The Complainant is Welborn Companies, LLC, United States of America (“United States”), represented by Law Office of Diane M. Chubb, United States.
The Respondent is Colby Tolbert, Garage Door Distribution Center, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2020. On October 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 2020, 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 proceedings commenced on November 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2020. On November 18, 2020, the Respondent contacted the Center and expressed interest in exploring a settlement. The Center informed the Parties that the dispute could be suspended to explore settlement options if agreed to and requested by the Parties. The Respondent contacted the Complainant by email on November 18, 2020. The Respondent while continuing to express an interest in settlement stated that according to his attorney he was “in the clear” so long as he did not represent himself as the Complainant. The Respondent also submitted there were several “Welborns” currently working for his company. The Center reminded the Parties on November 19, 2020, that the dispute could be suspended to explore settlement if agreed to by the Parties. The Complainant when replying to the Center on November 19, 2020, informed the Center it would not agree to a suspension “at that time.” The Center on December 15, 2020, notified the Parties that it would proceed with the appointment of the panel. The Center appointed William R. Towns as the sole panelist in this matter on December 21, 2020. 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 and the Respondent own and operate separate businesses selling, servicing, and repairing garage doors in the city of Garland, Texas. Garland is situated in the Dallas/Fort Worth, Texas metropolitan area. The Complainant and the Respondent have been direct competitors for a number of years. The Complainant has operated its garage door business trading as Welborn Doors since 1997. The Respondent has operated its garage door business trading as Garage Door Distribution Center since 1999. The Complainant and the Respondent each maintain business websites. The Complainant’s website is located at “www.welborndoors.com”, and the Respondent’s website is located at “www.tolbertgaragedoor.com”. The Respondent on May 5, 2018, registered the disputed domain name The Respondent did not respond to any of the Complainant’s demand letters. The Respondent renewed the disputed domain name on May 18, 2019, and again on May 24, 2020. The Respondent continues to use the disputed domain name to redirect Internet traffic to the Respondent’s website. 5. Parties’ Contentions A. Complainant The Complainant maintains it has used WELBORN DOORS as a designator of source for garage door sales and repair services since as early 1997, serving over 250,000 customers to date. The Complainant submits that the WELBORN DOORS name and mark is known throughout the State of Texas and recognized as a highly successful garage door and gate repair company in the Dallas/Fort Worth, Texas area. The Complainant explains it has been awarded a “Consumer Choice Award” for many years and is also listed as a Best Pick for sales and service of garage doors. The Complainant asserts that the Complainant has clearly established common law trademark rights in WELBORN DOORS, referring in light of its long history of use, to the number of customers served, the amount of business, and awards received. The Complainant submits that the disputed domain name The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant remarks that the Respondent has demonstrated no bona fide reason to register and use the disputed domain name, and further represents that the Respondent is not affiliated with, sponsored by, associated with, or licensed by the Complainant to use the WELBORN DOORS mark or name. The Complainant allows that while the Respondent previously has not used the WELBORN DOORS name or mark directly, the Respondent has redirected the disputed domain name to the Respondent’s website at “www.tolbertgaragedoor.com”, and continues to do so. The Complainant submits that the Respondent in effect is trading on the Complainant’s WELBORN DOORS mark to advertise the Respondent’s own garage door services. The Complainant asserts that the Respondent has not responded to the Complainant’s notice letters, is clearly on notice that it has no legitimate rights in and to the WELBORN DOORS name and mark, has continued to redirect the disputed domain name to the Respondent’s website, and has continued to renew the registration of the disputed domain name. The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent clearly was aware of the Complainant and the Complainant’s use of the WELBORN DOORS name and mark for at least 20 years when registering the disputed domain name. The Complainant contends that the Respondent has engaged in the bad faith practice of typosquatting, which according to the Complainant gives rise to a presumptive registration of bad faith. The Complainant submits that the Respondent by redirecting the disputed domain name to the Respondent’s website is attempting to create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. The Complainant maintains that the Respondent registered the disputed domain name and has redirected it to the Respondent’s website primarily for the purpose disrupting the business of the Complainant, a direct competitor of the Respondent. B. Respondent The Respondent did not submit a formal response to the Complainant’s contentions. However, in an email to the Complainant the Respondent stated his attorney had advised he was “in the clear” so long as he did not represent himself as the Complainant. The Respondent maintained he had “Welborns” (i.e., persons named “Welborn”) working for his company, and further represented that several “Welborns” had established and operated companies in the Dallas Fort Worth region for over 20 years. The Respondent stated he would agree to transfer the disputed domain name to the Complainant provided a settlement agreement could be reached. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“ WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel initially addresses whether the Complainant has established unregistered or common law rights in WELBORN DOORS. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and unregistered or common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association,WIPO Case No. D2001-0218. In the United States, unregistered or common law rights in a trademark or service mark may be established by use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). That is to say, the mark must be used such that a relevant segment of the public comes to recognize it as a symbol that distinguishes the Complainant’s goods and services from those of others. To establish unregistered or common law rights for purpose of the Policy, the Complainant must demonstrate that the asserted mark serves as a distinctive identifier that consumers have come to associate with the Complainant’s goods or services. This may include the acquiring of relatively rapid recognition due to Internet presence, or other factors such as the type and scope of market activities or the nature of the Complainant’s goods or services. In cases involving unregistered or common law marks comprised of descriptive terms, further evidence of acquired distinctiveness or secondary meaning may be required. See generally WIPO Overview 3.0, section 1.3 (and relevant decisions cited therein). The Complainant has submitted the sworn affidavit of Michael Anderson (“Anderson”), the owner of the company (Complainant) acquired from the previous owner in 2017. According to Anderson, since 2017 the Complainant has serviced, repaired and installed thousands of garage doors, with gross sales from August 2017 through September 30, 2020, in an aggregate amount of USD 18.6 million. Anderson verifies that the Complainant has been awarded a “Consumer Choice Award” for each of the past 10 years, and also is listed as a “Best Pick” for sales and service of garage doors. The Complainant represents it has served over 250,000 customers since 1997. On the basis of the evidence presented by the Complainant in this case, the Panel is persuaded that WELBORN DOORS as used by the Complainant has come to be recognized by a relevant segment of the public as a distinctive identifier of source of the Complainant’s garage doors products and services. Secondary meaning is present when “in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.” Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211 (2000) (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851 n.11 (1982). Accordingly, the Panel finds that the Complainant has established unregistered or common law trademark rights in WELBORN DOORS, and has standing to assert such rights in this proceeding.1 The Panel finds that the disputed domain name The Complainant’s WELBORN DOORS mark is clearly recognizable in the disputed domain name.3 The omission of the letter “s” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. Generic Top-Level Domains (“gTLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.4 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s WELBORN DOORS mark. Nevertheless, the Respondent registered the disputed domain name, which is confusingly similar to the Complainant’s WELBORN DOORS mark, and which the Respondent is using to redirect Internet users to the Respondent’s website. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the 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 Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. The Panel concludes from the record that the Respondent was aware of the Complainant’s WELBORN DOORS mark when registering the disputed domain name The fact that there may be several “Welborns” currently working for the Respondent’s company and the fact that there may be several “Welborns” which have established and operated companies in the Dallas Fort Worth region, in the circumstances of this case – which based on the evidence shows a clear intention of one competitor to inappropriately target the brand recognition of another, do not establish that the Respondent has rights or legitimate interests in the disputed domain name; the Respondent does not trade under “Welborn”. Having regard to all of the relevant circumstances, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s WELBORN DOORS mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain name in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As is clear from the facts and circumstances set out above, the Panel finds that the Respondent was aware of the Complainant and had the Complainant’s WELBORN DOORS mark in mind when registering the disputed domain name. The Panel concludes that the Respondent in all likelihood registered and has used the disputed domain name with the intent to exploit and profit from the goodwill associated with the Complainant’s mark through the diversion of Internet users seeking the Complainant’s services. See Kathleen M. Casacci DDS, P.C v. Kacalski and Hannon DDS,WIPO Case No. D2012-2539. The Respondent’s redirection of the disputed domain name appears calculated to convey to Internet users the false or misleading impression that the Respondent’s website is somehow affiliated with, sponsored, or endorsed by the Complainant, or to otherwise illegitimately draw traffic intended for the Complainant by causing user confusion. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. The Panel notes that even the Respondent’s own counsel’s advice that the Respondent would be “in the clear” if it did not represent itself as the Complainant supports a finding of bad faith targeting here; the registration of a domain name which is a typo of one’s competitor is surely calculated to misrepresent the source of such domain name (put another way, it is far from what would be permissible conduct such as registering a domain name such as “dallasgaragedoors” or something to that effect). The Panel accordingly concludes that the Respondent registered and has used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, intentionally to attract Internet users to the Respondent’s website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See Edmunds.com, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319. In the attendant circumstances of this case, the Panel also considers the Respondent’s failure to reply to the Complainant’s cease-and-desist letters to be indicative of bad faith. See Christian Medical & Dental Associations v. David Mayer, KAT Communications,WIPO Case No. D2016-1670. 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 William R. Towns 1 That secondary meaning may only exist in a relatively small geographical area does not limit the complainant's rights in a common law trademark. The Panel further notes that common law protection generally is recognized in connection with the tort of passing off. See WIPO Overview 3.0, section 1.3. See also Christian Medical & Dental Associations v. David Mayer, KAT Communications,WIPO Case No. D2016-1670. 2 See WIPO Overview 3.0, section 1.7. 3 See WIPO Overview 3.0, section 1.8. 4 See WIPO Overview 3.0, section 1.11.
Sole Panelist
Date: January 4, 2021
Full & Egal Universal Law Academy