DECISION

Westmill Industries, Ltd. v. Rolling Components, an Oregon corporation

Claim Number: FA0406000286746

PARTIES

Complainant is Westmill Industries, Ltd. (“Complainant”), represented by Michael Abejuela, of Dozier Internet Law P.C., 4860 Cox Road, Suite 200, Glen Allen, VA 23060.  Respondent is Rolling Components, an Oregon corporation (“Respondent”), 9904 SW Tigard St., Togard, OR 97223-5244.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <westmill.com>, registered with Network Solutions, Inc.

PANEL

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.

Alan L. Limbury as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 14, 2004; the Forum received a hard copy of the Complaint on June 17, 2004.

On June 18, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <westmill.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 June 24, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 14, 2004 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@westmill.com by e-mail.

A timely but unsigned Response was received and determined to be complete on July 12, 2004.

Complainant made a timely Additional Submission according to the Forum’s Supplemental Rule 7 on July 19, 2004.

On July 20, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant has trademark rights in the WESTMILL INDUSTRIES, LTD and WESTMILL marks, which it has used since 1976 in connection with the manufacture of machinery and parts for the plywood manufacturing industry, the development of veneer dryer technology and the offering of new and used parts and service for equipment used in the industrial board drying industry.  It is the dominant provider of replacement dryer parts for the plywood manufacturing industry in Canada.  In the past year it has expanded into the United States.  Complainant owns and operates a website at <westmillindustries.com>. 

           

Complainant’s primary competitor is Northwest Dryer & Machinery Co., which offers the same type of goods and services and is the dominant provider of replacement dryer parts for the plywood manufacturing industry in the United States.  Recently, Northwest Dryer & Machinery Co. has entered the Canadian market.  Scott Wenzel is the owner, operator and authorized representative of Northwest Dryer & Machinery Co. and the President of Respondent, Rolling Components, Ltd., which registered the <westmill.com> domain name subsequent to Complainant’s first use of the WESTMILL mark.

For twenty five years, Complainant represented Northwest Dryer & Machinery Co. in Canada.  This relationship came to an abrupt end after Scott Wenzel purchased Northwest Dryer & Machinery Co.  In March 2004, Northwest Dryer & Machinery Co. ceased taking orders from Complainant.  On the same day Complainant discovered that the <westmill.com> domain name was directing traffic to the Northwest Dryer & Machinery Co. website.

When a user visits that website, the page resolves to the home page for Northwest Dryer & Machinery Co.  The <westmill.com> website consists of code which is nothing more than a frame around the <northwestdryer.com> website.  There is no connection with Westmill Industries, Ltd. on the Northwest Dryer & Machinery Co. home page.  Respondent is blatantly using the <westmill.com> domain name to confuse users who are searching for Complainant, in an attempt to misappropriate business opportunities from Complainant.  By such tactics, traffic intended for Complainant is being diverted to Respondent’s website.

Respondent has not been commonly known by the domain name and is not using it in a legitimate noncommercial or fair use capacity, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.  The intent is to mislead and divert consumers looking for Complainant. 

The domain name was registered in bad faith, primarily for the purpose of disrupting the business of Respondent’s competitor.  Respondent has intentionally attempted to attract Complainant’s prospective and existing customers to its website, for commercial gain, by creating a likelihood of confusion with Complainant’s mark.  Further, there is a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.

B. Respondent (by way of unsigned letter on Respondent’s letterhead, from Mr. Scott Wenzel).

I recently acquired the domain name legally and without subterfuge by responding to a posted ad by the previous owner, in a legitimate business strategy to promote growth.

Northwest Dryer and Machinery Co. was established in 1964, and is the largest supplier of industrial drying equipment service parts in North America. A significant amount of our revenues are derived from Canadian customers, as well as other international accounts.

Westmill Industries was established in 1976 in Canada with the assistance of Northwest Dryer founders Dale Gordon and Loren Stapleton. Their handshake agreement was that Westmill Industries would distribute the product line of Northwest Dryer in Canada, and in return receive a significant discount from normal pricing structures. Over two years ago, we discovered that Westmill Industries had begun competing directly with Northwest Dryer by selling dryer parts manufactured by NW Dryer to current NW Dryer customers in the United States - a violation of the long standing agreement between the companies.

As workers migrate between companies in the plywood industry they take their knowledge of suppliers with them. We have known about and tolerated a certain amount of confusion between the trade names of these two companies for many years on behalf of these workers and the industry in general. This confusion was understandable because the products made by NW Dryer and sold by Westmill Industries were emblazoned conspicuously with the NW Dryer trademarks. We frequently referred Canadian customers to Westmill Industries to buy our products - even though they were asking for products made in our plant.

The Complainant is currently known throughout the industry as “Westmill Industries”. Their invoices read “Westmill Industries”. We have responded to customers’ requests for our products under the name WESTMILL, especially overseas, most notably in Australia for many years. Recent initial sales forays by Westmill Industries in Australia caused great confusion among our customers, prompting our registration of the <westmill.com> domain name.

I have legitimate rights to the <westmill.com> domain name based on our past business history with customers both inside North America and abroad. 

C. Complainant’s Additional Submission

Respondent’s ‘legitimate business strategy’ is focused on confusing clients or potential clients of Complainant by the use of a domain name that is confusingly similar to Complainant’s trademark.  Respondent has registered the <westmill.com> domain name to promote Northwest Dryer & Machinery Co. 

Respondent has acknowledged that Complainant has used the name “Westmill Industries” since 1976 and has been known by that name in the industry for over twenty-seven years.  Respondent admits to being a direct competitor of Complainant.  Most notably, Respondent states that a “significant amount of our revenues are derived from Canadian customers, as well as other international accounts.”

Respondent admits that there is confusion between the two competitors, Complainant and Northwest Dryer & Machinery Co.  The use of <westmill.com> to promote Northwest Dryer & Machinery Co. only adds to this confusion and is an obvious attempt by Northwest Dryer & Machinery Co. to misappropriate Complainant’s business opportunities.

Respondent admits to having “responded to customers’ requests for…products under the name Westmill”.  This is the very conduct that is prohibited under trademark law and is the type of cybersquatting that the Policy seeks to prevent.  There apparently have been customers looking for products manufactured by Complainant to which Northwest Dryer & Machinery Co. has responded.

Complainant has not advertised, direct marketed to, traveled to, or otherwise marketed itself in Australia, as it is entitled to do.  Respondent claims that because of customer confusion as to inquiries for Westmill products, it registered the <westmill.com> domain name.  This accomplishes nothing more than to add to the confusion and to allow Northwest Dryer & Machinery Co. to misappropriate the Complainant’s business opportunities.

Respondent claims that products made by Northwest Dryer & Machinery Co. were emblazoned with its trademarks.  References to Northwest Dryer & Machinery Co. on the products it manufactures are limited to a part number that begins with the letters “NW”.  The products manufactured by Complainant do not bear any reference to Northwest Dryer & Machinery Co. nor do they display any of that company’s trademarks.  Therefore, customers of Complainant would not be confused into thinking that they were purchasing products from Complainant that were manufactured by Northwest Dryer & Machinery Co.

Respondent mentions that Canadian customers of Northwest Dryer & Machinery Co. were referred to Complainant under the previous agreement between the two companies but fails to mention that United States customers of Complainant were referred to Northwest Dryer & Machinery Co. Now that both parties have gone into direct competition with each other in both geographic markets, it is very important to prevent confusion between the two companies.  Respondent’s registration of the <westmill.com> domain name accomplishes the complete opposite and adds to consumer confusion between the two names.

FINDINGS

Complainant is entitled to the relief sought.

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 Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) 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

To succeed in a Complaint under the Policy in relation to an unregistered mark, Complainant must prove that, prior to filing the Complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent.  See British Heart Found. v. Meyer, AF0957   (eResolution Nov. 13, 2001).

Complainant has traded under the names WESTMILL INDUSTRIES, LTD. and WESTMILL since 1976, both in manufacturing and selling its own products and in selling the products of others, including those of Northwest Dryer & Machinery Co. Respondent acknowledges that Complainant is currently known throughout the industry as Westmill Industries and that its invoices read ‘Westmill Industries’. 

Through use over many years, the WESTMILL mark has become distinctive of Complainant’s products and services throughout the plywood manufacturing and industrial board drying industries in North America. Accordingly, Complainant has common law rights in the WESTMILL INDUSTRIES, LTD. mark. 

The dominant and distinguishing part of that mark is the word Westmill. This is a combination of two common English words but it is not descriptive of the products and services in connection with which it has been used by Complainant for many years.  Complainant also has common law trademark rights in the WESTMILL mark.

The only difference between the domain name and the WESTMILL mark is the addition of the generic top-level domain “.com,” which does not significantly distinguish the domain name from the mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000).

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the "Sleekcraft factors."  See AMF Inc. v. Sleekcraft Boats, [1979] USCA9 691; 599 F.2d 341,346 (9^th Cir. 1979) - usually considered in trademark infringement or unfair competition cases.  See also BWT Brands, Inc. v. NABR, D2001-1480 (WIPO Mar. 26, 2002); see also Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001).

The domain name is identical to Complainant’s WESTMILL mark and confusingly similar to Complainant’s WESTMILL INDUSTRIES, LTD. mark.

Rights or Legitimate Interests

Having had a twenty-five year distribution agreement with Complainant, Northwest Dryer & Machinery Co. was aware that the WESTMILL mark identified Complainant’s products and services.  Mr. Wenzel was also aware of this.  Respondent had prior knowledge of Complainant’s mark both through Mr. Wenzel and because Respondent claims that it registered the domain name in response to Complainant’s sales forays in Australia.  Complainant has not authorized such registration.

Complainant has made a prima facie showing of absence of rights or legitimate interests in the domain name on the part of Respondent.  The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) and the cases there cited.

Mr. Wenzel makes no attempt to distinguish between Respondent and Complainant’s principal competitor, Northwest Dryer & Machinery Co. He offers no explanation as to why the domain name was registered in the name of Respondent.

Respondent’s explanation for having registered the domain name is that ‘we’ [in context, Northwest Dryer & Machinery Co.] responded to customers’ requests for ‘our’ products under the WESTMILL mark, particularly in Australia.  When, according to Respondent, Complainant offered its own products in Australia, there was customer confusion, which prompted Respondent to register the domain name.

The conduct of Northwest Dryer & Machinery Co. in responding to requests for its products under the WESTMILL mark does nothing to establish either its own bona fide or those of Respondent and cannot clothe with legitimacy the registration by Respondent of the domain name in response to alleged confusion in Australia.

There is no evidence that Respondent has been commonly known by the domain name. The only use of the domain name by Respondent has been to lead Internauts to the Northwest Dryer & Machinery Co. website, which offers products and services which compete with those offered by Complainant. This is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001). Here, Respondent is not itself offering similar services but the connection, through Mr. Wenzel, between Respondent and Northwest Dryer & Machinery Co. and the conduct of Respondent in promoting the products and services of Northwest Dryer & Machinery Co., by means of the domain name, are such that Respondent should be regarded as a competitor of Complainant.

Respondent has no rights or legitimate interests in the domain name.

Registration and Use in Bad Faith

The Panel in G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) found that Respondent registered and used a domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using a confusingly similar domain name to attract Internet users to its commercial website. See also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000).  Any distinction between Respondent and Northwest Dryer & Machinery Co. is insufficient to warrant a different conclusion in this case.

Respondent registered and is using the domain name to disrupt the business of a competitor. Pursuant to Policy ¶ 4(b)(iii) this is evidence of both bad faith registration and bad faith use.  See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000); see also SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001).

Respondent registered and is using the domain name in bad faith. 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <westmill.com> domain name be TRANSFERRED from Respondent to Complainant.

Alan L. Limbury, Panelist
Dated: July 29, 2004

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