WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Western Woods Distributing, Inc. v. Domains By Proxy, LLC, DomainsByProxy.com / Mike Mallon
Case No. D2015-1400
1. The Parties
The Complainant is Western Woods Distributing, Inc. of St. George, Utah, United States of America, represented by Snow Jensen & Reece, United States of America.
The Respondent is Domains By Proxy, LLC / DomainsByProxy.com of Scottsdale, Arizona, United States of America (collectively “Domains by Proxy”); Mike Mallon of Herndon, Virginia, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <westernwoods.com> 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 7, 2015. On August 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 17, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 22, 2015.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2015. The due date for Response was extended until September 27, 2015. No Response was received by that date and accordingly the Center notified the Parties of the commencement of the Panel appointment process. The Respondent submitted a late-filed Response on September 29, 2015.
The Center appointed Richard G. Lyon as the sole panelist in this matter on October 7, 2015. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 Panel finds the following facts based upon the evidence in the record. Some of the evidence is discussed in Sections 5 and 6 below.
The Complainant is a wholesale and retail seller of jewelry and minerals and stones used in jewelry. Since 1984 the Complainant has operated under names that included the words “Western Woods”. It was incorporated under its present name in 1990. It holds no registered trademarks that include “Western Woods”.
The Respondent Mike Mallon is an owner and general manager of Silver Streak Industries, LLC, a competitor of the Complainant. He registered the disputed domain name using the Respondent Domains by Proxy, a privacy service, at some point between 2000 (its creation date according to the Registrar’s WhoIs report) and 2007. Beginning about 2010 until recently an Internet user who entered the disputed domain name into his browser was automatically redirected to Silver Streak’s principal website, at which that company’s jewelry was offered for sale. At some point in 2014 or 2015, following receipt of a cease-and-desist letter from the Complainant’s counsel, the content at the disputed domain name changed to a page containing the following:
WESTERN WOODS IS YOUR SOURCE
FOR WOODEN COUNTERTOP, POV, AND FLOOR PRODUCT DISPLAYS
WE ARE CURRENTLY UNDER GOING CONSTRUCTION
NEW SHOPPING CART COMING SOON…
PLEASE CHECK BACK WITH US FREQUENTLY.
5. Parties’ Contentions
A. Complainant. The Complainant contends as follows:
1. The Complainant holds common law trademark rights in WESTERN WOODS by reason of its thirty years’ continuous use of the phrase to ply its gem and jewelry business. The phrase is arbitrary when used for jewelry and in any event the Complainant has developed considerable goodwill in it within its industry. The disputed domain name differs from the mark only by addition of the generic Top-Level Domain (gTLD) “.com”.
2. The Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has never licensed the Respondent, its competitor, to use its mark, and the Respondent has never been known by that name. Automatic redirection to a competitor’s site is not legitimate or bona fide under Policy precedent.
3. The Respondent’s longtime redirection to its own commercial site evidences bad faith use of the disputed domain name. That this was the only use to which the Respondent put the disputed domain name prior to notice of the present dispute is evidence that he registered it solely to deceive Internet users by implying affiliation with or permission of the Complainant. Such conduct falls within the examples of evidence of bad faith set out in clauses (iii) and (iv) of paragraph 4(b) of the Policy.1
B. Respondent. The late-filed Response is in the form of an email message addressed to the Center’s case manager. In this email Respondent Mike Mallon contends as follows:
Mr. Mallon has conducted a small woodworking business since 1988. Starting about 2008 “I decided to start a Made in America Company that specialized in displays for retail stores made in the American Southwest.
The website *westernwoods.com* was not being used by anyone, I thought what a great name for a woodshop that made western themed displays in the western United States. The downturn in business made this business venture slow and difficult to finance. In 2014 business started to improve and my ability to finance this is a little more feasible. I have never used this website to damage the name or business relationships the [Complainant] has.”
The Respondent asserts the statute of limitations as a defense, as the Complainant has not taken any action against the Respondent for seven years. Many other companies use “Western Woods” in their name. “I have a financial investment and allot [sic] of time spent on the development of this site, waiting 7 years to file this action is wrong, there has to be a time limit.”
6. Discussion and Findings
A. Identity of the Respondent.
In the original Complaint the Complainant named Domains by Proxy and Silver Streak as the Respondents. Following the Center’s notice that the Registrar identified Mike Mallon as the registrant of the disputed domain name the Complainant amended the Complaint to add Mr. Mallon as a third named Respondent on the basis that “As it is Silver Streak . . . that was reaping the benefit of the domain name ‘westernwoods.com’, it is believed that registrant Mike Mallon is using the domain name on behalf of Silver Streak.” (Amended Complaint, paragraph 7)
Paragraph 1 of the Rules provides that “the holder of a domain-name registration against which a complaint is initiated” shall be the Respondent. Following widespread use of privacy service registrations, it has become common and accepted practice “where a disclosure of an ‘underlying registrant’ occurs, . . . a complainant may choose to either add a disclosed underlying registrant as a co-respondent to the complaint, or replace the originally named privacy or proxy service with the disclosed ‘underlying registrant’, or (as rarely happens) retain the privacy or proxy service as the sole named respondent; also, in any case, the complainant may choose to amend or supplement its substantive pleadings in light of any such disclosure.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9. That practice authorizes the Complainant’s addition of Mr. Mallon as a Respondent while retaining the privacy service.
As to Silver Streak, certainly the Panel may take account of a principal-agent relationship in addressing the substantive requirements of paragraph 4(a) of the Policy, as this Panel does in this case. However, as to the naming of the appropriate Respondent in this matter, this Panel will proceed on the basis that the Complaint is against Domains by Proxy and Mr. Mallon and not Silver Streak.
B. Late-Filed Response.
After requesting and receiving an extension of time to submit a Response, the Respondent nonetheless missed the extended deadline. The Respondent concedes that its own negligence was to blame. The Panel has discretion to allow the Response, and chooses to consider it to “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.” Rules, paragraph 12(b).
Having addressed these two preliminary procedural issues the Panel turns to the merits. Paragraph 4(a) of the Policy requires the Complainant to establish by a preponderance of the evidence each of the following:
(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 to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
The Respondent does not contest either the Complainant’s claim of common law trademark rights in WESTERN WOODS or that the disputed domain name is confusingly similar to that mark. In fact the Complainant has established both these matters with evidence of its use of the phrase for many years – a sworn statement of a knowledgeable officer attesting to sales figures and samples of advertising. UDRP Panels normally ignore the gTLD in assessing identity or confusing similarity, so identity is established. The Complaint succeeds on this Policy element.
D. Rights or Legitimate Interests.
Paragraph 4(a)(ii) requires the Complainant to prove a negative. This customarily is done by its making a prima facie case of lack of rights, which then places the burden of production upon the Respondent to come forward with proof of a right or legitimate interest. The burden of proof remains with the Complainant. WIPO Overview 2.0, paragraph 2.1.
The Complainant here makes its prima facie case by demonstrating with competent evidence that (i) it has never authorized the Respondent to use its mark, (ii) the Respondent has not been commonly known by the phrase “Western Woods”, and (iii) that all use of the disputed domain name prior to the commencement of this dispute was automatic redirection to Silver Streak’s website. Proof of this last item consists of its officer’s sworn statement (including citation of instances of customer complaints about the redirection), and screen shots of the redirection. The Panel verified this last item by reference to the Wayback Machine at “www.archive.org”.
The Respondent counters that he registered the disputed domain name for a woodworking business. That business might furnish a legitimate interest, see Policy paragraph 4(c)(i), if there were any evidence to support it. The Respondent’s evidence consists only of photographs of some of what he claims to be his current products;2 none bears any date. There is no indication that this business existed or that the Respondent had made demonstrable preparations to develop it “before any notice to [him] of the dispute,” as required by the Policy safe harbor. There is only the Respondent’s unsworn statement to this effect.3 That does not overcome the Complainant’s proof, particularly since the claimed woodworking use is contradicted by hard and unchallenged evidence. The demonstrated fact remains that all pre-dispute use was diversion to Silver Streak’s website.
The Respondent makes no reference to use of the site for diversion; an allegation that the Complainant’s proof and the Panel’s simple investigation demonstrate commenced shortly after registration and continued until the Complainant sent its cease-and-desist letter. The Respondent likewise does not challenge the Complainant’s proof that he is an officer of Silver Streak, to whose site Internet traffic was diverted. The Complainant’s allegation to this effect is corroborated by a public record indicating that status. These omissions are eloquent and telling. While the Policy and Rules do not require the Respondent to prove anything, once faced with proof (as opposed to mere allegations) of misconduct, the Respondent must come forward with contrary evidence (as opposed to mere denials or statements) in order to tip the balance of evidence in his favor. The Respondent has not done so in this case, and the Complaint succeeds under this Policy element.
E. Registered and Used in Bad Faith.
Continuous use of the disputed domain name to redirect Internet traffic to an unrelated site – one of a competitor selling the competitor’s goods – does for the reasons advanced by the Complainant constitute use in bad faith. An officer of a direct competitor will have difficulty denying knowledge of the mark owner’s name and mark, and in the Response the Respondent in fact states that he had such knowledge. Redirection to Silver Streak’s website commenced soon enough after registration (according to the Respondent’s chronology), near enough to infer that the Respondent registered the disputed domain name primarily for this purpose. The Complainant has proven that the Respondent registered and used the disputed domain name in bad faith.
F. Delay in Commencing this Proceeding. It is now a consensus view among UDRP panels that the passage of time, standing alone, does not furnish a defense to a Policy proceeding. WIPO Overview 2.0, paragraph 4.10; see also Opera National de Paris v. Vertical Axis Inc., WIPO Case No. D2013-0874, citing Alimak Hek, Inc. v. Richard Wheat, WIPO Case No. D2011-1344. The Respondent’s spending substantial time and money expended over the past seven or so years, if proven, might furnish a defense under Policy paragraph 4(c)(i). See A.T. Ferrell Company, Inc. v. David Ibach Jr. / Ferrell-Ross Roll Manufacturing, Inc., WIPO Case No. D2015-0156 (“The defenses in paragraphs 4(c)(i) and 4(c)(ii) exist to prevent forfeiture of a domain name identified with its owner in connection with legitimate business operations, to bar a transfer of a business web address after its owner has made substantial investments in developing the business”.) But this has not been proven. As noted in part E the Respondent offers no evidence of any pre-dispute use and no evidence of any investment in the disputed domain name or its related website.
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 <westernwoods.com> be transferred to the Complainant.
Richard G. Lyon
Date: October 15, 2015
1 Clauses (iii) and (iv) identify the following as evidence of bad faith:
(iii) you [registrant] 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 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 your web site or location or of a product or service on your web site or location.
2 The photographs are of wooden display boxes filled with jewelry, indicative equally of products competitive to those sold by the Complainant as to woodworking.
3 The Response does not include the certification required by paragraph 5(b)(viii) of the Rules that “Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate.”