The Complainant is American Woodmark Corporation of Winchester, Virginia, United States of America, represented by Gavin Law Offices, PLC, United States of America.
The Respondent is Domain Registries Foundation / Domain May Be For Sale, Check Afternic.Com, Domain Admin of Panama City, Panama, represented by Willenken Wilson Loh & Delgado, LLP, United States of America. 2. The Domain Name and Registrar
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 February 17, 2016. On February 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on March 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2016. The Response was filed with the Center on March 19, 2016.
On March 30, 2016, the Center received a Supplemental Filing from the Complainant.
The Center appointed Knud Wallberg as the sole panelist in this matter on April 12, 2016. 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, American Woodmark Corporation, manufactures and distributes kitchen and bathroom cabinets for use in new homes and remodels. The Complainant markets over 500 lines of cabinetry (including the Waypoint line) sold under different brand names, including Waypoint Living Spaces.
The Complainant is the holder of a large number of registered trademarks in the United States of America, including WAYPOINT and WAYPOINT LIVING SPACES for goods and services class 20 covering inter alia kitchen cabinets and bathroom cabinets, registered on May 11, 2011.
The Complainant has also registered a number of domain names that incorporate its WAYPOINT and WAYPOINT LIVING SPACES marks, including "", and "".
According to publicly available records, the disputed domain name was registered on March 27, 2015. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to marks in which the Complainant has rights since it comprises Complainant's trademark WAYPOINT with the addition of the common generic term "cabinets".
The Complainant further states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has thus not been licensed or has received any other authorization from the Complainant to use the disputed domain name, that the Respondent is not an authorized distributor or reseller of Complainant's cabinets and that no other connection exists between the Complainant and Respondent.
Finally, the Complainant contends that the disputed domain name has been registered and is being used in bad faith. The disputed domain name is used for a parking page with listed sponsored and related links inter alia for competitors to the Complainant. In addition, the disputed domain name is offered for sale for a price that likely far exceeds the out-of-pocket costs associated with the registration of the disputed domain name. B. Respondent
In its Response the Respondent states that it does not admit any fault or liability and that that it "is willing to voluntarily transfer the Domain Name to the Complainant". The Respondent further requests that the "transfer be ordered without findings of fact or conclusions as to Policy 4(a) other than the Domain Name be transferred". 6. Discussion and Findings
Initially, the Panel shall consider two matters namely whether to allow the Complainant's Supplemental Filing and the Respondent's consent to transfer the disputed domain name and request that the Panel consequently refrain from reviewing the facts of the case.
On the matter of the Complainant's Supplemental Filing it follows from paragraph 10(d) of the Rules that the Panel shall determine at its own discretion "the admissibility, relevance, materiality and weight of the evidence". As explained in paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), this will normally imply that the party that submits such a filing needs to show its relevance to the case and why it was unable to provide that information in the complaint. In the present case, the Panel finds that the Complainant could not have foreseen that the Respondent would file a Response with the above referenced content, and the Panel further finds that since the Supplemental Filing addresses the issues that are raised in the Response, the filing is relevant to the case. The Panel thus accepts the Complainant's Supplemental Filing.
As far as the Respondent's consent to transfer the disputed domain name and request that the Panel consequently refrain from reviewing the facts of the case, a panel has different courses to follow as outlined in paragraph 4.13 of the WIPO Overview 2.0. In the present case the Respondent did not restrict itself to consent to the voluntary transfer of the disputed domain name, since the Respondent stated that the Response was filed "without admitting fault or liability and without responding substantively to the allegations raised by Complainant herein". The Respondent did thus not assent to the claims put forward in the Complaint that the registration of the disputed domain name was done in bad faith as stipulated in paragraph 4(a) of the Policy. Considering all the circumstances of the present case, the Panel will proceed to review the facts of the case and subsequently make a decision on the merits. Reference is made to the decision in the very similar case Sassybax, L.L.C. v. Texas International Property Associates,WIPO Case No. D2007-1190.
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant's registered trademark WAYPOINT because it contains the mark in its entirety with the addition of the generic term "cabinets". The generic Top-Level Domain ".com" does not dispel a finding of confusing similarity in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Based on the record and the way that the Respondent has been and is using the disputed domain name does not support a finding of rights or legitimate interests.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case and in particular the evidence on record of the extent of use of the Complainant's trademark and the distinctive nature of the mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant's mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
Also, the Respondent is using the disputed domain name actively for a standardized parking page that contains links and pay-per-click advertisements inter alia for competitors of the Complainant. It is thus obvious to the Panel that the Respondent is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, web users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website. Further, the Complainant has demonstrated that the disputed domain name is offered for sale on for a price that likely far exceeds the Respondent's out-of-pocket costs directly related to the disputed domain name, and the Panel notes that the Respondent did not refute this information in its Response.
Noting that the disputed domain name incorporates a registered and reputed trademark, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, that the disputed domain name is offered for sale and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) and 4(b) of the Policy are also fulfilled in this 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 name be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Date: April 25, 2016
Full & Egal Universal Law Academy