WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Weather Shield, Mfg., Inc. v. Domain Magic, LLC
Case No. D2007-0052
1. The Parties
The Complainant is Weather Shield, Mfg., Inc. (“Complainant”), Wisconsin, United States of America, represented by Price, Heneveld, Cooper, DeWitt & Litton, United States of America.
The Respondent is Domain Magic, LLC, (“Respondent”) Lutz, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Intercosmos Media Grup d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2007. On January 15, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On January 15, 2007, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, 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 January�17,�2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 8, 2007.
The Center appointed Lynda M. Braun as the sole panelist in this matter on February�13, 2007. 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 in this administrative proceeding is Weather Shield, Mfg., Inc., a corporation of the state of Wisconsin, having a place of business at One Weather Shield Plaza, Medford, Wisconsin.
Complainant first registered the mark WEATHER SHIELD MFG, INC. MEDFORD, WIS. in 1981 and has obtained multiple registrations since, including a registration for the mark WEATHER SHIELD used in association with the sale of windows and doors, as well as the following United States Registration Nos.:
MARK
REG. NO.
GOODS AND SERVICES
WEATHER SHIELD WINDOWS & DOORS SINCE 1955
2,656,163
Metal Windows and Doors
WEATHER SHIELD LITE FOUNDATION
2,433,690
Charitable Fund Raising
WEATHER SHIELD LEGACY SERIES
2,404,149
Aluminum Clad Wood Windows
WEATHER SHIELD LEGACY SERIES
2,525,571
Aluminum Clad Windows
RETROVISION WEATHER SHIELD
WINDOWS & DOORS MEDFORD WI
2,256,809
Vinyl Windows and Doors
CUSTOM SHIELD WEATHER SHIELD WINDOWS & DOORS MEDFORD WI
2,260,676
Wood Replacement Windows
PROSHIELD WEATHER SHIELD Wooden WINDOWS & DOORS MEDFORD WI
2,264,454
Windows and Doors
VISIONS 2000 WEATHER SHIELD WINDOWS & DOORS MEDFORD WI
2,260,675
Non-Metallic Vinyl Windows & Doors
VISIONS WEATHER SHIELD
WINDOWS & DOORS MEDFORD WI
2,302,765
Vinyl Windows and Doors
WEATHER SHIELD WINDOWS & DOORS MEDFORD WI WEATHER SHIELD
2,259,066
Metal Windows and Doors
WEATHER SHIELD WINDOWS & DOORS MEDFORD WI
2,298,864
Metal Windows and Doors
WEATHER SHIELD WINDOWS & DOORS MEDFORD WI
2,246,627
Nonmetal Windows and Doors
WEATHER SHIELD
2,085,821
Metal Windows and Doors
WEATHER SHIELD MFG, INC.
MEDFORD WIS.
1,166,521
Windows and Doors
All of the registered trademarks are used in connection with, among other things, the sales of windows and/or doors and services associated therewith. In addition, Complainant owns the domain name , which is registered with Network Solutions, Inc.
Complainant has spent considerable time and money advertising and marketing its products bearing its apparently known marks. Today, 50 years after being founded, Complainant has grown substantially and is one of the leading window and door manufacturers in the United States of America. Employees now work in more than two million square feet of manufacturing space in five different cities and manufacture windows and doors of every style, shape and size and promote those products throughout the nation. Complainant’s dealers were recently recognized as the 2006 dealers of the year by Window & Door magazine. Complainant has designed and provided windows and doors for use in several energy efficient ThermSmart homes and showcase homes.
5. Parties’ Contentions
A. Complainant
The following are the allegations made by Complainant in this proceeding:
Complainant has owned rights to the mark WEATHER SHIELD MFG, INC. MEDFORD, WIS. since 1981, and has obtained multiple federal registrations since, including a registration for the mark WEATHER SHIELD used in association with the sale of windows and doors. Complainant holds many trademark registrations that include the words “WEATHER SHIELD” (hereinafter referred to as “WEATHER SHIELD marks”). All of the registered trademarks are used in connection with, among other things, the sales of windows and/or doors and services associated therewith. In addition, Complainant owns the domain name , which is registered with Network Solutions, Inc.
Complainant has spent considerable time and money advertising and marketing its products bearing its widely known marks.
The Respondent registered the Disputed Domain Name
Respondent knew of the rights that Complainant has in the various WEATHER SHIELD marks at the time of obtaining the Disputed Domain Name and acted in bad faith when procuring the Disputed Domain Name. Complainant engages in extensive marketing and advertising, including brochures and mailings that feature its name and mark. Furthermore, Complainant’s website receives a great deal of traffic and would have been discovered by Respondent if Respondent would have conducted even minimal internet searching. In addition, Complainant’s rights in the WEATHER SHIELD marks would have been readily discovered if Respondent had conducted a basic domain name search or a search of the United States Patent & Trademark Office records, which are readily available on the internet. Moreover, this indication of constructive notice is further evidenced by Respondent’s use of the Disputed Domain Name to misdirect internet users to third party door and window manufacturers the very business in which Complainant has developed its reputation in for the last 50 years. Considering the inclusion of the word “windows” in the Disputed Domain Name, it is inconceivable that Complainant’s business was not known to Respondent.
Respondent is using the Disputed Domain Name to promote and advertise websites offering window and door products for sale by Complainant’s competitors. When an unknowing Internet user searches for legitimate services related to windows and doors and types in the Disputed Domain Name into the address bar of his or her internet browser, the user is directed to a website that advertises hyperlinks for competitors of Complainant.
Moreover, when the internet user clicks on any of the links on Respondent’s page, the user is directed to sponsored search listings for websites, many of which offer doors or windows or installation of the same in competition with the products and services offered by Complainant.
Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent has no connection or affiliation with Complainant and has not been granted consent or a license, express or implied, to use the WEATHER SHIELD marks in a domain name or in any other manner.
Respondent has never been known, recognized, or otherwise associated with the Disputed Domain Name.
The Disputed Domain Name is confusingly similar to the registered WEATHER SHIELD marks of Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (the Policy, paragraph�4(a)(i-iii)):
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no right or legitimate interest in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complaint shows that Complainant has valid and well-established exclusive rights in its WEATHER SHIELD marks. Complainant possesses a valid federal trademark registration, uses its WEATHER SHIELD marks to offer its business-related products and services, and has expended significant resources to promote its WEATHER SHIELD marks. See generally MSNBC Cable, LLC v. T, WIPO Case No.�D2000-1204. Complainant also has established common law rights in the word mark WEATHER SHIELD based on its use of these words alone on its products, on its website, and its domain name . See Askonas Holt Ltd v. Webocracy Inc., WIPO Case No.�D2000-0392 (common law trademarks are protected under the Policy).
As numerous courts and prior WIPO UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772, 777 (E.D. Mich. 2000) (finding that , and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No.�D2000-0253 (finding that QUIXTAR and are identical for purposes of the Policy). The addition of descriptive or non-distinctive terms in the domain name does not affect a finding that a domain name is confusingly similar to a complainant’s registered trademark.
The Panel finds that Respondent’s domain name is confusingly similar to Complainant’s WEATHER SHIELD marks. The Disputed Domain Name incorporates the entirety of Complainant’s WEATHER SHIELD marks and the only difference between the Disputed Domain Name and Complainant’s WEATHER SHIELD marks lies in the addition of the word “doors” and the addition of the “.com” after Complainant’s WEATHER SHIELD marks. The addition of such generic phrases to a complainant’s mark is not sufficient to escape a finding of similarity when a disputed domain name otherwise wholly incorporates a complainant’s mark. See Westcoast Contempo Fashions Ltd. v. Manila Indus. Inc., Claim No.: FA0610000814312 (Nat’l Arb. Forum, November 29, 2006) (explaining that the disputed domain name was confusingly similar to the complainant’s mark despite the fact that respondent had added a word associated with the complainant’s business to the mark); Dermalogica, Inc, and Int’l Dermal Institute, Inc. v. Domains to Develop, Claim No.: FA0307000175201 (Nat’l Arb. Forum, September 22, 2003) (explaining that merely adding the letters “t” and “a” to the mark did not sufficiently differentiate the respondent’s domain name from the complainant’s mark). Indeed, the phrase “doors” is descriptive and non-distinctive because it is commonly used. Finally, it is well-established that the addition of the phrase “.com” is “non-distinctive because it is required for registration of a domain name.” See RRI Financial, Inc. v. Ray Chen, WIPO Case No.�D2001-1242.
The Panel therefore concludes that the disputed domain name is identical or confusingly similar to Complainant’s WEATHER SHIELD marks in which Complainant has valid and exclusive rights.
B. Rights or Legitimate Interests
Once a complainant establishes that a respondent’s domain name is identical or confusingly similar to a complainant’s mark, and has made a prima facie case that the respondent lacks rights or legitimate interest in the domain name, the burden shifts to the respondent to establish some rights or legitimates interest with respect to the domain name. See Sony Kabushiki Kaisha a/t/a Sony Corporation v. , WIPO Case No.�D2000-1074. The Panel noting that that the Complainant has not authorized the Respondent to use the WEATHER SHIELD marks, finds that Complainant has made such a prima facie case, which Respondent has not answered.
Respondent has not shown that it has made any bona fide commercial use or any legitimate non-commercial or fair use of the Disputed Domain Name without any intent either for commercial gain or to mislead or divert consumers or tarnish the trademark at issue. Complainant states in the Complaint, and submits evidence in its schedule of annexes to the Complaint, that the Disputed Domain Name is being used to promote and advertise websites offering window and door products for sale by Complainant’s competitors. When an unknowing Internet user searches for legitimate services related to windows and doors and types in the Disputed Domain Name into the address bar of his or her internet browser, the user is directed to a website that advertises hyperlinks for competitors of Complainant. Moreover, when the internet user clicks on any of the links on Respondent’s page, the user is directed to sponsored search listings for websites, many of which offer doors or windows or installation of the same in competition with the products and services offered by Complainant. Respondent’s use of the Disputed Domain Name to redirect unsuspecting internet users to click-through advertisements and sponsored links present on , including to those competing with Complainant, fails to constitute a bona fide commercial offering of goods and services under the contested Disputed Domain Name. Such use certainly does not constitute a legitimate non-commercial or fair use without any intent either for commercial gain, or to mislead or divert consumers or tarnish the trademark at issue. See MSNBC Cable, LLC v. T, WIPO Case No. D2000-1204; see also Qwest Communications International, Inc. v. DefaultD a/k/a Brian Wick, (“The domain name is thereby used with intent for commercial gain to misleadingly divert consumers and to tarnish the trademark at issue”).
Respondent’s default notwithstanding, there is no evidence in the record that the Respondent is in any way associated with Complainant, that Respondent is now or was ever known by , that Respondent possesses any trademark or service mark rights in the Disputed Domain Name , or that the Respondent has other authority or permission to use Complainant’s WEATHER SHIELD marks. Indeed, the Complainant states expressly WIPO Case No. D2003-0002 that the latter is not the case. See, e.g., Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Jonathan Dardashti, WIPO Case No.�D2001-1158 (finding no legitimate interest because, inter alia, the complainant had not licensed mark to the respondent). Furthermore, by not submitting a response to Complaint, the Respondent has failed to invoke any other circumstance that might demonstrate, pursuant to paragraph�4(c) of the Policy, that it holds some right or legitimate interest in the Disputed Domain Name. See Ahead Software AG. v. Leduc Jean, WIPO Case No.�D2004-0323; see also Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No.�D2000-1563 (respondent’s default alone sufficient to conclude that it had no right or legitimate interest in the domain name).
Therefore, the Panel finds that the second element of paragraph�4(a) of the Policy has been met by Complainant.
C. Registered and Used in Bad Faith
First, in view of the circumstances the Panel infers the Respondent’s bad faith intent from the Respondent’s lack of response to the Complaint. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No.�D2001-0210.
Second, Respondent’s knowledge of Complainant’s WEATHER SHIELD marks when Respondent first registered the Disputed Domain Name supports a finding of registration in bad faith. As the undisputed evidence in the Complaint shows that Complainant owns numerous U.S. trademark registrations, the Panel infers that the Respondent was well aware of Complainant’s WEATHER SHIELD marks but chose, in spite of such knowledge, to register the Disputed Domain Name with the intent of causing consumer confusion and financially benefiting from the goodwill inherent in those well-known WEATHER SHIELD marks. Such conduct is a demonstration of bad faith. See Fairmont Hotel Management L.P. v. Puts, WIPO Case No. D2001-0431 (finding bad faith because “Complainant’s registered trademark is long-established and widely known and so, in the absence of evidence or even an assertion by the Respondent to the contrary, knowledge of the Complainant’s rights in the trademark can be imputed to the Respondent at the time of registration of the domain names.”). This indication of constructive notice is further evidenced by Respondent’s use of the Disputed Domain Name to misdirect internet users to third party door and window manufacturers - the very business in which Complainant has developed its reputation for the last 50 years. Considering the inclusion of the word “windows” in the disputed domain name, it is inconceivable that Complainant’s business was not known to Respondent. See Gov. Employees Insurance Co. (GEICO) v. Forum LLC, WIPO Case No. D2005-1131.
Third, Respondent provides links on its website to Complainant’s competitors’ web sites - other apparel manufacturers that market and sell the identical products as Complainant. Diverting traffic in this manner with the result that consumers searching for Complainant may land on a competitor’s site inadvertently, but then decide to purchase from that manufacturer because it has taken an interest in the goods offered is the epitome of bad faith. Indeed, the foregoing is known as initial interest confusion in U.S. trademark law and is actionable. See Micro Electronics, Inc. v. J Lee, WIPO Case No. D2005-0170 (diversion of traffic evidence of bad faith). Moreover, the diversion of traffic to another site trades on the good will of the mark owner, creates a mistaken belief that the mark owner condones the conduct or somehow is affiliated with the other site and/or gives the impression to consumers that the products from the site with the confusingly similar domain name are WEATHER SHIELD products or are otherwise associated with Complainant. This, too, demonstrates bad faith.
Fourth, Respondent has obtained or at least expected to obtain some commercial gain, either by selling links to Complainant’s competitors, selling advertising space, or by through the “pay per click” being paid. Respondent’s use of the Disputed Domain Name for commercial benefit by receiving “pay-per-click” fees and diverting Internet users to Complainant’s competitors is evidence of bad faith registration and use pursuant to paragraph 4(b)(iii) and (iv) of the Policy (. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat’l Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy����4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat’l Arb. Forum November� 22, 2002) (finding that if respondent profits from its diversionary use of complainant’s mark when the domain name resolves to commercial websites and respondent fails to contest the Complaint, it may be concluded that respondent is using the domain name in bad faith pursuant to paragraph 4(b) )(iv) of the Policy.
Further, no plausible good faith explanation for Respondent’s use of the Disputed Domain Name can be provided and it is well settled that Respondent’s method of infringement (using an additional word to misdirect Internet traffic) constitutes bad faith under the Policy. See Microsoft Corp. v. Devansh Mehta, Claim No. FA0603000652942 (Nat’l Arb. Forum May 23, 2006); American Express Marketing & Development Corp., v. Gold Coast Employee Relations, Claim No. FA0603000662950 (Nat’l Arb. Forum May 1, 2006); Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033.
Finally, Respondent’s bad faith is also evidenced in its pattern of abusive registration, infringement, and cybersquatting. Domain names of Respondent incorporating famous and distinctive marks have recently been the subject of UDRP proceedings and in each case, the Panel ordered Respondent to transfer the disputed domain name to the complainant. See Albert Einstein Healthcare Network v. Domain Magic, LLC, Claim No. FA0611000846808 (Nat’l Arb. Forum, January 11, 2007); Greg Young Publishing v. Domain Magic, LLC, Claim No. FA0701000886337 (Nat’l Arb. Forum February�16, 2007); Deason v. Domain Magic, LLC, Claim No. FA0612000869574 (Nat’l Arb. Forum, January 30, 2007). Such conduct - the registration of multiple domain names that are confusingly similar to established marks - has been deemed to be evidence of bad faith. CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273.
Accordingly, the Panel finds that the third element of paragraph�4(a) of the Policy has been met by Complainant.
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.
Lynda M. Braun
Sole Panelist
Dated: February 26,�2007
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