The Complainant is American Woodmark Corporation of Winchester, Virginia, United States of America (the “US”), represented by Gavin Law Offices, PLC, US.
The Respondent is Azeem Cv of Calicut, Kerala, India, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2015. On January 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 21, 2015, the Registrar 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 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2015. The Response was filed with the Center on February 9, 2015.
The Center appointed John Swinson as the sole panelist in this matter on March 2, 2015. 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
The Complainant is American Woodmark Corporation. The Complainant has manufactured and sold kitchen and bathroom cabinetry across the US since it was incorporated in 1980. It is one of the largest cabinet manufacturers in the US. It employs nearly 5,000 people and operates nine manufacturing facilities in the US.
The Complainant owns a number of US trade marks, including the following word marks:
- TIMBERLAKE CABINETRY, Registration No. 3812387 (registered July 6, 2010); and
- TIMBERLAKE, Registration No. 74480873 (registered December 31, 1996).
The Complainant has registered domain names incorporating its marks, such as , and . All of these websites redirect to the Complainant’s main website.
The Respondent is Azeem Cv, of India. As the Respondent did not file a substantive Response, little else is known about the Respondent.
The Respondent registered the Disputed Domain Name on October 26, 2014.
There is no active website at the Disputed Domain Name. It resolves to an error page. In the past, the website at the Disputed Domain Name has featured content describing the Complainant’s products, along with links to the Complainant’s competitors and negative reviews of the Complainant’s products. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are as follows.
Identical or Confusingly Similar
The Disputed Domain Name is substantially similar to the Complainant’s TIMBERLAKE CABINETRY trade marks. The word “cabinetry” is synonymous with the work “cabinets” and can be used interchangeably.
The Disputed Domain Name is substantially similar to the Complainant’s TIMBERLAKE trade marks. It incorporates TIMBERLAKE in its entirety and adds the generic term “cabinets”.
Rights or Legitimate Interests
There is no connection between the Complainant and the Respondent. The Complainant has not given the Respondent permission to register the Disputed Domain Name. The Respondent is not, and has not been, known by the Disputed Domain Name.
The Respondent is not making a bona fide use of the Disputed Domain Name under paragraph 4(c)(i) of the Policy. The website at the Disputed Domain Name touts the quality of the Complainant’s products, creating the impression that the Disputed Domain Name is owned and operated by the Complainant. The Complainant’s trade marks are used throughout the website. The website also advertises the Complainant’s competitors, and links to pages featuring negative reviews of the Complainant’s products.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Complainant’s trade marks are being used to attract Internet users to a commercial website. The Respondent does not have a fair use defence.
Registered and Used in Bad Faith
The Respondent is intentionally attempting to attract customers to its website for commercial gain. The Respondent uses the Complainant’s trade marks to attract Internet users to the website, in order to generate click-through revenue. Even if the Respondent did not select the advertisements appearing on the website, it is accountable for any automatically generated advertising.
The Respondent was clearly aware of the Complainant when it registered the Disputed Domain Name, as evidenced by the use of the Complainant’s trade marks and the other content displayed on the website at the Disputed Domain Name.
The Respondent registered the Disputed Domain Name to disrupt the Complainant’s business. The redirection of the Complainant’s customers to websites featuring negative reviews disrupts the Complainant’s business.
There is no plausible explanation for the Respondent’s use of the Complainant’s trade marks, except to trade-off the goodwill of the Complainant. B. Respondent
The Respondent did not provide any substantive submissions. In its Response it states:
“I apologize for the same and has now redirected the original domain name I own to (the Complainant’s domain).
I am ready to transfer the domain name to the complainant.”
The Respondent emailed the Complainant’s representatives on February 13, 2015, stating that it was “ready to cancel/transfer the domain name”, and requesting that the Complainant suspend the Proceeding. In an email on February 17, 2015, the Respondent advised the Center (copying the Complainant’s representatives) that the Disputed Domain Name had been cancelled.
On February 18, 2015, the Complainant’s representative advised the Center that the Complainant had “decided to move forward with the proceeding”. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant. A. Respondent’s Consent to Transfer/Cancel the Disputed Domain Name
As a preliminary issue, the Panel must consider the significance of the Respondent’s consent to transfer and purported cancellation of the Disputed Domain Name (as described above).
The panel in Bharat Sanchar Nigam Limited (BNSL) v. Domain Hostmaster,WIPO Case No. D2007-1800 summarizes the possible approaches as follows:
“As analyzed by the Panel in The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132, panels, when faced with a ‘unilateral consent to transfer,’ have taken three different approaches. Some panels have granted the relief requested on the basis of Respondent’s consent without a review and analysis of the facts supporting the claim. Williams Sonoma, Inc. v. EZ Port,WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri,WIPO Case No. D2000-0195. Others have held that the consent to transfer is effectively a concession that the three elements of the Policy have been satisfied, and ordered transfer on this basis. Qosina Corporation v. Qosmedix Group,WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB,WIPO Case No. D2000-1398. Still other panels have proceeded to analyze whether the evidence submitted satisfies the three elements of the Policy. Société Française du Radiotéléphone-SFR v. Karen,WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co.,WIPO Case No. D2003-0745.”
Electing either of the first two approaches provides a more expeditious route. However, the third approach reduces the risk of any injustice (for example, the transfer of a domain name to a complainant that does not have any trade mark rights). As such, this Panel will properly consider the three elements of paragraph 4(a) of the Policy. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The Panel has verified that the Complainant has registered trade mark rights in both TIMBERLAKE and TIMBERLAKE CABINETRY.
The Disputed Domain Name is confusingly similar to the Complainant’s TIMBERLAKE trade mark. Previous panels have found that where a distinctive trade mark is wholly incorporated in a domain name, adding a descriptive term (i.e. “cabinets”) will generally not distinguish the domain name from the trade mark (see e.g. Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059 and cases cited therein). Here, the Panel finds that the distinctive element of the Disputed Domain Name is the TIMBERLAKE trade mark. The addition of the descriptive term “cabinets” does nothing to prevent the confusing similarity of the Disputed Domain Name with the Complainant’s TIMBERLAKE trade mark. In fact, it adds to the confusion, as the Complainant uses its TIMBERLAKE trade mark in relation to the manufacture and sale of cabinets.
The Disputed Domain Name is also confusingly similar to the Complainant’s TIMBERLAKE CABINETRY trade mark.
In this case, the generic Top-Level Domain (gTLD) “.com” at the end of the Disputed Domain Name is irrelevant in assessing confusing similarity under the Policy and may be ignored (see e.g. Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698).
In light of the above, the Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- The Respondent has no connection with the Complainant.
- The Complainant has not consented to the Respondent’s use of its trade marks.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name.
- The Respondent has not been making a noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain. The Disputed Domain Name is currently being passively held, and in the past the website at the Disputed Domain Name was commercial.
- The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services (there is no active website at the Disputed Domain Name). Further, the Respondent’s prior use of the Disputed Domain Name was not bona fide. In the past, the website at the Disputed Domain Name featured pay-per-click links to the Complainant’s competitors.
In light of the above, the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
In the past, the Respondent has used the website at the Disputed Domain Name to provide links to the Complainant’s competitors, presumably to generate pay-per-click revenue. The Respondent was clearly aware of the Complainant, its business and its trade marks, as the Complainant’s products were described on the website. Under the circumstances, this amounts to bad faith registration and use. The fact that the Disputed Domain name is currently passively held does not, in the circumstances of this case, prevent a finding of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Respondent had the opportunity to address the Complainant’s submissions, but fails to do so in its Response. Instead it states that it is “ready to transfer the domain name to the complainant”. The Panel infers from this failure to substantively respond that the Respondent could not provide any evidence of good faith use of the Disputed Domain Name.
In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy. 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 Name, , be transferred to the Complainant.
John Swinson
Sole Panelist
Date: March 16, 2015
Full & Egal Universal Law Academy