WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION WQ, Inc., dba Window Quilt v. Gordon's Window Décor, Inc. Case No. D2009-1595 1. The Parties
Complainant is WQ, Inc., dba Window Quilt of Brattleboro, Vermont, United States of America, represented by Stimmel, Stimmel & Smith, United States of America.
Respondent is Gordon's Window Décor, Inc. of Essex Junction, Vermont, United States of America, represented by Gravel and Shea, Burlington, United States of America. 2. The Domain Names and Registrar
The disputed domain name is registered with Network Solutions, LLC and is registered with 1&1 Internet AG (collectively, the “Domain Names”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2009. On that same day the Center transmitted by email to Network Solutions, LLC and 1&1 Internet AG a request for registrar verification in connection with the Domain Names. On November 27, 2009 and November 30, 2009, 1&1 Internet AG and Network Solutions, LLC respectively transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on December 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2009. The Response was filed with the Center on December 22, 2009.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on December 28, 2009. 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 WQ, Inc. dba Window Quilt is the manufacturer of WINDOW QUILT brand insulated window shades. Mr. Digney is Complainant's President. Complainant purchased the assets of the Window Quilt Company including the WINDOW QUILT trademark about a year and a half ago from its previous owner, the Warm Company. WINDOW QUILT brand window shades have been manufactured for more than three decades.
Complainant is the owner of a federal trademark registration for WINDOW QUILT, issued by the United States Trademark Office (Reg. No. 1,188,641) (“the WINDOW QUILT Mark”) on February 2, 1982. The first use of the WINDOW QUILT Mark in commerce was in August 1978. Complainant also conducts its business using the domain name.
Complainant is the only nationally authorized seller of WINDOW QUILT brand window covering online. All sales of such window covering by third parties require a written dealership agreement with Complainant.
Respondent Gordon's Window Décor, Inc., is in the business of designing, manufacturing and installing window treatments and related products including cellular insulating shades. It has four showrooms located in Vermont, New York, and Virginia. It also conducts its business online.
At one time, Respondent was a WINDOW QUILT dealer and sold WINDOW QUILT brand products. Respondent concedes that it does not have a dealership agreement with Complainant to sell WINDOW QUILT brand window coverings. 5. Parties' Contentions A. Complainant
The Domain Names are identical to and confusingly similar with the WINDOW QUILT Mark. They completely incorporate that Mark. The domain name is simply a pluralized version of Complainant's domain name and WINDOW QUILT Mark. The only differences between and the WINDOW QUILT Mark are that the domain name is pluralized, and it adds the number “1” at the beginning.
Respondent has never been commonly known by the name “Window Quilt” and Respondent acknowledges on its website that WINDOW QUILT is a registered trademark owned by Complainant. Complainant is the exclusive manufacturer of Window Quilt products and the sole owner of the manufacturing company and the WINDOW QUILT Mark. Respondent has no interest in the Complainant's Company or in the WINDOW QUILT Mark. Furthermore, Respondent is not making a legitimate noncommercial or fair use of the Domain Names. The website is strictly for commercial purposes and not for any fair or bona fide use of the WINDOW QUILT Mark since all uses of the website distract Internet users from the legitimate Window Quilt website to Respondent's website where it sells competing products. Respondent's websites were initially created by Respondent to sell Window Quilt products at a time when Respondent was an authorized dealer selling Window Quilt products. Respondent's relationship with Window Quilt has ceased. Respondent now has no legitimate purpose or need for the Domain Names.
Evidence of Respondent's bad faith includes in summary: (1) Respondent sought to transfer the Domain Names for a sum of money in excess of the amounts it has spent directly related to the Domain Names (USD 50,000); (2) Respondent is using the Domain Names to divert customers from Complainant to Respondent and offering them competitive products; (3) Respondent is using the Domain Names to disrupt Complainant's business. A search of the Alexa database reveals that the domain is linked from at least fifty other websites, so visitors to a great number of other websites are directed to Respondent's web site, even though they think they are going to a website for Complainant's products; (4) once at Respondent's site, consumers are not immediately aware that they are not at the genuine WINDOW QUILT website. Frustrated customers will either not look for Complainant's website or will be directed to a competitive product by Respondent; (5) in response to a cease and desist letter Respondent did not transfer the Domain Names as requested, but changed the content of its web site a few times, each time, however, the contents of the “new” Home page maintain a deceptive association with Complainant. Furthermore, when Respondent changed the content of its websites, it only changed the “Home” or “…/index.html” pages. The remainder of the websites (more than seventeen web pages) were not changed or taken down. They are still available to Internet users who search the term “Window Quilt” or who may have bookmarked a discrete page (see, e.g., ). The revisions of the “Home” pages act as an admission by Respondent that its former “Home” pages were bad faith uses under the Policy; (6) the pages that are still available online seem to inform potential customers how to order a Window Quilt brand product, but they actually lead potential customers to Respondent's phone number; and (7) in the source code for each of the web pages associated with each of Respondent's websites, it uses meta-tags including: “window quilts” (plural), “Window Quilt” (singular and capitalized), and “windowquilts” (one word, plural). B. Respondent
The Panel has attempted here to summarize the salient points of Respondent's reply that appear to be most closely associated with the issues in this proceeding:
(1) Respondent developed the websites associated with the Domain Names (“the window quilt website”) about eight years before the current owner purchased Complainant. Through three previous owners, Respondent serviced customers of Window Quilt products during that period with original parts purchased from them;
(2) Complainant's President Mr. Digney knew (or should have known) of Respondent's 10 year old website when it purchased the company and waited too long to complain by virtue of the doctrine of laches;
(3) Respondent does not have a dealership agreement with Complainant because Mr. Digney has refused to do business with it;
(4) Respondent registered on September 6, 2000. It did not use W because Respondent was not that company and because it thought having the “1” as the first digit would help searches in alphabetical directory listings. Respondent bought the domain name in September 2003 on the open market. The Window Quilt Company at the time was not interested in buying it and Respondent felt it needed to be protected but continued to use 1WindowQ.
(5) Respondent has always serviced its Window Quilt customers with bona fide Window Quilt product and parts;
(6) Respondent sells other types of insulating shades and feels this is not in competition to, but in support of, the Window Quilt product;
(7) Respondent admits the Domain Names are similar to the WINDOW QUILT Mark because it was the on-line source for WINDOW QUILT for the last 10 years and this helped strengthen the searchability of the site for their customers;
(8) Respondent does not mislead or divert customers;
(9) Respondent continues the site because it has an inventory of original WINDOW QUILT parts that it built up knowing that the company was going to be shut down, for the fourth time, while it went through another sale. Respondent believes the customer relationships it has built over the last 10 years are an asset of its company. It also believes the site is an asset that Respondent spent a lot of time and money developing since early 2000;
(10) Respondent has not registered the Domain Names to prevent Complainant from reflecting the mark in a corresponding domain name or to sell it to Complainant. Respondent admits it reacted to Mr. Digney's request that it turn the URL over to him by saying that if he did not sell the Window Quilt product it was only fair that he pay Respondent for the site;
(11) Respondent posits the customer base, Internet links to at least 50 other sites; SEO strength are at least worth USD 50,000;
(12) someone may visit Respondent's site, discover they can no longer buy Window Quilt custom made products and go somewhere else – that is not Respondent's fault that it cannot sell the Window Quilt product. It is standard procedure to give customers asking for Window Quilt their contact information if Respondent cannot service them;
(13) Respondent's lawyer advised Respondent to make changes to the site immediately while it tried to reach a solution (i.e., buying Respondent's site). 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on Complainant's uncontested evidence of both the use of the WINDOW QUILT Mark and the United States trademark registration for it, the Panel concludes that Complainant has rights in the WINDOW QUILT Mark.
The Domain Names and incorporate in their entirety the WINDOW QUILT Mark. Where a domain name incorporates a complainant's mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105. Adding an “s” at the end and/or a “1” at the beginning of the WINDOW QUILT Mark does not alleviate the confusion. Furthermore, Respondent admits the Domain Names are similar to the WINDOW QUILT Mark because it was the on-line source for WINDOW QUILT brand products for the last 10 years and this similarity helped customers find Respondent's site. According to Respondent, “by design” it had a name similar to the product name.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Complainant must prove Respondent has no rights to or legitimate interests in the Domain Names. Once a complainant makes a prima facie showing that a respondent has no rights or legitimate interests in a domain name, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with a complainant. See Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 at issue.
Complainant has made a prima facie showing that Respondent has no rights to, nor legitimate interests in, the Domain Names. First and foremost is the undisputed fact that Complainant is the exclusive owner of rights to the WINDOW QUILT Mark and the company has not given Respondent any rights, license, or permission to use the mark for any purpose including in the Domain Names. Respondent acknowledges that it is no longer a distributor of WINDOW QUILT brand products but refuses to accept that it no longer has rights to use the WINDOW QUILT Mark. Complainant has put Respondent on notice multiple times (e.g., by a cease and desist letter made of record here) that it has exclusive rights in the WINDOW QUILT Mark and that Respondent's use of the Domain Names, among other things, infringes those rights.
The Panel agrees with Complainant that Respondent has never been commonly known as WINDOW QUILT. Respondent was not able to dispute this fact. The evidence of record demonstrates that Respondent has been and continues to do business as Gordon's Window Décor, not “Window Quilt.” Throughout its Response, Respondent refers to its business name as Gordon's Window Décor or GWD. It has a domain name that reflects this trade name, and the website associated with that domain name uses Gordon's Window Décor ubiquitously on the website. Even on the “window quilt website” Respondent admits its identity, stating: “We have dealt with virtually every window treatment product ever developed, and have offered insulating Window Quilts for over 20 years from our retail store, Gordon's Window Decor in Essex Junction, Vermont.” Similarly in its Response here Respondent admits, “Gordon's Window Décor sells many insulating window treatments – one reason homeowners look to us for advice.”
The Panel also finds that Respondent is making a commercial use of the Domain Names with intent for commercial gain to misleadingly divert consumers. There is no dispute Respondent registered the Domain Names and built the window quilt website for commercial purposes – to sell WINDOW QUILT brand products – at a time when it was in business with prior owners of the WINDOW QUILT Mark. Insofar as Respondent is no longer a distributor of WINDOW QUILT brand products, and does not have the right to use the WINDOW QUILT Mark, the question arises why would Respondent insist on continuing to use the Domain Names and the associated window quilt website after it is no longer a distributor of WINDOW QUILT brand products and repeated demands to cease using the WINDOW QUILT Mark.
As discussed more fully in the next section, Respondent admits that the client base it has developed over the years it sold WINDOW QUILT brand products along with its investment in the window quilt website are assets which Respondent believes it has a right to exploit. So, when new or old customers looking for WINDOW QUILT brand products or Complainant (having typed in “window quilt” into a search engine) arrive at Respondent's window quilt website, they are greeted with information that would lead customers to believe that the website is affiliated with Complainant but the contact information is for Respondent. Now, Respondent has contact with customers it would not have had, but for its infringing use of the Domain Names. Respondent claims they are up front with WINDOW QUILT customers and inform them they cannot sell them WINDOW QUILT brand products, but Respondent can offer customers instead window covering products it makes or those it sells of other manufacturers. Respondent admits to the bait and switch as follows: “We tell them [customers] we are not the Window Quilt Company - in writing and on the phone. Unfortunately in too many recent cases we do not have what they want and have to tell them we cannot supply them with what they want because we no longer have as much inventory.” As further explanation: “In response I will repeat that we are selling off inventory and we are NOT diverting clients – we tell them who we are, what we do, and give them the actual Window Quilt contact information when we cannot service their needs.” Also, “we have in place as standard procedure to give customers asking for Window Quilt their contact information if we cannot service them.”
Lastly, Complainant argues that Respondent's use of the Domain Names is not a bona fide use under the Policy. Respondent replies, “[w]e have always serviced our Window Quilt customers with bona fide Window Quilt product and parts. Although Digney refused to sell us actual fully assembled Window Quilts custom made for our customers' windows, we continued to sell original Window Quilt parts, of which we still have inventory – much as auto parts distributors sell parts not cars. We do not have, nor never sold, imitation Window Quilts or Window Quilt parts made by any other company.” In addition to admitting its commercial intent in continuing to use the Domain Names, Respondent has misconstrued what “bona fide” means under the Policy. To be “bona fide,” the offering must meet several requirements that include, at the minimum, the following:
- Respondent must actually be offering the goods or services at issue;
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; and
- The Respondent must try not to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. It is uncontroverted that Respondent is no longer a distributor or permitted to offer WINDOW QUILT brand products. However, Respondent appears to be offering the WINDOW QUILT brand products using the Domain Names, using the WINDOW QUILT Mark on the window quilt website and on its Gordon Window Décor website and appearing to offer WINDOW QUILT brand products (e.g., drawings of the product, specifications for the product, directions for measuring windows for the product). Insofar as Respondent can no longer use the WINDOW QUILT Mark or sell the WINDOW QUILT brand products the only conceivable purpose to be gained in maintaining the window quilt website and using the Domain Names is to gain contact to Complainant's customers to sell them whatever products it has a right to sell, including products it manufacturers and products of other manufacturers. Furthermore, the window quilt website does not inform customers Respondent is no longer able to sell WINDOW QUILT brand products or that it does not have a business relationship with Complainant. In fact the site suggests the opposite. Although the Panel finds that Respondent has not cornered the market in domain names incorporating the WINDOW QUILT Mark, Respondent's activities fall within the ambit of the other factors for showing no bona fide use under the Policy.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(ii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product.”
These criteria are not exclusive and the panel may conclude that respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the disputed domain name.
The Panel agrees with Complainant that by using the Domain Names (and the good will associated with the WINDOW QUILT Mark) Respondent is intentionally attempting to attract, for commercial gain, Internet users to its window quilt website by creating a likelihood of confusion with Complainant's WINDOW QUILT Mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Respondent has a fully functional website for its business that uses a domain name that reflects the trade name for that business – Gordon's Window Décor. Considering the fact that Respondent is no longer a distributor of WINDOW QUILT brand products and has no rights to use the WINDOW QUILT Mark, Respondent's continuing use of the WINDOW QUILT Mark on the window quilt website and in the Domain Names is solely for commercial gain as discussed above. In fact Respondent admits as much:
“As for why we continue to keep the site up and active:
1. We have an inventory of original Window Quilt parts that we built up knowing that the company was going to be shut down, for the fourth time, while it went through another sale. We would like to sell that inventory and believe we have a right to do so.
2. Through our own efforts, we have built up customer relationships over the last 10 years. They want to be able to find us and we want them to find us. Further, we feel these customers, and their good will, are of value and an asset of our company.
3. We believe the site to be a worthwhile asset that we spent a lot of time and money developing since early 2000. We feel it presumptuous for Complainant to just tell us over the phone, in response to calls we initiated, to simply give this to him - without any compensation.”
The Panel also agrees with Complainant that Respondent's failure to transfer the Domain Names and its failure to modify the “window quilt” website to cease its infringing and deceptive nature or to take it down completely is further evidence of bad faith. And these activities – using confusingly similar Domain Names and a deceptive website – also constitute bad faith disruption of a business competitor.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) of the Policy. D. Laches
In its response, Respondent mentions, without more, the doctrine of laches stating: “Complainant knew (or reasonably should have known, based on due diligence) of my now 10 year old web site when he purchased the company. He has waited too long to complain and per the doctrine of laches, what he is asking for is unfair.” Respondent has not cited any support for whether laches can even be alleged in these UDRP proceedings. As far as the Panel is concerned this issue is a nonstarter insofar as laches has no application under the Policy. Those Characters From Cleveland Inc. v. User51235 (38so92lf@),WIPO Case No. D2006-0950; First Franklin Financial Corporation and National City Corporation v. The Franklin Savings and Loan Company,WIPO Case No. D2005-0762. Furthermore, Respondent did not even attempt to demonstrate how Complainant's activities constituted laches or how Respondent would be entitled to a ruling of laches based on its own conduct. See, e.g., National Football League v. Alan D. Bachand, Nathalie M. Bachand d/b/a ,WIPO Case No. D2009-0121 (“Respondent would be ineligible for relief under an equitable doctrine such as laches because of Respondent's own ‘unclean hands' (another equitable concept). Specifically, after being made aware in October 2005 of Complainant's objections to the unauthorized use of the SUPER BOWL mark in a domain name or otherwise, Respondent proceeded to register, over the next three years, several of the SUPER BOWL-formative Domain Names now at issue in this case.”). 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 names and be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Dated: January 11, 2010
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