Complainant is American Woodmark Corporation of Virginia, United States of America, represented by Gavin Law Offices, PLC, United States of America.
Respondent is Whois Privacy Services Pty Ltd of Queensland, Australia, Texas International Properties Associates of Dallas, Texas, URDMC LLC of Dallas, Texas. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2011. On May 9, 2011, the Center transmitted by e-mail to F ( the “Registrar” ) a request for registrar verification in connection with the Domain Name. On May 10, 2011, the Registrar transmitted by e-mail to the Center its verification disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on May 16, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On May 19, 2011, Complainant filed an amendment to the Complaint.
The Center verified that the Complaint together with the amendment to 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 May 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 16, 2011.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 23, 2011. 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.
On May 10, 2011, the Center received a “Notice of Receivership” and other materials from Attorney Joshua Cox. According to the materials, Texas International Property Associates (“TIPA”) was a privacy service for a portfolio of domain names for which Quantec, LLC (“Quantec”) is the registrant. Quantec is allegedly a “Receivership Party” in a proceeding pending in federal court in Texas, In re Ondova Limited Company. According to Attorney Cox, the Domain Name is subject to a receivership stay and he asked that the Center suspend this case. After some back-and-forth between the Center and Attorney Cox, the Center ultimately advised Attorney Cox by e-mail dated May 16, 2011 that “the determination of Respondent identity and related issues, and the effect, if any, of legal proceedings initiated prior to or during an administrative proceeding in respect of the instant domain-name dispute are properly a matter for the Administrative Panel, in its sole discretion.”
The Panel has been provided with no evidence that actually links Respondent (under any of its names) in this proceeding with Quantec or Ondova. Accordingly, the Panel will proceed to apply the facts of this case to the three elements of the Policy and render a decision herein. In the event there is some link between Respondent and some entities purportedly subject to a stay, such entities, through Attorney Cox or otherwise, are free to take such action as is deemed necessary to protect their perceived interests.
Attorney Cox made a similar argument in connection with a prior case, Amica Mutual Insurance Company v. Texas International Property Associates, URDMC LLC,WIPO Case No. D2010-2144 (February 7, 2011). The panel in that case concluded that no evidence of a link between the domain name at issue there and the receiver in the lawsuit. It appears from the Amica decision that Attorney Cox made a similar presentation of assertions and documents to the Center in the instant case. Given that the panel in Amica had found Attorney Cox’s presentation wanting several months ago, one might have expected Attorney Cox to “close the loop” and provide sufficient proof this time around. 4. Factual Background
Complainant has been a manufacturer and distributor of kitchen and bathroom cabinetry since 1980. It has operated under marks including the term AMERICAN WOODMARK since 1991, and has registered trademarks comprised of or including AMERICAN WOODMARK in connection with its cabinetry goods and services. Complainant’s goods are offered for sale directly and through retail outlets such as Lowe’s and Home Depot. Complainant has operated its main website at since 1996.
Respondent registered the Domain Name on February 19, 2005. The website to which the Domain Name resolves features the banner phrase “Welcome to .” The site provides hyperlinks under various rubrics, such as “American Woodmark Cabinetry,” “Flamable Cabinets,” “Custom kitchen cabinetry,” and the like. It is alleged, and not disputed, that Respondent receives click-through revenue from these links, some of which send the Internet user to websites offering products and services in direct competition with Complainant.
Complainant has alleged, and provided evidence of, Respondent’s registration of numerous domain names, and has noted that Respondent and its aliases have been held in bad faith under the Policy in several hundred prior cases. Respondent has not disputed these contentions. 5. Parties’ Contentions A. Complainant
Complainant’s salient factual assertions are set forth above. Complainant asserts that it has satisfied the three elements of the Policy and is entitled to a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 Panel finds that Complainant has rights in the mark AMERICAN WOODMARK, through registration and through use predating Respondent’s registration of the Domain Name. The addition of the descriptive word “cabinetry” to the mark in the Domain Name does not diminish the confusing similarity between the mark and the Domain Name. If anything, the word “cabinetry” aggravates the confusion, since cabinetry is the core of Complainant’s business.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122 (March 26, 2001). Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174 (Apr. 22, 2003), correctly observed: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a certified Response and hence did not effectively rebut any of Complainant’s assertions.
There is no evidence that Respondent has ever been authorized to use Complainant’s mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith” :
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds that Respondent is in “bad faith” under paragraphs 4(b)(ii) and 4(b)(iv) of the Policy.
As respects paragraph 4(b)(ii), the record contains ample evidence that Respondent is a serial cybersquatter. The Panel finds that Respondent registered the Domain Name in order to prevent Complainant from reflecting its mark in the Domain Name, and that Respondent has engaged in a pattern of such conduct.
As respects paragraph 4(b)(iv), the Panel concludes that Respondent more likely than not had Complainant’s AMERICAN WOODMARK mark in mind when registering the Domain Name. This conclusion is reached because the Domain Name fully incorporates the AMERICAN WOODMARK mark and merely adds the word “cabinetry,” which is as apt a single-word descriptor of Complainant’s business as exists. Further, some of the offerings at the website to which the Domain Name resolves directly concern cabinetry and related offerings. The commercial content at Respondent’s website makes it reasonable to infer, particularly in the absence of any explanation or denial by Respondent, that Respondent has intentionally sought to attract, for commercial gain, Internet users to Respondent’s site by creating a likelihood of confusion between the AMERICAN WOODMARK mark and the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 7. Decision
For 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 Complainant.
Robert A. Badgley
Sole Panelist
Dated: June 28, 2011
Full & Egal Universal Law Academy