World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

American Woodmark Corporation v. Felix Maroto Roman

Case No. D2012-1598

1. The Parties

The Complainant is American Woodmark Corporation of Winchester, Virginia, United States of America, represented by Gavin Law Offices, PLC, United States.

The Respondent is Felix Maroto Roman of Ciudad Real, Spain.

2. The Domain Name and Registrar

The disputed domain name <americanwoodmarkkitchencabinets.org> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2012. On August 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2012, the Registrar 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 August 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2012. The Respondent did not file a formal Response however, the Respondent sent three email communications to the Center on August 22 and 23, 2012. On August 24, 2012, the Complainant filed a supplemental filing.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 21, 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 trademark registrations consisting of or including the trademark AMERICAN WOODMARK going back to the year 1984. The trademark is registered in the United States and Canada.

The Complainant’s goods are offered for sale directly and through retail outlets. The Complainant has operated its main website at “www.americanwoodmark.com” since 1996.

According to the registrar’s verification response, the Respondent registered the disputed domain name on June 29, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

The Complainant is a manufacturer of kitchen and bathroom cabinets under the trademark AMERICAN WOODMARK.

The Respondent resides in Spain. The Complainant does not have a trademark registration in Spain. However, the Complainant states that there is no requirement under the Policy that the Complainant has rights in a mark in every country in the world to police and protect its trademark.

The Complainant registered the domain name <americanwoodmark.com> and has used it in relation to its business since 1996.

The disputed domain name fully incorporates and is confusingly similar to the Complainant’s AMERICAN WOODMARK trademark. The addition of the generic words “kitchen cabinets” and the generic top level domain suffix (“gTLD”) “.org” does not change this result.

The Respondent has no permission from the Complainant to use the disputed 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 disputed domain name for click through revenue. The Respondent is not commonly known by the disputed domain name, nor is making a legitimate noncommercial or fair use of the disputed domain name. The Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent has also intentionally attempted to attract for commercial gain Internet users to his website by creating confusion with the Complainant’s mark as to the source, affiliation or endorsement of the Respondent’s website or of products or services on it.

The Respondent has registered and used the disputed domain name in bad faith.

The Complainant argues that the Respondent knew of the Complainant’s rights at the time it registered the disputed domain name. The Complainant has used certain of its trademarks for over thirty years and has spent substantial time and money creating brand association with the Complainant’s trademark in the field of kitchen and bathroom cabinets. The Complainant asserts to be the third largest manufacturer of kitchen and bathroom cabinets in the United States of America and is known throughout the country. The Respondent’s actual knowledge of the Complainant and the Complainant’s trademark and its intention to trade on the Complainant’s brand is apparent from the Respondent’s deliberate use of the Complainant’s trademark.

The Respondent registered and uses the disputed domain name to earn click-through revenue by intentionally trading on the Complainant’s trademark to attract and divert Internet users to its website and those of the Complainant’s competitors. The Respondent does so by creating a likelihood of confusion with the Complainant and the Complainant’s trademark as to the source, sponsorship, affiliation and/or endorsement of the Respondent’s website and competitor websites linked thereto. To engage in this practice, the Respondent clearly knew of the Complainant, the Complainant’s line of business and the Complainant’s trademark at the time of registration of the disputed domain name and subsequent operation of the Respondent’s website for commercial gain.

The Complainant states that the Respondent’s registration and use of the disputed domain name in bad faith is evidenced by the Respondent’s creation and operation of a Facebook page, beginning July 13, 2012, under the name “American Woodmark Kitchen Cabinets” to earn click-through revenue by intentionally trading on Complainant’s trademark to divert Internet users to its website located at the disputed domain name and those of Complainant’s competitors

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not file a formal Response; however, the Respondent sent three email communications to the Center on August 22 and 23, 2012.

On August 22, 2012 Respondent sent an email communication stating: “I did not buy the domain to supplant AmericanWoodmar Company, if you READ the domain it says: AmericanWoodmark kitchen cabinets, the web is about american woodmark kitchet cabinets, In the website we do not say that we are The american Woodmark Corporation, the domain had to had that 2 words, so it made sense, we couldn’t say woodkitchen cabinets if we are refering to american woodmark kitchen cabinets. So, that’s why I think that i should keep the domain. However, due to the harrass WIPO, you and many lawyers have put through me I’m willing to give up the domain, but they will have to pay the price of the domain and the hosting of the web, which amounts to: 24 $ for hosting, 8 $ of the domain name = 32$”.

On August 23, 2012 Respondent stated: “I’ve already sent the settlement offer, they give me a total amount of 32 U.S Dollars in concept of:

Cost of the domain on: www.godaddy.com 8 $

Cost of hosting for the web on: http://webhostingworld.net 24$

Why add the cost of the hosting?, because the website without that specific domain is useless, due to it being related to American Woodmark kitchen cabinets, if we can’t use American Wooodmark on the domain, there’s no point on naming it i.e kitchencabinets.org”.

C. Supplemental Filing by Complainant

In a supplemental filing on August 24, 2012, the Complainant states that per email correspondence dated August 22, 2012, the Respondent confirms his prior knowledge and intentional use of the AMERICAN WOODMARK trademark in the disputed domain name.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements are present if the Complaint is to prevail:

(i) The disputed 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 disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Supplemental Filing by Complainant

In its supplemental filing of August 24, 2012, the Complainant states that per email correspondence dated August 22, 2012, the Respondent confirmed his prior knowledge and intentional use of the trademark AMERICAN WOODMARK. The Complainant reiterates that the disputed domain name is being used to earn click-through revenue by intentionally trading on Complainant’s trademark to attract and divert Internet users to its website and those of the Complainant’s competitors (see Annex 3 of the Complaint).

As indicated in the Procedural History above, the Complainant has submitted a supplemental filing, without having been required to do so by the Panel, in connection with the Respondent’s emails.

According to the criteria set out in previous decisions adopted under the Policy (see, for example, decisions in Delikomat Betriebsverpflegung Gesellshcaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; AutoNation Holding Corp. v. Rabea Alawneh, WIPO Case No. D2002-0058; or De Dietrich Process Systems v. Kemtron Ireland Ltd., WIPO Case No. D2003-0484), unsolicited supplemental filings should be accepted by the Panel if the following two circumstances are met: (i) the eventual acceptance of such filings should not breach the guarantee to both parties to be treated equally, so each one has a fair opportunity for presenting its case; and (ii) the supplemental filings should address relevant issues which were not known by the filing party at the time that it filed its documents, and that could affect the outcome of the decision.

The Complainant reports that the Respondent email message is further evidence of the Respondent’s bad faith.

Inasmuch as this submission is based on the Respondent’s conduct that occurred only after the Complaint was filed and thus the evidence it contains could not be raised by the Complainant at any earlier point in the proceeding and the Respondent had an opportunity to comment on the Complainant’s filing (by filing a Response) but chose not to do so, the Panel, in exercise of its sole discretion, has fully considered this submission.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the mark AMERICAN WOODMARK, through registration and through use predating the Respondent’s registration of the disputed domain name.

The Panel also finds the disputed domain name is confusingly similar to the Complainant trademark.

The addition of the descriptive words “kitchen” and “cabinets” to the mark in the disputed domain name does not diminish the confusing similarity between the mark and the disputed domain name. If anything, the words “kitchen” and “cabinets” aggravates the confusion, since those products are the core of the Complainant’s business. In addition, the “.org” extension does not change this finding.

Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark, or to register any domain name incorporating the Complainant’s mark.

The Complainant further alleges that the Respondent has no relation with the Complainant nor has he any rights or legitimate interests in the disputed domain name. The Respondent has not rebutted these prima facie allegations, and has provided no evidence demonstrating rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy.

Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.

D. Registered and Used in Bad Faith

The Complainant must prove that the disputed domain name was both registered and is being used in bad faith.

The Complainant’s allegations with regard to the Respondent’s registration and use of the disputed domain name in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent.

Because the disputed domain name <americanwoodmarkkitchencabinets.org> contains the trademark AMERICAN WOODMARK with the addition of the terms “kitchen cabinets” (being kitchen cabinets the main products of Complainant’s business) it is hard for this Panel to imagine that the Respondent did not have in mind the Complainant business when he registered the disputed domain name. Thus, it is the view of this Panel that the disputed domain name was registered in bad faith.

At the time of filing the Complaint1, the Complainant stated that the disputed domain name contained a screen with several references to the Complainant’s trademark as it is evidenced from the screen printouts attached as Annex 6 of the Complaint. In addition, the Complainant stated that the disputed domain name contained pay-per-click advertising, and that the Respondent had created a Facebook page with links to the disputed domain name in order to divert traffic to the disputed domain name. The Respondent has not denied these assertions.

The Respondent’s actual knowledge of the Complainant and the Complainant’s trademark and its intention to trade on the Complainant’s brand is apparent from the Respondent’s deliberate use of the Complainant’s trademark in the disputed domain name.

Thus, it is clear to the Panel that the Respondent was fully aware of the Complainant and its AMERICAN WOODMARK trademark when it selected the disputed domain name. In fact, in his email dated August 22, 2012, the Respondent confirms his prior knowledge and intentional use of the Complainant’s trademark in the disputed domain name.

In the view of the Panel, the Respondent is clearly attempting to divert Internet traffic intended for the Complainant’s website to its own website for commercial gain by creating a likelihood of confusion as to the source or sponsorship of the Respondent’s site and products. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy.

The Panel therefore finds that the disputed domain name was registered in bad faith and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <americanwoodmarkkitchencabinets.org> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Dated: October 5, 2012


1 At the time of the Decision, there is no content at the website to which the disputed domain name resolves. The Panel’s access on October 4, 2012 showed the following content “Forbidden. You don’t have permission to access / on this server. Additionally, a 403 Forbidden error was encountered while trying to use an ErrorDocument to handle the request”.

 

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