Complainant is American Woodmark Corporation of Winchester, Virginia, United States of America ("United States"), represented by Gavin Law Offices, PLC, United States.
Respondent is Moniker Privacy Services of Fort Lauderdale, Florida, United States / Munish Krishan, Manila Industries Inc. of Santa Ana, California, United States. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Moniker Online Services, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 20, 2016. On April 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 20, 2016, the Registrar transmitted by email to the Center its verification response 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 email communication to Complainant on April 22, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 22, 2016.
The Center verified that the Complaint together with the amendment to the Complaint (hereinafter referred both together as 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 Respondent of the Complaint, and the proceedings commenced on May 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 23, 2016.
The Center appointed John C McElwaine as the sole panelist in this matter on May 31, 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
Complainant, American Woodmark Corporation, is a Virginia Corporation with its principal place of business located in Winchester, Virginia. Complainant is a manufacturer of kitchen and bath cabinets for the home, selling over 500 cabinet styles through a nationwide network of homebuilders, independent dealers and distributors, as well as home improvement retail chains.
Relevant to this matter, Complainant is the owner, among other trademark registrations, of the United States trademark registrations for SHENANDOAH CABINETRY, registration number 2417860 registered on January 2, 2001, SHENANDOAH, registration number 4777358 registered on July 21, 2015, and SHENANDOAH VALUE SERIES, registration number. 4881761 registered on January 5, 2016, reciting furniture and cabinetry products in class 29 and SHENANDOAH LIFETIME LIMITED WARRANTY registration number 4903969 registered on February 23, 2016 reciting warranty services in class 36 (collectively, the "Complainant's Marks').
Additionally, Complainant registered each of the following domain names in 2002: , , , , and .
On April 12, 2014, Respondent registered the Domain Name. The Domain Name has been used as a parking page with pay-per-click links to Complainant's competitors. 5. Parties' Contentions A. Complainant
Since its incorporation in 1980, Complainant has manufactured and sold kitchen and bathroom cabinetry across the United States. Complainant's cabinetry lines SHENANDOAH CABINETRY and SHENANDOAH VALUE SERIES are sold to the public nationwide in the United States primarily through the well-known home improvement retailer Lowe's.
Complainant asserts that Complainant's Marks are well-known in the field of kitchen and bathroom cabinetry as Complainant is one of the three largest cabinetry manufacturers in the United States. Complainant also alleges that it has invested millions of dollars advertising Complainant's Marks to ensure automatic identification with excellence in providing kitchen and bathroom cabinetry.
Complainant registered many domain names containing Complainant's Marks in 2002, including , , , , , well before Respondent registered the disputed Domain Name in 2014. Each of these listed domain names locates or redirects users to Complainant's website advertising its cabinetry wares.
Complainant alleges that cybersquatters' continued interest in misappropriating Complainant's Marks is evidence of the reputation and value of Complainant's marks. Complainant has successfully sought transfer of the domain names , , , , and others. See American Woodmark Corporation v. Domain Admin. this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante,WIPO Case No. D2015-0641; American Woodmark Corporation v. Azeem Cv,WIPO Case No. D2015-0089; American Woodmark Corporation v. DN Capital Inc.,WIPO Case No. D2014-2016; American Woodmark Corporation v. Akhmad Fuad Hasyim,WIPO Case No. D2012-0099; American Woodmark 9 Corporation v. Whois Privacy Services Pty Ltd, Texas International Property Associates, URDMC LLC,WIPO Case No. D2011-0804.
Complainant contends that the Domain Name should be transferred to Complainant because each of the three elements required in paragraph 4(a) of the Policy has been established.
Addressing the first element of the Policy, Complainant claims that the Domain Name is confusingly similar to Complainant's established SHENANDOAH CABINETRY Mark. Complainant alleges that Respondent has engaged in "typosquatting" by using a common misspelling of the word Shenandoah (replacing the first "a" with the letter "e") so that, when Complainant's customers accidentally misspell Shenandoah when they are typing, they are directed to Respondent's website instead of Complainant's.
With respect to the second element of the Policy, Complainant states that no connection exists between Complainant and Respondent which might give rise to any rights or legitimate interests in the disputed Domain Name. Complainant denies that Respondent has licensed, or has obtained permission from Complainant to use Complainant's Marks or the disputed Domain Name, or any variations thereof either expressed or implied at the time Respondent registered and began using the Domain Name or at any time since. Further, Complainant states that Respondent is not an authorized distributor or reseller of Complainant's cabinets.
With respect to the third element of the Policy, Complainant asserts that Respondent engaged in bad faith when it registered and used the Domain name to intentionally attract consumers for commercial gain. Complainant alleges that Respondent targeted Complainant's Mark for Respondent's pecuniary benefit and has placed advertising that directly competes with Complainant on the website linked with the disputed Domain Name. These targeted advertisements divert potential customers of Complainant to third party sites where competing goods are sold. Complainant also alleges that Respondent's significant history of prior adverse UDRP decisions is evidence that Respondent is a serial cybersquatter. Lastly, Complainant also claims that Respondent's use of a privacy service to shield its identity from the WhoIs database is further evidence of bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with actual evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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.
Because of Respondent's default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules ("If a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.") Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant to show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The Panel finds that Complainant owns trademark rights in the SHENANDOAH and SHENANDOAH CABINETRY marks.
As discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions ("WIPO Overview 2.0"), paragraph 1.10, the consensus view is that a domain name consisting of a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name. Similarly, UDRP panels have consistently held that "a mere addition or a minor misspelling of Complainant's trademark does not create a new or different mark in which Respondent has legitimate rights." Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302 ("Such insignificant modifications to trademarks is commonly referred to as 'typosquatting' or 'typo-piracy,' as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser's location bar").
Here, Respondent's almost imperceptible use of an "e" in place of the "a" in Shenandoah is unquestionably confusingly similar to the SHENANDOAH mark as this misspelling even conforms to the phonetic pronunciation of Shenandoah, which is pronounced “she-nən-ˈdō-ə.” Respondent's misspelling of "Shenandoah" does nothing to detract from the confusing similarity of the Domain Name to Complainant's Marks in sight, sound, and meaning. See Dow Jones & Company, Inc. v. John Zuccarini,WIPO Case No. D2000-0578 (finding that the domain names and were confusingly similar to THE WALL STREET JOURNAL).
The Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to Complainant's SHENANDOAH and SHENANDOAH CABINETRY marks. B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), complainant has the burden of establishing that respondent has no rights or legitimate interests in the disputed domain name. Complainant needs only to make a prima facie showing on this element, at which point the burden of production shifts to respondent to present evidence that it has rights or legitimate interests in the disputed domain name. If respondent fails to do so, complainant can be deemed to have satisfied its burden under Policy paragraph 4(a)(ii). See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415.
Complainant asserts that Respondent is not a licensee or affiliate of Complainant and Respondent is not authorized to use the SHENANDOAH mark for any activity. Although properly notified by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the disputed domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn,WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269.
However, under paragraph 4(c) of the Policy, a respondent's rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, respondent's 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) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or (iii) respondent is 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. The Panel finds that Respondent has failed to show rights or legitimate interests under any of the three conditions.
First, Respondent is not making a bona fide use of the Domain Name under paragraph 4(c)(i). When Respondent registered the Domain Name in April, 2014, Complainant had firmly established rights in the SHENANDOAH CABINETRY mark. Under the Policy, registration and unauthorized use of another's trademark in a domain name does not constitute a bona fide offering of goods and services. See O, Inc. v. Metro Media,WIPO Case No. DME2009-0001 (use of disputed domain name consisting of complainant's mark in connection with a parked page did not constitute a bona fide offering of goods and services); see Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell,WIPO Case No. D2007-1139.
Respondent's website located at the disputed Domain Name consists of a parking page that advertises sponsored listings and related links. Clicking through these advertisements directs the user to either a legitimate website on which Complainant's competitors advertise and sell their cabinetry, or a new page containing additional sponsored listings and related links. Although the Panel recognizes that parking pages may be permissible in some circumstances, as discussed in paragraph 2.6 of WIPO Overview 2.0, none of those factors are present here. Instead, the Domain Name appears to have been registered with the intent that confused Internet users intending to search for Complainant's Marks will instead be redirected to Respondent's parked webpage for commercial gain. Such activity does not provide a legitimate interest in the Domain Name under the Policy. See, e.g., Delta-Sonic Carwash Systems, Inc. v. Radio plus, spol.s.r.o.,WIPO Case No. D2015-1512. Additionally, this Panel agrees that generally, parking pages "confer no public benefits" but rather "are replete with public costs". See, e.g., Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753. Parked sites "lock up domain names, preventing names from being used for creative, socially constructive purposes; they clutter search results and can divert Internet users from finding the websites and content for which they seek; and they can lead to costly domain name disputes…" Id.
Second, Respondent failed to put forth any evidence that it is currently and or ever was commonly known by the name reflected in the Domain Name as to establish a legitimate interest in the Domain Name under paragraph 4(c)(ii) of the Policy.
Third, Respondent is not making a legitimate noncommercial or fair use of the Domain Name under paragraph 4(c)(iii). Instead, Respondent is seeking commercial gain from its use of the Domain Name by establishing a parked page with advertisements that compete with Complainant. Therefore, the Disputed Domain Name is used for commercial purposes and paragraph 4(c)(iii) is not applicable. See O, Inc. v. Metro Media, Case No. DME2009-0001 (Mar. 12, 2009) (respondent's use of the disputed domain name to establish a parking page was "plainly not 'noncommercial'.")
Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. The Panel has analyzed whether Respondent may possess rights or legitimate interest to a domain name. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent's default as it considers appropriate. For all these reasons, the Panel accepts that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name as set forth in the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent has registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Paragraph 4(b)(iv) of the Policy specifies that bad faith exists where a respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Here, the Domain Name consists entirely of Complainant's distinctive mark, SHENANDOAH CABINETRY, with the only difference being a misspelling of "Shenandoah". Respondent has targeted Complainant's Mark for Respondent's pecuniary benefit and has placed advertising that directly competes with Complainant on the website linked with the Disputed Domain Name. These targeted advertisements divert potential customers of Complainant to third party sites where competing goods are sold. Such activity constitutes a disruption of Complainant's business and also establishes bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy.
There is substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark, is itself sufficient evidence of bad faith registration and use. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942 ("the Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements"), citing, Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; PepsiCo, Inc. v. "null," aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435. However, this Panel cites two additional elements to support finding of Respondent's bad faith.
First, Respondent appears to have a long, and notably consistent, history of adverse UDRP decisions. See, e.g., Vitalife, Inc. dba Tabak's Health Products v. Texas International Property Associates,WIPO Case No. D2007-0507. This Complaint is only the latest in a long line of almost identical cases where Respondent has been found "typosquatting". This Panel agrees that Respondent's significant history of prior UDRP proceedings is further evidence of bad faith and also demonstrates that Respondent is an unrepentant serial cybersquatter.
Second, Respondent used a privacy service to shield its identity from the WhoIs database. Panels have recognized that, although privacy shields provide some benefits, they are often used for "more nefarious ends, such as obstructing proceedings under the UDRP, [and] hiding evidence of bad faith cybersquatting patterns…" Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753. Panels have found that there is a "lack of plausible justifications" for a parking website to use a privacy shield. Id; see also The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / "The Saul Zaentz Company",WIPO Case No. D2008-0156 ("The attempt by the Respondent to hide its identity… support[s] a finding of bad faith".) Here, there is no legitimate reason for Respondent to decide to hide its identity. Considered together with Respondent's established history of cybersquatting, the Panel considers that Respondent utilized a privacy shield in order to mask its identity and pattern of cybersquatting abuse.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith. 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 the Complainant.
John C McElwaine
Sole Panelist
Date: June 14, 2016
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