WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Woodmark Corporation v. Akhmad Fuad Hasyim
Case No. D2012-0099
1. The Parties
The Complainant is American Woodmark Corporation of Winchester, Virginia, United States of America represented by Gavin Law Offices, PLC, United States of America (“USA”).
The Respondent is Akhmad Fuad Hasyim of Pasuruan, Jawa Timur, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <americanwoodmarkkitchencabinets.com> ("the Domain Name") is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2012. On January 20, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Name. On the same date, GoDaddy.com, LLC 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2012.
The Center appointed Dawn Osborne as the sole panelist in this matter on February 20, 2012. 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 is a manufacturer of kitchen and bathroom cabinets with trade mark registrations consisting of or including the mark AMERICAN WOODMARK going back to 1984, first use being 1980.
According to the registrar’s verification response, the Respondent registered the Domain Name in 2011 and has used it to link to goods not of the Complainant's manufacture.
5. Parties’ Contentions
The Complainant's contentions can be summarised as follows:
The Complainant is a manufacturer of kitchen and bathroom cabinets with trade mark registrations consisting of or including the mark AMERICAN WOODMARK first registered 1984, and first use being 1980. It is one of the three largest manufacturers of kitchen and bathroom cabinets in the USA. The AMERICAN WOODMARK trade mark is nationally known in the USA. It also has a registered trade mark for SOLANA.
The Complainant registered the domain name <americanwoodmark.com> and has used it in relation to its business since 1996.
The Domain Name fully incorporates and is confusingly similar to the Complainant's AMERICAN WOODMARK trade mark. The addition of the generic words "kitchen cabinets" and the generic top level ".com" does not change this.
The Respondent has no permission from the Complainant to use the Domain Name. The Respondent's use to divert consumers to competing cabinet manufacturers and distributors for money is not a bona fide offering of goods or services. It is designed to exploit the prestige and goodwill of the Complainant to draw traffic to the Respondent's web site for click through revenue. The Respondent is not commonly known by the Domain Name, nor is he making legitimate noncommercial or fair use of the Domain Name. The Respondent has no rights or legitimate interests in the Domain Name.
The Respondent has registered many domain names that are the same or similar to the trade mark registrations of other US companies such as “Home Depot”. Accordingly, the Respondent is involved in a pattern of registering domain names including well known marks to prevent the owners of trade marks from reflecting the marks in corresponding domain names.
The Respondent has also intentionally attempted to attract for commercial gain Internet users to Respondent's web site by creating confusion with the Complainant's mark as to the source, affiliation or endorsement of the Respondent's web site or of products or services on it.
The Respondent is clearly focused on the USA demonstrated by his use of "American Woodmark" not "Indonesian Woodmark". He is using a US based registrar and his web site is in English. He clearly knew about the Complainant upon registration due to his use of the Domain Name in relation with cabinets including the use of the Complainant's mark SOLANA on his website.
The Respondent has registered and used the Domain Name in bad faith.
The Respondent also provided incomplete information on the publicly available WhoIs for the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name consists of the Complainant's AMERICAN WOODMARK registered mark and the generic words "kitchen cabinets" which do not serve to distinguish the Domain Name from the Complainant's trade mark reflecting as they do the business in which the Complainant operates. The generic “.com” top level domain is ignored for the purposes of the Policy.
As such the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent has not filed a Response, does not appear to have any trade marks associated with “American Woodmark”, is not commonly known by this name and does not have any consent from the Complainant to use this name. The use to point to goods competing with those of the Complainant is not bona fide use in relation to goods or services under the Policy.
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name and therefore, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including: circumstances where, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 its web site or location or of a product or service on its web site or location; or circumstances showing a pattern of activity designed to prevent trade mark owners from reflecting their marks in corresponding domain names.
In this Panel’s view, it does appear from the evidence that the Respondent has attempted to attract and cause confusion amongst Internet users between the Complainant’s marks and goods and the third party links on the site attached to the Domain Name for commercial gain.
It also appears from the evidence provided by the Complainant that the Respondent has registered at least eleven other domain names containing the trade marks of third parties companies which, in this Panel’s view, appears to be evidence of a pattern of cybersquatting activity.
Accordingly, the Panel finds that the Domain Name has been registered and used in bad faith and therefore, the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <americanwoodmarkkitchencabinets.com> be transferred to the Complainant.
Dated: February 22, 2012