WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allied Building Products Corp v. A c/o Whois Identity Shield
Case No. D2006-0833
1. The Parties
The Complainant is Allied Building Products Corp, of New Jersey, United States of America, represented by Hinckley, Allen & Snyder, LLP.
The Respondent is A c/o Whois Identity Shield of Canada.
2. The Domain Name and Registrar
The disputed domain name is registered with Nameview Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2006. On July 3, 2006, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On July 5, 2006, Nameview Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 July 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August�2,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2006.
The Center appointed Adam Samuel as the sole panelist in this matter on August�11,�2006. 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
For more than twenty five years, the Complainant has provided homeowners, builders and contractors with a full line of residential and commercial building and construction products and materials, including residential and commercial roofing products and supplies, windows, doors, skylights, vinyl and wood siding and sofits, manufactured stone and pavers, gutters, insulation, tile, wall panels, drywall, lumber, cement and construction and building tools and accessories, including ladders, scaffolding, hammers, utility knives, and power tools. The Complainant sells its products through its Allied and Allied Building Products Corp. stores.
The Complainant applied for registration in the USA of the trade mark ALLIED in April 1998 and this was granted in January 2003. In July 2003, the Complainant applied for registration of ALLIED BUILDING PRODUCTS CORP. This was granted in December 2004.
The domain name in issue here was registered on November 30, 2001.
5. Parties’ Contentions
A. Complainant
Since 1979 and 1986 respectively, the Complainant has been using the word “Allied” and “Allied Building Products Corp” in connection with its business. It owns registered trade marks for both names. It has promoted its business through the website since 1996.
The domain name in issue encompasses the ALLIED trademark with the addition of generic terms. It is the same as the ALLIED BUILDING PRODUCTS CORP trademark except that “CORP” has been left out.
The Respondent has no rights or legitimate interest in or in using the name incorporated in the domain name. It is not known by that name or anything similar. The Complainant has not authorized the Respondent to use these names.
The domain name in issue resolves to a website that provides hyperlinks to various websites that market construction and building materials for which it presumably is paid on a pay-per-click basis. This demonstrates bad faith in that the Respondent is using the domain name to create confusion with the Complainant’s trade mark and so divert business from it to competing suppliers of construction-related products. It does this to earn revenue from those suppliers.
It is a reasonable assumption that the Respondent registered the domain name knowing of the Complainant’s rights to the trade mark ALLIED.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The addition of generic words after a trademark do not remove the confusing similarity between the mark and the domain name. Here, the Complainant had applied for trademark registration of the name “Allied” that it had been using for a substantial length of time prior to that to market its building products when the Respondent registered a domain name, adding the words “building products” to the domain name. Omitting the word “corp” has the same effect with regard to the Complainant’s later registered mark.
The only question is whether the fact that the registration of the domain name prior to the registration of the trademarks means that the domain name is not confusingly similar to a trademark in which the Complainant has rights. Paragraph 4(a)(i) of the Policy uses the present tense and does not refer to the date of registration. As the Panel in Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544 said;
“These two registrations are sufficient for the purposes of the first part of para.�4(a)(i), although it is noteworthy that both registrations are quite recent and do not appear to predate the registration of the domain name.”
For these reasons, the Panel finds that the domain name in issue is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent does not appear to trade under the name, Allied. There is no evidence that the owner of the trademark in question, the Complainant, has authorized the Respondent to use the trademark. The Respondent has never to the Panel’s knowledge asserted any rights or legitimate interests in the name. For these reasons, on the basis of the evidence in case file, and in view of the absence of the Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
The Complainant has shown that it has used the word “Allied” for 25 years to promote its building products across the United States of America. While the word “allied” is a fairly generic term, it is too much of a coincidence in the circumstances that the Respondent has chosen to registered a domain name combining “allied” and “building products”. It is a reasonable inference from this that the Respondent knew of the Complainant’s business and wanted to exploit the name to divert internet traffic from it, probably to benefit from pay-by-click arrangements with alternative suppliers.
In the absence of any explanation from the Respondent, the Panel concludes that the choice of “building products” as two words to put after the word “allied” was probably made “for the purpose of disrupting the business of a competitor”; or “to attract, for commercial gain, Internet users to [the] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” Under paragraph 4(b)(iii) and (iv) of the Policy, this is evidence of registration and use in bad faith.
For these reasons, the Panel concludes that the Respondent registered and has used the domain name in issue in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Adam Samuel
Sole Panelist
Dated: August 13, 2006
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