Complainant is American Woodmark Corporation of Virginia, United States of America, represented by Gavin Law Offices, PLC, United States of America.
Respondent is Aaron Kol/Aaron Kolenda of Massachusetts, United States of America. 2. The Domain Names and Registrar
The disputed domain names and (hereinafter both domain names referred to as "Disputed Domain Names") are registered with Tucows Inc. (the "Registrar"). 3. Procedural History
Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 10, 2014. On April 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On April 11, 2014, the Registrar 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 April 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for the Response was May 12, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 13, 2014.
The Center appointed James H. Grossman as the sole panelist in this matter on May 20, 2014. 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, a publicly traded company listed on the NASDAQ Stock Exchange in New York, United States, (symbol AMWD) manufactures and distributes kitchen and bathroom cabinets for remodeling and new home construction markets from nine manufacturing facilities in the United States. Complainant has approximately 550 cabinet lines which are marketed through five major brands, sold through independent distributors, specialized design centers, directly to major builders, and directly to the public through retail facilities such as Lowe's and Home Depot.
Complainant's trademark CUSHION CLOSE (Registration No. 2,977,011) (hereinafter the "Mark") was filed with the United States Patent and Trademark Office ("USPTO") on July 15, 2002 and registered on July 26, 2005, claiming a date of first use of August 2004 and date of first use in commerce of January 2005, in connection with kitchen cabinets and bathroom cabinets. Accordingly, the Mark has been registered and used for almost 9 years by Complainant. Importantly, in the context of Respondent's use, the Mark refers to Complainant's self-closing drawers and hinges in kitchen and bathroom cabinets. 5. Parties' Contentions A. Complainant
On information and belief, Complainant advises that it is one of the three largest manufacturers of kitchen and bathroom cabinets in the US and that the Mark is nationally known in the US in the area of kitchen and bathroom cabinets.
Complainant argues that the Respondent's use of the Disputed Domain Names meets the test contained in paragraph 4(a)(i) of the Policy in that the Disputed Domain Names are confusingly similar to Complainant's Mark. One of the Disputed Domain Names, , is identical to Complainant's Mark. The other of the Disputed Domain Names, , contains the identical wording of the Mark, simply adding the word "cabinets" which is a descriptive term relating to Complainant's products. This combination in both cases is confusingly similar to Complainant's Mark, creating confusion as to the source of products. Complainant points out that Respondent's addition of a descriptive word "cabinets" to one of the Disputed Domain Names does not alter the fact that said Disputed Domain Name is confusingly similar to Complainant's Mark, see Lilly ICOS LLC v. Sachin Tailor, WIPO Case No. D2005-0580, wherein the Panel stated "Generally, a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it". Complainant points out that the addition of the word "cabinets" to the trademark CUSHIONCLOSE only serves to further reinforce the association of this particular Disputed Domain Name with the Complainant's cabinets.
With regard to Respondent's rights or legitimate interests in the Disputed Domain Names, in summary, such rights or legitimate interests may be established if (i) the use is in connection with a bona fide offering of goods or services; or (ii) Respondent has been commonly known by the domain name even if no trademark rights; or (iii) Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Complainant states that Respondent has not licensed or obtained permission from Complainant to the Mark, or any variation thereof at any time. The Disputed Domain Names were registered on December 2, 2009, long after Complainant filed for Federal registration on July 15, 2002 and the Mark's registration date of July 26, 2005. Complainant argues that there is no bona fide offering but simply Respondent's effort to divert consumers to its competing cabinet hardware, thereby intentionally seeking to exploit Complainant's goodwill and stature as a nationally recognized, kitchen and bathroom cabinet manufacturer. According to Complainant, Respondent has never been known in any context with the Mark and there was no legitimate noncommercial use or fair use of the Disputed Domain Names. Rather, there is evidence of the intent, for commercial gain, to misleadingly divert consumers since the Disputed Domain Names, incorporating the Mark, are used to send consumers to websites selling goods that directly compete with Complainant's cabinet products.
Complainant argues that Respondent likely knew of the Mark and the active business of Complainant when it registered the Disputed Domain Names in 2009, some 4 years after the Mark was registered. Complainant points out that a consumer is redirected to a website for competing goods at and , both of which domain names are registered to the Respondent. Complainant cites E, Ind. v. Ult.Search Inc., WIPO Case No. D2001-1319, in which decision the panel states "[R]egistration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy".
Finally, Complainant considers that Respondent knew or should have known of the Mark before registering the Disputed Domain Names. A good faith search of the USPTO database would have revealed the Mark. Respondent's failure alone to conduct such a search of the USPTO database and the Internet using a search engine before registering a domain name has been held to be a registration in bad faith, see Grundfoz A.S v. Texas International Property Associates, WIPO Case No. D2007-1448. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) The Disputed Domain Names are identical or confusing similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests with respect to the Disputed Domain Names; and
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint "on the basis of the statements and documents submitted and in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable".
Because Respondent has defaulted by failing to timely file a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)) and certain factual conclusions may be drawn on the basis of Complainant's undisputed representations (id, paragraph 15(a)). The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management. Inc. v. webnet-marketing, inc., NAF Claim No. 95095. A. Identical or Confusingly Similar
Complainant has established that it has trademark rights in CUSHION CLOSE registered with the USPTO in 2005 and this Mark is identical to one of the Disputed Domain Names. The other Disputed Domain Name, , merely adds the generic word "cabinets" to the words that are identical to the Mark and Complainant has pointed out that such a generic change does not change the fact that for purposes of the test of "Identical or Confusingly Similar", both Disputed Domain Names are essentially the same as the Mark. In this regard, Complainant has made a strong argument for such a result and cites Lilly ICOS LLC, supra, in support of its position. Further, Complainant in Annex 5 to its Complaint has provided visuals featuring Complainant's Mark in connection with the manufacture and distribution of self-closing drawers and hinges in kitchen and bathroom cabinets.
The Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0 "), at 1.1: "If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use), and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark….".
The Panel is of the view that the finding of confusing similarity is in many instances a low threshold test, the purpose of which is effectively to assess whether a complainant has sufficient rights so as to give it standing to bring a complaint see Aubert International SAS and Aubert France SA v. T Co.,WIPO Case No. D2008-1986. As stated in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227, "It involves a simple comparison of the mark relied upon with the domain name in issue… It is also an approach that means that in most cases where a domain name incorporates the entirety of a trade mark, then the domain name will for the purposes of the Policy be confusingly similar to the mark." .
The confusing similarity test under the UDRP typically involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name, see WIPO Overview 2.0 at 1.1. The Panel agrees with Complainant that the addition of the word "cabinets" strengthens Complainant's position that Respondent is seeking to confuse the Internet user so as to believe he is dealing with the Complainant.
This is notwithstanding that the words, "cushion close," if it were not a registered trademark which has developed a secondary meaning in the marketplace with its silently closing cabinet doors, seems to the Panel simply two generic words strung together. However, the Panel takes note of language in one of Complainant's websites set out in Annex 5 to the Complaint with reference to CUSHION CLOSE as follows: "Exclusive Full Access Glide System…. Our Self-closing drawers glide back into place effortlessly and quietly…." Accordingly, this quiet self-closing system registered by Complainant has apparently had an impact on the marketability of the cabinets and it is this aspect of the cabinet that Complainant has sought to protect with its Mark.
Notwithstanding certain concerns expressed above, there is a consensus in UDRP decisions in the case of a domain name being identical to a trademark. For example, in Microsoft Corporation v. S.L. Mediaweb, WIPO Case No. D2003-0538, the panel held that "it is well established by previous UDRP panel decisions that a domain name incorporating a distinctive trademark, such as the trademark MSN in this case, in its entirety creates sufficient similarity between the mark and the domain name as to render it confusingly similar".
The Panel finds the first element of the test is satisfied. B. Rights or Legitimate Interests
Complainant has confirmed that Respondent has never been asked or given any permission to use the Disputed Domain Names, nor does Respondent have any legitimate interests in respect of the Disputed Domain Names using Complainant's Mark. The Panel cannot find any evidence that Respondent is making any bona fide offering of goods or services under either of the Disputed Domain Names. Respondent has without permission from Complainant misappropriated the Mark for its own purposes and without any concern for the Complainant, the legitimate owner of the Mark. It is also clear that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names.
Previous UDRP panels have held that when a respondent does not respond to a complaint, it can be assumed in appropriate circumstances that such respondent has no rights or legitimate interests in the disputed domain name, see Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269 and AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017. If Respondent has a right or legitimate interest in the Disputed Domain Names, the Panel is of the view that he would have responded to this Complaint.
While the overall burden of proof rests with Complainant, prior UDRP panels have agreed that this could require a complainant to prove a negative; that is, requiring a complainant to provide information primarily within the knowledge of the respondent. Therefore, a complainant is required only to make a prima facie case that respondent lacks rights or legitimate interests. The Panel accepts that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Names. Accordingly, the burden of rebuttal is transferred to Respondent, see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Since Respondent has failed to respond to the Complaint, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy and, accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.
Accordingly, the Panel determines that the second element of the test is satisfied. C. Registered and Used in Bad Faith
In order to prevail under the third and final element of the test, Complainant must demonstrate that the Disputed Domain Names were registered and used in bad faith. As to the registration in bad faith, the Panel acknowledges Complainant's point that Respondent who is an American person may have readily reviewed the USPTO register where it would have found the Mark had been registered some 4 years earlier. In support of this position, paragraph 2 of the UDRP states:
"By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights."
Such constructive notice alone, imposing an affirmative duty on a respondent before registration of a domain name, being primarily an American legal concept, may not be sufficient to a finding of bad faith according to many UDRP panels. This Panel is of the view that such lack of investigation, even through an Internet search on the part of Respondent that very likely would have turned up the Mark, is an indicia of bad faith. See The Fragrance Foundation Inc. v. Texas International Property Associates, WIPO Case No. D2008-0982.
The Panel finds that the fact that Respondent registered the Disputed Domain Name to be further evidence that Respondent was aware of Complainant's business which Respondent has misappropriated by sending Internet users to Respondent's own sites where he is selling similar goods and services. The Panel agrees with Complainant that the Disputed Domain Names are used to attract and divert, for commercial gain, Internet users to its website. As described below, once on Respondent's sites, consumers are redirected to sites registered to Respondent that compete with Complainant. Such redirection for the purpose of offering and selling competing goods and services constituted bad faith registration and use under the Policy, see Edmunds.con, Inc. supra, and NetWizards, in. v. Spectrum Enterprises,WIPO Case No. D2000-1768; Zwack Unicum Rt. V. Erica J. Duna, WIPO Case No. D2000-0037. In this regard, a visit to one of Respondent's sites, , brings up the following language to the Internet viewer:
"CushionC focuses solely and exclusively on one item and one product only: cushion close cabinet noise eliminating hardware. We strive to provide you with quick and efficient service. Our site is not cluttered with unnecessary information – only the essentials. Purchasing a soft close buffer is quick and easy – just click on the Buy Now button on our homepage and we will process the order through PayPal.
If you have any questions at any time, you may email us through contact@ and we will get back to you very quickly.
You can also read more about the product and company behind the site at SilentC."
The Panel finds that Complainant has fulfilled its obligations in satisfying the third element of the test. D. Laches
The parties in the current proceeding are both located in the United States, where courts recognize the equitable doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims. In Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011, the panel held that since the Policy offers a limited remedy to avoid future confusion in the marketplace, it does not contemplate that such a remedy would be unavailable because of delay in instituting a Policy proceeding. However, the panel in that case observes that lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant's arguments with respect to the respondent's rights or legitimate interests in the disputed domain name, or the respondent's alleged bad faith in registering and using the domain name.
The Panel has considered the fact that Complainant initiated this Complaint some four years after Respondent registered the Disputed Domain Names. The Panel also notes, however, that Complainant's trademark registrations pre-date the registration of the Disputed Domain Names by some four years, and Respondent appears to misappropriate the Mark for its own commercial gain. As such, the Panel has determined that the theory of laches is inapplicable in the present case. 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 Disputed Domain Names, and , be transferred to Complainant.
James H. Grossman
Sole Panelist
Date: May 30, 2014
Full & Egal Universal Law Academy