WIPO Arbitration and Mediation Center
Weather Shield, Mfg., Inc. v. Will Belak
Case No. D2007-0053
1. The Parties
The Complainant is Weather Shield, Mfg., Inc., of Medford, Wisconson, United States of America, represented by Price, Heneveld, Cooper, DeWitt & Litton, United States of America.
The Respondent is Will Belak, of Newfoundland, Canada.
2. The Domain Name and Registrar
The disputed domain name <weathersheild.com> is registered with 8068 Registrar, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2007. On January 15, 2007, the Center transmitted by email to 8068 Registrar, Inc. a request for registrar verification in connection with the domain name at issue. On that same day 8068 Registrar, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2007.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on February 13, 2007. 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 was founded 50 years ago and is in the business of manufacturing and selling doors and windows. It is the owner of the domain name <weathershield.com> which it registered in December 2005. It is also the owner of numerous US Federal trademark registrations including, notably, Registration Number 2085821 for the word mark WEATHER SHIELD. This mark is on the Principal Register and claims first use in commerce in 1973.
The Respondent is an individual with a Canadian address. Nothing else is known of it, other than it registered the disputed domain name on September 15, 2006. The disputed domain name is associated with a portal style website which promotes the sale of windows and doors from sources having no connection with the Complainant. It also promotes other goods and services having no connection with the Complainant.
The Complainant petitions the Panel to transfer the disputed domain name from the Respondent to the Complainant.
5. Parties’ Contentions
The Complainant alleges that the Respondent is a typical so-called “typosquatter”. It alleges that the name chosen by the Respondent is confusingly similar to a registered mark of it own. It states that the Respondent has no permission or license to use the Complainant’s trademark and there is no plausible explanation as to why the Respondent registered a quasi-identical domain name. The Complainant therefore alleges that the Respondent has no rights or legitimate interests in the domain name. It further alleges that the domain name was registered in bad faith in the knowledge of the Complainant’s well known mark and afterwards, used in bad faith to promote the sale of goods which compete with the Complainant’s goods in the market place.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact the Respondent failed to submit a reply: See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465; and Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(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 in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
Having considered the Complainant’s case and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
The Panel has no hesitation in finding that the disputed domain name is confusingly similar to a mark in which the Complainant has rights. It is well established that the gTLD can be ignored for the purpose of this comparison, after which the only differences between the domain name and the mark of US Registration No. 2085821 are (i) the fact that the mark consists of the two dictionary words punctuated by a break, whereas the domain name coalesces the two words, and (ii), the word “shield” is correctly spelt in the mark but misspelt in the domain name. The Panel observes, first, that it is the standard practice for domain names to omit punctuation, and secondly, that in the English language one of the most common spelling errors involves the digraphs “ei” and “ie” when they follow a consonant. Again, discounting the gTLD, the mark and the domain name would be pronounced in the same way, and are visually almost identical.
The Complainant’s rights in the mark are established by the Federal registration.
The Panel accordingly holds that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has not given the Respondent permission to use its trademark or any quasi-identical mark. The Respondent has no obvious commercial interest in the sale of windows or doors and is not commonly known by the domain name. In these circumstances the burden of proof passes from the Complainant to the Respondent. It has provided no explanation for its actions and the only conclusion which can be drawn is that the Respondent has no rights or legitimate interests in the domain name: See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 ; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Panel finds that the Complainant has satisfied the second limb of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s argument is that registration of the domain name was in bad faith since the Complainant’s mark was well-known by September 2006. The Complainant has not adduced any evidence that its mark is well-known, nonetheless it states (and the Respondent has not contradicted) that it has been in business for 50 years and is one of the leading manufacturers of windows and doors in the United States. As noted previously, its trademark registration for the word mark WEATHER SHIELD has been used for over 30 years. The Panel accepts that on the evidence there is a strong likelihood that the Respondent knew of the Complainant’s mark at the time it registered the disputed domain name. It registered a confusingly similar version of the Complainant’s mark, the variation being nothing more than the most likely misspelling of the mark.
The Panel finds that the Respondent registered the name in bad faith.
The domain name was subsequently associated with a website carrying numerous hyperlinks to third party websites which promote the sale of windows and doors which compete with the Complainant’s goods. For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances are listed as evidence of the registration and use of a domain name in bad faith:
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The Respondent’s actions fall within one or both of those descriptions and so the Panel also holds that the Respondent’s use of the domain name has been in bad faith: See also Altavista Co. v. OFEZ et al, WIPO Case No. D2000-1160.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <weathersheild.com> be transferred to the Complainant.
Debrett G. Lyons
Dated: February 27, 2007