WIPO Arbitration and Mediation Center
Peachtree Doors and Windows v. Whois Protection
Case No. D2007-1169
1. The Parties
The Complainant is Peachtree Doors and Windows, of United States of America, represented by Price, Heneveld, Cooper, DeWitt & Litton, of United States of America.
The Respondent is Whois Protection, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <peachtreewindows.com> is registered with Rebel.com Services Corp. (herein the domain name in dispute).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2007. On August 10, 2007, the Center transmitted by email to Rebel.com Services Corp. a request for registrar verification in connection with the domain name at issue. On August 10, 2007, Rebel.com Services Corp. 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”), 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 August 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2007.
The Center appointed J. Nelson Landry as the sole panelist in this matter on September 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.
While it appears that despite its best endeavours the Center was not able to cause, via DHL services, the delivery to the Respondent of the paper copy of the Complaint at the Respondent’s address mentioned in the WHOIS search, the Complaint as well as the Notification of default were sent by e-mail at the Respondent’s e-mail address with success. The Panel finds that the Center has taken all reasonable steps to serve the Complaint and other relevant documents on the Respondent.
4. Factual Background
The Complainant has been active in the manufacture of windows and doors of many styles, shapes and sizes and has grown so that its products were available in numerous cities of the United States and thus became one of the leading windows and doors manufacturers and distributors in the United States of America.
The Complainant has commenced use of the PEACHTREE trademark in commerce in 1974, as it appears from Registration No 2,924,868 and thereafter registered five trademarks each consisting of/or incorporating the term “PEACHTREE” and one is specifically “PEACHTREE WINDOWS and DOORS” (herein the “PEACHTREE Trademarks” or “Trademarks”). All these Trademarks are registered in association with windows and doors. The first, No. 1,139,621, for the word “PEACHTREE” was registered in 1980, declaring a first use on February 1st, 1979 according to the evidence.
The Complainant has spent considerable time and money advertising and marketing its products under its Trademarks.
The Respondent registered the domain name in dispute on March 24, 2002.
The Complainant subsequently became aware of the registration of the domain name in dispute and its use by the Respondent to promote and advertise websites which are offering windows and doors products for sale by competitors of the Complainant. This is achieved when an Internet user searching for products and services related to windows and doors and types the domain name in dispute, the user is directed to a website that advertises hyperlinks for competitors of the Complainant namely websites sponsored by competitors of the Complainant.
The Respondent has no connection or affiliation with the Complainant and the latter has not granted consent or license of any kind authorizing the Respondent to use the PEACHTREE Trademarks in the domain name in dispute or in any other manner.
5. Parties’ Contentions
Firstly the Complainant contends that the domain name in dispute which includes an additional word such as “windows” with the registered Trademark PEACHTREE gives rise to a domain name confusingly similar to a registered trademark. The Respondent relies on several UDRP decisions, all substantiating that confusion of a domain name with a similar registered trademark may exist by the addition of letters to a trademark; see Dermalogica, Inc. and International Dermal Institute, Inc. v. Domains to Develop, NAF Claim No. FA0307000175201, a generic term, such as the words net and hosting, see Microsoft Corp. v. Devansh Mehta, NAF Claim No. FA0603000652942 or the word “assurance”; see Am International Group, Inc. v. Ling Shun Shing, NAF Claim No. FA0310000206399. The similarity and confusion arise with the incorporation in its entirety of the distinctive and famous term PEACHTREE and is further aggravated by the addition of the term “windows”.
Secondly the Complainant further contends that the Respondent has no rights or legitimate interest in the domain name in dispute considering that the Respondent has no connection of affiliation with the Complainant, has not been granted, consent or a license to use the PEACHTREE Trademarks in a domain name or else and that Respondent has never been recognized or associated with the domain name in dispute.
The Complainant alleges that the Respondent does not appear to have any legitimate commercial interests in the sale of windows and doors, its interest being to use the domain name in dispute associated with its the website where Internet users are misdirected to competitors of the Complainant advertised therein, presumably paying for such advertising.
This use, according to the Complainant, does not demonstrate a bona fide use of goods and services nor a legitimate business interest and this representation is further present with the combination of the well-known trademark PEACHTREE with the descriptive word “windows” in a domain name to divert Internet users to a website sponsored by the Respondent. See Westcoast Contempo Fashions Ltd. v. Manila Industries, Inc., NAF Claim No. FA0610000814312. The Complainant further argues that this use by the Respondent is by no accident when one uses or chooses a famous mark seeking to create an impression of an association with the Complainant. See Gov. Employees Insurance Co. (GEICO) v. Forum LLC, WIPO Case No. D2005-1131.
Thirdly, the Complainant represents that the domain name in dispute was registered and used in bad faith. According to the Complainant, the Respondent knew of the rights of the Complainant in the PEACHTREE Trademarks which rights Respondent could not have ignored considering the extensive marketing and advertising of its products sold under its Trademarks which could have been easily located by a minimal Internet searching or conducting a basic search of the United States Patent & Trademark Office records.
Therefore the Complainant further concludes that Respondent had constructive notice of Complainant’s Trademarks rights which notice is further demonstrated by Respondent using the domain name in dispute to misdirect Internet users to third party door and window manufacturers, competitors of the Complainant. The inclusion of the word “windows” in the domain name in dispute makes it inconceivable that Respondent was not aware of Complainant’s business.
According to the Complainant, considering this inconceivable fact of absence of knowledge and of any plausible good faith explanation by Respondent for the use of the said domain name, the Respondent’s method of operation, its trademark infringement, in adding a word to a well-known trademark to misdirect Internet traffic, all these facts constitute bad faith under the Policy.
Finally, the Complainant represents that this bad faith is supported by its interest in commercial gain and Respondent’s knowledge of the harm it would cause to Complainant by its activities and the inevitable confusion of some kind arising from the addition of the word “windows” to the PEACHTREE Trademark in the domain name in dispute.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the respondent 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 interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The five registered PEACHTREE Trademarks of the Complainant have been extensively used and promoted since at least 1974 for the first, the others thereafter and therefore the Complainant enjoys significant goodwill associated thereto. As it has been held in a number of the UDRP decisions cited by the Complainant, the mere addition of a word such as “windows” to the distinctive term PEACHTREE and the addition of “.com” does not avoid similarity and possible confusion between the domain name in dispute and the registered Trademarks.
The panel finds that the domain name in dispute is confusingly similar to the registered Trademarks of the Complainant and accordingly, that the first criterion has been met.
B. Rights or Legitimate Interests
Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks right or legitimate interest in the domain name in dispute the Complainant states inter alia that by stating that the Respondent has never been known by the name “PEACHTREE” or the domain name in dispute does not make any legitimate, non-commercial or fair use of the domain name in dispute.
Furthermore, the Complainant has never given a license nor in any way authorized Respondent to make use of Complainant’s Trademarks and there is no evidence on the available case record that Respondent has ever engaged in any legitimate business under the name PEACHTREE or the Complainant’s Trademarks.
The apparent use made of the domain name in dispute by the Respondent is simply to misdirect Internets users to websites of competitors of the Complainant and such use cannot be fair, non commercial or legitimate use nor a bona fide offering of goods or services nor a legitimate business interest pursuant of paragraph 4(c)(i) of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the domain name in dispute and accordingly, that the second criterion has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(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.”
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the domain name was registered and used in bad faith.
Considering that there is no evidence of the Respondent being active in the manufacturing, distributing and sale of doors and windows under any name, this Panel finds it inconceivable that the Respondent would use a distinctive term such as PEACHTREE and associate it with the word “windows” and then use this domain name to promote on its website sponsored links to redirect Internet visitors to the websites of competitors of the Complainant without being aware of the Trademarks of the Complainant. Considering these facts and the confusing similarity between the domain name in dispute and the Trademarks, this Panel finds that the domain name in dispute was registered in bad faith which decision is consistent with and supported by a number of the UDRP decisions cited by the Complainant.
According to the available evidence, the only use made by the Respondent of the domain name in dispute is to offer sponsored space on its website whereby Internet visitors would be redirected to websites of competitors of the Complainant. The Panel has visited Respondent’s website and observed under the heading “Sponsored” that numerous, if not all, companies appearing therein are doors and windows manufacturers or distributors, which presumably compete with the Complainant, and that the Complainant is absent therefrom. It is well-established that such use of a domain name confusingly similar to well-known Trademarks constitutes clear evidence of use in bad faith.
This Panel finds that the domain name in dispute was registered in bad faith by the Respondent and is being used in bad faith by the said Respondent, and accordingly that the third criterion has been met.
The Panel concludes that:
(a) the domain name <peachtreewindows.com> is confusingly similar to the Complainant’s Trademark; and
(b) the Respondent has no rights or legitimate interest in the domain name in dispute; and
(c) the domain name in dispute has been registered and is being used in bad faith.
Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <peachtreewindows.com> be transferred to the Complainant.
J. Nelson Landry
Dated: September 23, 2007