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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AWI Licensing LLC v. Oneanddone Private Registration / Brian MacNeal

Case No. D2019-1478

1. The Parties

Complainant is AWI Licensing LLC, United States of America (“United States”), represented by The Belles Group, P.C., United States.

Respondent is Oneanddone Private Registration, United States / Brian MacNeal, United States.

2. The Domain Name and Registrar

The disputed domain name <ermstrongceilings.com> is registered with 1&1 IONOS Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2019. On June 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2019, 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 Complainant on July 1, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 1, 2019. Complainant submitted a second amended Complaint on July 8, 2019, and a third amended Complaint on July 10, 2019.

The Center verified that the Complaint together with the amended Complaints 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 Respondent of the Complaint, and the proceedings commenced on July 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 5, 2019.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on August 20, 2019. 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.

4. Factual Background

Complainant is a subsidiary of Armstrong World Industries, Inc. (“AWI”), which is based in Lancaster, Pennsylvania, United States. Complainant, together with AWI and its affiliates, is a global leader in the design and manufacture of commercial and residential ceilings, walls, and related products and services, with revenues in recent years of over USD 1.2 billion.

Complainant has several registered trademarks in the United States, where Respondent lists his address of record. These include registrations for the term ARMSTRONG by itself, in stylized form, with design features, and with descriptive terms such as “ceiling” or “ceilings,” for various products and services related to ceiling and other room materials and planning tools.

Complainant’s registrations include United States Registration No. 0523396 for ARMSTRONG (registered April 4, 1950); United States Registration No. 0519429 for ARMSTRONG’S (registered January 3, 1950); United States Registration No. 2750846 for ARMSTRONG.COM (registered August 12, 2003); United States Registration No. 3396822 for ARMSTRONG (registered March 18, 2008); and United States Registration No. 4664696 for GET A CEILING YOUR WALLS WILL ENVY ARMSTRONG (registered December 30, 2014).

Complainant owns the registration for several domain names incorporating its marks. These include, among others, <armstrongworldindustries.com> and <armstrongceilings.com>. Complainant uses the domain names and associated websites to inform customers about its products and services.

The disputed domain name <ermstrongceilings.com> was registered on June 12, 2019.

Respondent has apparently not used the disputed domain name to link to an active web site. However, Respondent has used an email address associated with the disputed domain name as part of a scheme to contact sales representatives of Complainant, masquerading as a company manager from Complainant, and attempting to divert payments to an account controlled by Respondent. Respondent has no license from, or other affiliation with, Complainant, nor any permission to use Complainant’s marks in connection with its activities.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) the disputed domain name <ermstrongceilings.com> is identical or confusingly similar to Complainant’s trademark; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.

In particular, Complainant contends that it has trademark registrations for ARMSTRONG, and variants thereof, including with the term “ceiling”, which describes Complainant’s products and services. Complainant also contends that it owns domain name registrations with variations on its ARMSTRONG mark, including the term “ceiling” or “ceilings.” Complainant contends that Respondent has merely used the disputed domain name, which contains an obvious misspelling of Complainant’s mark, to set up an email account associated with the URL in a “phishing” scheme meant to lure in and confuse company representatives by masquerading as a company manager, and diverting payments into an account controlled by Respondent. Complainant further contends that Respondent has no rights or legitimate interests in the registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in setting up the email account, when Respondent clearly knew of Complainant’s rights.

B. Respondent

Respondent did not file a reply to Complainant’s contentions in this proceeding.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether the disputed domain name <ermstrongceilings.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is.

The disputed domain name contains an obvious misspelling of Complainant’s ARMSTRONG mark. This indicates a practice commonly known as “typosquatting,” where a domain name registrant deliberately registers common misspellings of a well-known mark in order to divert consumer traffic. Other UDRP panels have routinely found typosquatted domain names like this to be “confusingly similar” for purposes of a finding under the UDRP. See Edmunds.com, Inc. v. Yingkun Guo, WIPO Case No. D2006-0694 (<edunds.com>); Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489 (<disneychanel.com>, <disneywolrd.com>, <walddisney.com>); see also Credit Karma, Inc. v. Domain Admin, WhoIs Privacy Corp., WIPO Case No. D2017-0194 (<credidkarma.com>). In addition to the misspelling of Complainant’s ARMSTRONG mark, the disputed domain name includes the term “ceilings,” a term included in some of Complainant’s own registered marks and domain names, and which is descriptive of Complainant’s services and products related to ceiling and other room materials and planning tools. Numerous UDRP panels have agreed that supplementing or modifying a trademark with dictionary or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (transferring <walmartbenfits.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>).

The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.

Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in section 4 of this Panel’s decision, Respondent has used an email address associated with the <ermstrongceilings.com> disputed domain name as part of a scheme to contact sales representatives of Complainant, masquerading as a company manager from Complainant, and attempting to divert payments to an account controlled by Respondent. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted, thereby satisfying paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] website or location or of a product or service on [the] website or location”. As noted in section 4 of this Panel’s decision, Respondent has used an email address associated with the <ermstrongceilings.com> disputed domain name as part of a scheme to contact sales representatives of Complainant, masquerading as a company manager from Complainant, and attempting to divert payments to an account controlled by Respondent.

Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.

Given the nature of the disputed domain name, and the tactics employed by Respondent in targeting representatives of Complainant, masquerading as a company manager of Complainant, and attempting to divert payments to Respondent via emails using a URL associated with the disputed domain name, the Panel finds strong evidence that Respondent has registered and used the disputed domain name with knowledge of Complainant’s prior trademark rights, thereby evidencing bad faith.

Therefore, this Panel finds for purposes of this proceeding that Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

For all of 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 <ermstrongceilings.com> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Date: September 3, 2019

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