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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Wilsonart International, Inc. v Internet Communications, Inc.
Claim Number: FA0104000097009
PARTIES
The Complainant is Wilsonart International, Inc., Temple, TX, USA ("Complainant") represented by R. Wayne Pritchard, of Wilsonart International, Inc. The Respondent is Rey Blanco Internet Communications, Inc., Chicago, IL, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wilsonart.net>, registered with Name It Corporation.
PANEL
On April 30, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on April 2, 2001; the Forum received a hard copy of the Complaint on April 2, 2001.
On April 2, 2001, Name It Corporation confirmed by e-mail to the Forum that the domain name <wilsonart.net> is registered with Name It Corporation and that the Respondent is the current registrant of the name. Name It Corporation has verified that Respondent is bound by the Name It Corporation registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 23, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@wilsonart.net by e-mail.
A timely response was received and determined to be complete on April 23, 2001.
On April 30, 2001, Complainant presented a timely additional submission in accordance with Supplemental Rule 7. The submission was considered by the Panel.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant.
Complainant first registered its WILSONART trademark (No. 1418368) with the Federal Trademark Office for use in connection with laminate flooring on November 25, 1986. Complainant also holds seven other registrations for the mark WILSIONART in connection with flooring and home maintenance, decorating and home improvement products. Complainant has used the mark in commerce in connection with the laminate flooring industry at least since 1979. Complainant is also the owner of the domain names <wilsonart.com> and <wilsonart.org>.
Complainant believes that the domain name <wilsonart.net> registered by the Respondent is identical to its protected mark and its use will attract consumers that are attempting to locate the Complainant. Further, Complainant claims that Respondent has no rights or legitimate interest in the domain name and that the registration was made in bad faith.
Respondent claims that since it is not engaged in the flooring business that its use of the name does not infringe upon Complainant’s protected rights. Respondent claims as "enthusiasts" of Complainant’s products its intent in registration of the domain name is to establish an informational web site for installers of Complainant’s products. Respondent claims that the use of a disclaimer allows Respondent to use Complainant’s mark in connection with a ". net" domain name in connection with an informational web site. Respondent claims its offer to sell the domain name was at the invitation and insistence of the Complainant.
FINDINGS
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The domain name is identical to Complainant’s mark. See American Golf Corp. v. Perfect Web Corp., D2000-0908 (WIPO Oct. 23, 2000) (finding that the domain name <americangolf.net> is identical and confusingly similar to Complainant’s AMERICAN GOLF marks).
Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has not offered evidence that demonstrates rights or legitimate interests in the domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s claim of intent to launch an informational web site using the disputed domain name site standing alone is not convincing to the Panel that Respondent has legitimate rights or interests in the domain name. To satisfy the Policy ¶ 4(c), some evidence showing demonstrable preparation, a commonly known name or established interest of the Respondent or a legitimate proposal for noncommercial fair use of Complainant’s mark must be offered. See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that "unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services").
Finally, use of a disclaimer is insufficient to avoid consumer confusion. See AT&T Wireless Services, Inc. and AT&T Corp. v. Phone Center, D2000-0678 (WIPO Nov. 11, 2000) (finding a specific disclaimer of any affiliation with Complainant was a transparent attempt by Respondent to elude Complainant’s infringement claims).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s proposed web site under the name of <wilsonart.net> includes
Complainant’s mark and is nearly identical to Complainant’s domain names. The Panel concludes Respondent registered the domain name in bad faith because Respondent had notice of Complainant’s trademark at the time of registration. In the Response to the Complaint, Respondent acknowledges familiarity with Complainant and proposed to provide information about its products. See Northwest Airlines, Inc. v. Koch, FA 95688 (Nat. Arb. Forum Oct. 27, 2000) ("the selection of a domain name [northwest-airlines.com] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith"); see also Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) ("The domain name ‘singaporeairlines.com’ is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’"); see also Nintendo of America Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the Respondent, at the time of registration, had notice of the Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity).
Respondent claims to have a plan to use the domain name as an informational site about Complainant. This act itself without Complainant’s consent is a showing of bad faith. See National Rifle Association v. fredg.com, FA 95837 (Nat. Arb. Forum Nov. 30, 2000) (finding bad faith where Respondent registered the domain names "friendsofnra.com", "friendsofnra.net", and "friendsofnra.org" with the intention of using the domain names in connection with individual NRA fundraising, but without permission from Complainant to use the registered marks); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent can accomplish his stated purpose of providing news and information about State Farm without the use of State Farm’s trademark in a name). See also Anne of Green Gable Licensing Authority, Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding bad faith where Respondent used the domain name <anneofgreengables.com> to link users to a web site that contains information about the Anne of Green Gables literary works, motion pictures and the author, L. M. Montgomery, where a visitor to the web site may believe that the owner of the mark ANNE OF GREEN GABLES is affiliated with or has sponsored or endorsed Respondent's web site).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.
Accordingly, it is Ordered that the domain name <wilsonart.net> should be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: May 4, 2001
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URL: http://www.worldlii.org/int/other/GENDND/2001/882.html