMARK, given that it (the Domain Name) comprises the entirety of that mark which is readily recognisable as such within the Domain Name.
Even if one were to adopt a possibly more stringent test and require, as some UDRP panels have done, a risk that Internet users may actually believe that there is a real connection between the Domain Name and the Complainant and/or its goods and services, the Complainant would still satisfy this first element of the three part test. The impression created by the Domain Name may well give rise to the possibility that Internet users would think that the owner of the Domain Name is in fact the owner of the Complainant's mark to which it is identical (in the case of AMERICAN WOODMARK PRO) and confusingly similar (in the case of AMERICAN WOODMARK), or that there is some form of association between the Respondent and the Complainant. The presence of the three letters "pro" in the Domain Name does nothing to avoid the possibility of confusing similarity with the Complainant's AMERICAN WOODMARK mark, given the common understanding of the term "pro".
The Panel finds that the Domain Name is identical to the mark, AMERICAN WOODMARK PRO and confusingly similar to the mark, AMERICAN WOODMARK for the purposes of the Policy and thus this element of paragraph 4(a)(i) of the Policy has been established.
By its allegations in the Complaint, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has decided not to do so, instead suggesting that its registration of the Domain Name was a mistake. Accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. In fact, it seems implicit that this is accepted by the Respondent. Nevertheless, it is appropriate in the circumstances to deal with rights and legitimate interests (or the absence thereof) in a little more detail.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it has been commonly known by the domain name or that it 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 in issue.
Here, however, the Respondent is not known by the Domain Name. Moreover, given the nature of the website to which the Domain Name resolves, i.e., a parking page containing links to websites of others, the Panel would not accept that there is legitimate noncommercial or fair use. In any event, it is difficult to conclude that the Respondent does not derive a commercial benefit from the use to which the Domain Name has been put. Moreover, any noncommercial or fair use must be without intent to mislead, but it is likely in fact (in the absence of any alternative explanation), that the very purpose in the Respondent choosing the Domain Name was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that "rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant". That seems to be the case here.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept that a parking page, like the one to which the Domain Name resolves, which so obviously takes advantage of the fame of the mark to which it is identical (in the case of AMERICAN WOODMARK PRO) and confusingly similar (in the case of AMERICAN WOODMARK),could be a bona fide offering.
As paragraph 2.6 of the second edition of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") makes clear, it is possible in certain circumstances for use of a domain name for advertising purposes, (including parking pages) to provide a legitimate interest within the meaning of the Policy. An example would be where a registrant intends to profit from the descriptive meaning of a domain name without intending to take advantage of a third party's trademark rights. However, as the panel made clear in Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364, if the owner of the domain name is using it in order "…to unfairly capitalise upon or otherwise take advantage of a similarity with another's mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267)". The Respondent's choice of domain name here seems to be a clear attempt to unfairly capitalise on or otherwise take advantage of the Complainant's marks.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent certainly hasn't provided any. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above and accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
One way a complainant may demonstrate bad faith registration and use, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. It matters not that once the Internet user arrives at the website, it is immediately clear, because it is a parking page or otherwise, that it is unconnected with the trademark owner. The Internet user will have been confused, at least initially, as to the relationship between the website and trademark owner and that is enough to establish bad faith. Given that these are the circumstances in the present case, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
Another way a complainant may demonstrate bad faith registration and use is to show that there are circumstances indicating that the respondent has registered or acquired the domain name in issue primarily for the purpose of selling, renting, or otherwise transferring it to the complainant (the owner of the trademark to which it is confusingly similar or identical) or to a competitor of that complainant, for valuable consideration in excess of out-of-pocket costs directly related to the domain name. As noted above, the Domain Name has been made available for sale by the Respondent at USD 4,799.00. In the circumstances, the Panel finds, additionally, that the Respondent acquired the Domain Name primarily for the purposes of selling, renting, or otherwise transferring it to the Complainant or a third party, for valuable consideration in excess of out-of-pocket costs directly related to the Domain Name. The fact that, in the meantime, the Respondent used the Domain Name to attempt to attract, for commercial gain, Internet users to its parking page by creating a likelihood of confusion with the Complainant's marks, does nothing to detract from this further finding.
There may be other bases upon which a finding of bad faith registration and use could be founded, but given the findings set out above, it is unnecessary to go on to consider what they might be.
In all the circumstances the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith. As such, the Panel finds that the Complainant has satisfied 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 <americanwoodmarkpro.com> be transferred to the Complainant.
Jon Lang
Sole Panelist
Date: January 8, 2014