WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Nudura Corporation v. New England Wall N Solar, LLC Case No. D2010-0035 1. The Parties
The Complainant is Nudura Corporation of Barrie, Ontario, Canada, represented by Gowling Lafleur Henderson LLP, Canada.
The Respondent is New England Wall N Solar, LLC of East Kingston, New Hampshire, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Intercosmos Media Group d/b/a directNIC.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2010. On January 11, 2010, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com. a request for registrar verification in connection with the disputed domain name. On January 11, 2010, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on January 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2010. The Respondent submitted two e-mails on January 17, 2010 and January 19, 2010 respectively. On these dates the Center requested the Respondent to confirm that its communications should be regarded as its complete Response and further informed Respondent that in case such a confirmation was not received, its communications of January 17, 2010 and January 19, 2010 would be regarded as its complete Response. No confirmation was received from the Respondent.
The Center appointed David Perkins as the sole panelist in this matter on February 16, 2010. 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 4.A The Complainant
4.A.1 The Complainant was founded in 1986. The Complainant is a leading manufacturer and distributor of insulated concrete forms, which are commonly known in the construction industry as “ICF” products.
4.A.2 ICF products comprise hollow blocks or panels made of plastic foam. Once those blocks / panels are joined together, concrete is poured to form exterior walls of houses and buildings. The foam acts as integrated insulation for the concrete and, accordingly, a structure using ICFs is more energy efficient because it removes the need for additional insulation to be installed after the concrete is poured.
4.A.3 The Complainant has manufactured and distributed ICFs under the NUDURA trademark in North America and Europe, first sales dating back to 2003. In 2008, the Complainant's annual sales of its NUDURA branded ICFs exceeded CAD 5.1 million.
4.A.4 The Complainant has received numerous awards and recognition in the ICF industry for its NUDURA products. The Complaint exhibits the following:
(1) On January 19, 2007 following 3 years' work, the Complainant obtained formal ICC-ES approval, which authorises use of its NUDURA ICFs in the United States of America for buildings ranging from domestic homes to churches and to high rise office blocks.
(2) In March 2007, NUDURA ICFs were given European Technical Approval (ETA-07/0034) which applies to building construction throughout Europe by the British Board of Agrément.
(3) The “Best Custom Home” and “Best Overall Project” Award in 2006 from ICF Builder Magazine.
(4) The “Best Small Residential” home Award by the same magazine in 2007.
(5) In August 2007, Concrete Contractor magazine named NUDURA ICF products as one of the Top 25 Products of the Year.
(6) In February 2009, the Complainant won 4 ICF Builder Awards at the 2008 Annual event of the World Concrete Show in Las Vegas.
(7) The Complainant was also awarded LEED's highest honour by achieving Platinum Rating for the West Village Suites, a student residence at McMaster University, Hamilton, Ontario. The NUDURA trademarks
4.A.5 The Complainant is the proprietor of the following registered trademarks:
Country
Registration No
Mark
Class(es)
Date of Application / Date of Registration
Canada
587,087
NUDURA
19
Filed: September 18, 2001
Registered: August 13, 2003
United States of America
2,885,618
NUDURA
19
Filed: March 11, 2002
Registered: September 21, 2004 The NUDURA domain names
4.A.6 The Complainant is the registrant of the following top level domain names ; ; ; ; ; ; ; ; and .
4.A.7 The Complainant has operated a website for its ICF products at since August 2001.
4.A.8 The Complainant exhibits a Google Search for NUDURA, wherein 99 of the first 100 results directly refer to its NUDURA ICF product. Correspondence between the Parties
4.A.9 The Complainant asserts that, in the light of the foregoing, its NUDURA brand is very well-known in the ICF and construction industry in at least North America and Europe.
4.A.10 On May 22, 2009 counsel for the Complainant sent a cease-and-desist letter to the Respondent requesting transfer to the Complainant of the disputed domain name. A further reminder email was sent on June 3, 2009. On June 17, 2009, the Respondent replied by email in the following terms:
“Dear Chris,
As indicated to Murrary Scheider a week ago, I would be happy to sell to your client.
Present me with a reasonable offer and the .com is yours….
Best regards,
[Mr. B. Dexter]”
“Chris” is a partner with the Complainant's counsel, Gowlings.
4.A.11 The Complainant's counsel replied by letter dated August 12, 2009 reiterating the request to transfer the disputed domain name made in the letter of May 22, 2009. No reply to that letter or the reminder of September 30, 2009 was received from the Respondent. 4.B The Respondent
4.B.1 In February 2007, the Respondent was appointed authorised exclusive distributor for the Complainant's NUDURA ICF products for a territory delineated on a map scheduled to a Distribution Agreement. The term of that Agreement was for a Trial Period up to June 30, 2007 and thereafter potentially for an additional period of two years. That Distribution Agreement was, however, terminated effective July 20, 2007.
4.B.2 The disputed domain name was registered by the Respondent on August 3, 2006, with Mr. B. Dexter as the Administrative and Technical Contact. Mr. Dexter was the Respondent's authorised representative who signed the Distribution Agreement in February 2007.
4.B.3 The disputed domain name resolves to the Respondent's website which carries links to not only the Complainant's NUDURA ICF products but also to ICF products of the Complainant's competitors, namely HOBBS ICF; Autoclaved Aerated Concrete from Aercon Florida LLC; and an ICF known as Accelerated Tec. The website also features solar heaters and building products from Green Source Products LLC of Cleveland, Ohio.
4.B.4 The Respondent states that at the time it was a distributor for the Complainant's NUDURA ICF products it informed one Ms. L. Vale of the Complainant that it had registered the disputed domain name and also . Mr. Dexter says that Ms. Vale told him that these registrations were a good idea for the mutual benefit of the Complainant and the Respondent. Mr. Dexter also confirms that the Respondent's website continues to provide customers with a link to the Complainant's NUDURA ICF products and that he continues to use such products in his own projects. 5. Parties' Contentions 5.A Complainant
5.A.1 The Complainant asserts that it has registered trademark rights in the mark NUDURA. The suffix ICF to the disputed domain name is merely descriptive of the Complainant's products which have been sold under and by reference to that trademark since 1986. The distinctive element of the disputed domain name is the NUDURA prefix. Accordingly, the Complainant's case is that the disputed domain name is confusingly similar to its NUDURA trademark.
5.A.2 The Complainant says that the Respondent cannot demonstrate any rights to or legitimate interests in the disputed domain name. Certainly, the Complainant says, the Respondent cannot establish that any of the circumstances set out in paragraph 4(c) of the Policy apply. Specifically, the Complainant says it is clear that the Respondent was well aware of the NUDURA trademark when obtaining the disputed domain name in August 2006.
5.A.3 Further, the Complainant says that the Respondent well knew that it was not entitled to use the NUDURA trademark as part of a domain name without specific written authorisation from the Complainant, which written authorisation was not - the Complainant says - given to the Respondent. The Distribution Agreement contained specific terms relating to use of the NUDURA trademark including the following provision:
“The Distributor shall not use the NUDURA Trade-marks as, or as part of, a domain name or in connection with a website unless specifically authorised to do so by Nudura Corporation in writing.”
The Distribution Agreement also provides that, on termination, the Distributor shall immediately stop using the NUDURA trademark.
5.A.4 The Complainant says that, by reason of its prior rights in the NUDURA trademark, the Respondent cannot claim to have made any bona fide or fair use of the disputed domain in any of the circumstances falling with paragraph 4(c) of the Policy.
5.A.5 As to registration in bad faith, the Complainant points to its prior use since 1986 of the NUDURA mark and to its prior registered trademark rights in NUDURA, both of which antedate registration in August 2006 of the disputed domain name.
5.A.6 As to bad faith use of the disputed domain name, the Complainant points to the Respondent's website which provides links to ICFs of its competitors as use of the domain name likely to cause confusion with the NUDURA trademark within paragraph 4(b)(iv) of the Policy. The Complaint cites a number of decisions under the Policy where making such use of a disputed domain name has been held to constitute bad faith use for the purposes of paragraph 4(a)(iii) of the Policy. The cases cited are General Electric Company v. Arck Electrical Supply, WIPO Case No. D2008-0732; Audi AG, Volkswagen Group of America, Inc v. Sandlott LLC, Jim Gossett,WIPO Case No. D2008-1053; ACCOR S.A. v. springflex,WIPO Case No. D2008-0615 and Toyota Motor Credit Corporation v. Digi Real Estate Foundation,WIPO Case No. D2006-1619. 5.B Respondent
5.B.1 As noted in paragraph 4.B.4 above, the Respondent relies upon two defences. First, that the registration of the disputed domain name was notified to and approved by Ms. Vale of the Complainant. Second, that the website to which the disputed domain name resolves contains a link to the Complainant's NUDURA ICF products. The Respondent further indicates that it is willing to sell the disputed domain name to the Complainant, but that it wants to be compensated for the lost income and the expenditures (past and ongoing) associated with the disputed domain name. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent's disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of the disputed domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 The Complainant has established that it has rights in the NUDURA trademark dating from first use in 1986 and the earliest registration dating from an application made in 2001. Moreover, it is clear that the Complainant's ICF products are well-known and used internationally in the construction industry.
6.6 The disputed domain name is clearly confusingly similar to the Complainant's NUDURA trademark. The NUDURA trademark is the dominant feature of the disputed domain name. Further, as the Complainant says, addition to that trademark of the suffix “ICF” is likely to increase likelihood of confusion. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.7 The Respondent has not denied that it was aware of the Complainant's NUDURA trademark at the time of registering the disputed domain name in 2006. Indeed, the Respondent says that the disputed domain name was registered for the purpose of assisting sales of the Complainant's NUDURA ICFs under the February 2007 Distribution Agreement.
6.8 However, it is plain that, in the absence of written authorisation from the Complainant, the Respondent had no right of entitlement to use the NUDURA trademark as part of a domain name. No such written authorisation has been provided by the Respondent. Furthermore, any right to continue use of such a domain name ceased on termination of the Distribution Agreement in July 2007.
6.9 In the circumstances, it is plain that the Respondent can have no rights to or legitimate interests in the disputed domain name. Accordingly, the Complaint meets the requirement of paragraph 4(a)(ii) of the Policy. Registered and Used in Bad Faith
6.10 The disputed domain name is confusingly similar to the Complainant's NUDURA trademark. The Respondent has not denied knowledge of the NUDURA trademark before registering the disputed domain name. Indeed, the Respondent acknowledges that it was registered to assist him as an exclusive distributor of the Complainant for the territory specified in the February 2007 Distribution Agreement.
6.11 Given the absence of a written authorisation from the Complainant to the Respondent to use the NUDURA trademark as part of a domain name, coupled with the termination provisions of the Distribution Agreement governing use of the NUDURA trademark [see, paragraph 5.A.3 above], continued use by the Respondent of the disputed domain name for the Respondent's website [see, paragraph 4.B.3 above] is in this case use in bad faith.
6.12 Accordingly, the Complaint meets the two requirements of paragraph 4(a)(iii) of the Policy. 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 disputed domain name be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: February 24, 2010
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