Complainant is Broan-Nutone, LLC of Wisconsin, United States of America, represented by Reinhart Boerner Van Deuren s.c., United States of America.
Respondent is Ready Set Sales of Illinois, United States of America, represented by Adler & Franczyk, LLC, United States of America.
The disputed domain names <broanreplacementparts.com> and <nutonereplacementparts.com> (collectively, “the Domain Names”) are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2010. On June 7 and 8, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Names. On June 8, 2010, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2010. The Response was filed with the Center that day.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on July 13, 2010. 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.
Complainant, Broan-Nutone, LLC owns United States (“U.S.”) trademark registrations for the marks: NUTONE (U.S. Reg. Nos. 3599807, 1983445, 1127802, 0664998 and 0591087) and BROAN (U. S. Reg. Nos. 2131034, 1381125, 1370934, 1367494, 0932587, 0699352, 0694566) (collectively, “the Marks”), as well as BROAN-NUTONE (U.S. Reg. No. 2606616) and BEST BY BROAN (Reg. No. 2231561), for use in connection with a variety of home appliances and electronics. Complainant has used the registered marks exclusively since 1945. In addition to these trademark registrations, Complainant owns and operates, among others, the domain names and websites located at “www.broan-nutone.com”, which Complainant registered and has been using since March 19, 1999, “www.broan.com”, which Complainant obtained in 1996, and “www.nutone.com”, which Complainant obtained in 1995.
Broan-Nutone has invested a substantial amount of money and effort advertising and promoting its goods and services under the Marks. As a result, these trademarks are distinctive of Complainant's goods and Complainant has garnered consumer goodwill, recognition and reputation in these trademarks.
Respondent registered the Domain Names on May 27, 2009.
Complainant recently became aware that Respondent registered the Domain Names and is using them in connection with a business called Need A Part, which sells “Genuine OEM Nutone Replacement Parts” and Genuine OEM Broan Replacement Parts.” Respondent's websites also contain numerous infringing photos owned by Complainant showing Complainant's products, product schematics and other information.
Complainant's counsel has made multiple attempts to resolve this matter and has been in contact with Respondent's attorney by email, first class mail and telephone. Although Respondent's counsel has responded to several of those letters and emails, counsel is no longer responding and has not made any attempt to resolve this matter. Because Respondent has refused to comply with Complainant's demands and Respondent continues to use the Domain Names in violation of Complainant's trademark rights, Complainant filed this complaint.
Complainant owns rights in the BROAN and NUTONE marks. The dominant, non-descriptive portion of Respondent's Domain Names contain Complainant's trademarks BROAN and NUTONE. The remaining portion of the Domain Names contains generic or descriptive terms. Where a complainant has rights to a trademark, a domain name that incorporates the entire trademark will be held to be identical or confusingly similar to that mark and will be transferred to Complainant.
Before Respondent purchased the Domain Names, Respondent did not operate a business under the BROAN or NUTONE marks or any similar names. Respondent is not and has never been an authorized reseller of Complainant's products. Respondent registered the Domain Names primarily for the purpose of preventing Complainant from owning them and for the purpose of trading off and profiting from Complainant's rights in its marks.
Under certain circumstances a reseller may hold a legitimate interest in a domain name incorporating the manufacturer's mark. Respondent fails to meet the standards set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and Respondent's website is likely to cause consumer confusion and/or imply that Respondent is somehow authorized by Complainant. Respondent's website name “NEED A PART” is a generic name that does virtually nothing to identify Respondent as a separate entity not affiliated with Complainant. The name merely serves as a tag line or slogan rather than a company name. Although Complainant acknowledges that Respondent's website contains a disclaimer that purports to describe the relationship between Complainant and Respondent, the disclaimer is difficult for consumers to locate amid the images of Respondent's products and trademarks. The most dominant portion of Respondent's website is the text GENUINE OEM NUTONE REPLACEMENT PARTS and GENUINE OEM BROAN REPLACEMENT PARTS respectively. By clicking on these words, visitors are redirected to another page on Respondent's website that no longer displays any disclaimer, but rather, Complainant's trademarks and products images.
Use of the words GENUINE and OEM make the Respondent's website appear “official” in nature and negates any affect of the disclaimer. At the very least this text illustrates Respondent's use of the Marks to attract Internet users to its own site. Also, the Domain Names redirect customers to “www.needapart.com”, another website owned and operated by Respondent. Once redirected, the disclaimer located on each of the websites associated with the Domain Names is not visible.
Respondent is not an authorized reseller of Complainant's products, yet Respondent is using images and copyrighted materials (without permission) normally used only by authorized resellers and dealers. As a result, Respondent is seeking to hold itself out as an authorized reseller while unfairly competing with Complainant and its authorized resellers and dealers.
Respondent is not selling Complainant's products on the websites associated with the Domain Names. Each website redirects visitors to another of Respondent's websites. When one clicks on an image of Complainant's products, the visitor is redirected to Respondent's website located at “www.needapart.com” where visitors can view, browse and purchase Complainant's parts and products; however, the disclaimer is not on this website and there are parts of other manufacturers. Thus, the Domain Names are serving only as a means for Respondent to attract online traffic and redirect such traffic to Respondent's website located at “www.needapart.com”.
Respondent is not purchasing products for resale from Complainant as an authorized reseller or dealer. Rather, on information and belief, Respondent is purchasing Complainant's products from other dealers who are either intentionally violating their reseller/dealer agreements or who are unaware that Respondent intends to resell Complainant's products to consumers. Thus, Respondent is not engaged in bona fide sales of Complainant's products and parts.
Respondent's refusal to transfer the Domain Names unless Complaint granted a license indicates Respondent's bad faith registration and use of the Domain Names. Complainant sent Respondent a cease and desist letter wherein Complainant demanded that Respondent transfer the Domain Names to Respondent. Respondent's counsel replied by requesting that: “in exchange for rights to use certain videos belonging to Broan-Nutone”, Respondent would transfer the Domain Names to Complainant. Complainant rejected this offer and stated that Respondent must first transfer the Domain Names and then Complainant would consider making Respondent an authorized reseller under the same terms offered to other authorized resellers. Even though Respondent's attorney claims that his offer to trade the Domain Names for a copyright license was not intended to demonstrate Respondent's bad faith, the fact remains that such a license granted by Complainant would be of significant value well in excess of the cost Respondent spent to purchase the Domain Names; and when Complainant refused to accept Respondent's offer, Complainant refused to transfer the Domain Names and resolve this dispute.
Respondent argues that although Complainant owns certain registrations with respect to the physical goods described in those registrations, none of the cited registrations covers any domain name or any web-based retail store services. Respondent also claims Complainant was aware of Respondent's plans with respect to Need A Part and actively encouraged Respondent to include Broan-Nutone parts in the business.
Respondent alleges it copied images, schematics and other information at the direct request and with the explicit permission and knowledge of Complainant's employee, Mr. Hilding. Respondent claims that under UDRP decisions and United States Federal trademark law decisions, Respondent's use is permissible trademark fair use.
Respondent claims it does not offer its own products or competing products under any names or marks that are identical or confusingly similar to Complainant's marks. Respondent offers Complainant's products for sale, which products are known by the trademarks claiming to be infringed.
Respondent's use of the Domain Names creates no likelihood of confusion among consumers. Respondent is selling genuine, original equipment manufacturer (“OEM”) BROAN-NUTONE replacement parts. Respondent is not attempting to “pass-off” its products as BROAN-NUTONE products or to confuse customers that it is the purveyor of the replacement parts or the source of the products. Furthermore, the web site associated with the Domain Names prominently displays this disclaimer (e.g., at “www.broanreplacementparts.com”: “DISCLAIMER: “BROAN” is a registered trademark of Broan-NuTone, LLC. NeedAPart.com is an independent third-party reseller of GENUINE OEM Broan replacement parts and is not affiliated with Broan-NuTone, LLC.”). Before Respondent received any notice of this dispute, Respondent used or prepared to use the Domain Names in connection with a bona fide offering of goods bearing Complainant's marks. Respondent is marketing Complainant's products in connection with one of Complainant's authorized distributors that Complainant initially introduced Respondent to.
Respondent registered the Domain Names solely for the purpose of truthfully identifying the fact that it sells products identified by the trademarks.
The Domain Names were not registered to prevent Complainant from reflecting the mark in a corresponding domain name nor has Respondent engaged in a pattern of such conduct. Complainant registered and is using the domain names <broan.com>, <nutone.com> and <broan-nutone.com>. In contrast, Respondent registered and is using <nutonereplacementparts.com> and <broanreplacementparts.com> to sell OEM manufactured and branded replacement parts.
Complainant and Respondent are not competitors nor were the Domain Names registered by Respondent primarily to disrupt Complainant's business. Respondent is using the Domain Names to sell Complainant's branded products. Any revenue generated by Respondent's sales of the products directly benefits Complainant because ultimately, Complainant is selling more products. Furthermore, any goodwill associated with the trademarks and the products inures exclusively to the benefit of Complainant. Customers are seeking Complainant's branded products and customers are receiving genuine OEM BROAN-NUTONE products.
The Domain Names were not registered by Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent's 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 the Respondent's web site or location or of a product or service on the Respondent's web site or location. Respondent promotes the sale of genuine OEM BROAN-NUTONE products through a relationship with an authorized distributer and displays a disclaimer.
Respondent disputes the allegation that Respondent refused to transfer the Domain Names unless Complainant offered to license certain Complainant-owned materials to Respondent. As stated in the Complaint, the parties exchanged correspondence regarding the right of Respondent to use the Domain Names. At all times, Respondent proceeded under the good faith belief that the use of the Domain Names is permissible in light of United States and international trademark law decisions governing trademark fair use. Any discussions between the parties concern potential terms of a proposed transfer of the Domain Names were conducted in good faith and purely in the parties' mutual interest of avoiding litigation. The relevant language can be found in the March 29, 2010 letter form Respondent's counsel: “To be perfectly clear, this is not an attempt to trade/sell these registrations to BROAN-NUTONE in violation of the Anti-cybersquatting Consumer Protection Act. (Emphasis in original). The domain names at issue were not registered in bad faith nor were they registered with the intent to sell/transfer to BROAN-NUTONE.”
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should 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 interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
On July 5, 2010, Complainant filed a Supplemental Filing requesting that the Panel consider additional information and documents that it claims: (1) responds to arguments and allegations made by Respondent that Complainant deems are inaccurate; and (2) are relevant in light of Respondent's Response.
For the sake of procedural efficiency, unsolicited supplemental filings will generally not be considered in UDRP proceedings, except for exceptional circumstances, such as the existence of new, relevant facts or arguments that were not known until after the submission of the original Complaint, or that the Complainant could not reasonably have anticipated (see, e.g., Dreamgirls, Inc. v. Dreamgirls Entertainment, WIPO Case No. D2006-0609; Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001. The Panel finds that Complainant's Supplemental Filing fails to meet this standard. It constitutes more or less a “last word.” Complainant does not explain, and no reasons are apparent, why the facts and arguments made in the Supplemental Filing were not included in the original Complaint. Complainant would likely have known the facts and the arguments when the original Complaint was filed and they do not rebut any factual argument made by Respondent that could not have been anticipated, especially considering the correspondence exchanged, and the discussions had, by the parties leading up to this proceeding.
Accordingly, the Panel has not considered the Supplemental Filing in rendering its Decision.
The Panel finds that Complainant has rights in the Marks based upon Complainant's longstanding use of the Marks and the U.S. Trademark registrations for them. The Panel further finds that the Domain Names are confusingly similar to Complainant's BROAN and NUTONE marks for purposes of the Policy. Respondent's Domain Names incorporate in their entirety the BROAN and NUTONE marks, which are registered with the U.S. Patent and Trademark Office and, thus, are entitled to a presumption of validity. EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. As numerous prior UDRP panels have held, the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks, such as here the nondistinctive, descriptive phrase “replacement parts.” E.g., EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (“parts” added to mark EAUTO in <eautoparts.com>); Caterpillar Inc. v. Off Road Equipment Parts, NAF Claim 095497 (“parts” added to mark CAT in <catparts.com>); Komatsu Ltd. and Komatsu America International Company v. RKWeb Ltd., WIPO Case No. D2000-0995 (“-parts” added to mark KOMATSU in <komatsu-parts.com>).
The Panel rejects Respondent's argument that “although Complainant owns certain registrations with respect to the physical goods described in those registrations, none of the cited registrations covers any domain name or any web-based retail store services.” That argument relates more to a trademark infringement analysis and is irrelevant under the first factor where the issue relates to the similarity between the Domain Names and Complainant's NUTONE and BROAN marks.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
Complainant must prove Respondent has no rights to or legitimate interests in the Domain Names. Complainant asserts that Respondent is not now, and has never been, an authorized reseller of Complainant's products, which status it appears would have given Respondent certain rights to use the Marks, although not in a domain name. These allegations are sufficient to constitute a prima facie showing by Complainant that Respondent lacks rights or legitimate interests in the Domain Names. Once a complainant makes a prima facie showing, the burden of production shifts to respondent to show by concrete evidence that is has rights or legitimate interests in the domain name(s). The burden of proof, however, remains with Complainant. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
Pursuant to paragraph 4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent's] rights or legitimate interests to the domain name(s) for purposes of paragraph 4(a)(ii):
(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.
Complainant alleges, and Respondent does not dispute, that Respondent has not been “commonly known” by BROAN or NUTONE. The only evidence of record supports the conclusion that Respondent has been “commonly known” or doing business as “Ready Set Sales,” “Needapart” and “www.needapart.com.” Thus, these facts do not favor Respondent.
The parties dispute whether Respondent is using the Domain Names in connection with a bona fide offering of goods or services under the Policy. Complainant acknowledges that under certain circumstances a reseller may hold a legitimate interest in a domain name incorporating the manufacturer's mark, citing to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. In that case, the panel required an authorized reseller to satisfy certain minimum factors to demonstrate the authorized reseller's bona fide offering of goods or services pursuant to Paragraph 4(c)(i) of the Policy. Those factors are:
a. Respondent must actually be offering the goods or services at issue;
b. Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
c. The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; and
d. Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Complainant alleges that Respondent fails to meet these standards and that Respondent's website is likely to cause consumer confusion and/or imply that Complainant is somehow authorizing Respondent. For example, Complainant argues that using the generic phrase “Need A Part” on the two websites associated with the Domain Names does not distinguish Respondent from Complainant. Complainant acknowledges that Respondent's websites contain a disclaimer that purports to describe the relationship between Complainant and Respondent, but Complainant argues that the disclaimer is difficult for consumers to locate amid images and large text such as “Genuine OEM NuTone Replacement Parts” and “genuine OEM Broan replacement parts.” Complainant also points out that use of the words “Genuine” and “OEM” make Respondent's website appear “official” in nature and negates any affect of the disclaimer. Furthermore, by clicking on these words, visitors are redirected to a website associated with the domain name <needapart.com> where there is no disclaimer, but rather, Complainant's trademarks and products images.
Complainant also argues that Respondent is not actually selling Complainant's products on the websites associated with the Domain Names. So, if a visitor clicks on an image of Complainant's products or parts on those websites the visitor is redirected to Respondent's website located at “www.needapart.com” where visitors can not only actually purchase Complainant's parts and products, but also the parts and products of other manufacturers.
Respondent does not contest Complainant's allegation that it is not an authorized reseller, nor has Respondent made of record any reseller agreement or any other license or permission from Complainant to use the Marks for any purpose including in the Domain Names. Respondent asserts that its use of the Domain Names creates no likelihood of confusion among consumers because it is selling genuine, original equipment manufacturer (“OEM”) BROAN-NUTONE replacement parts, it is not attempting to “pass-off” its products as BROAN-NUTONE products, and it is not claiming to be the purveyor of the replacement parts or the source of the products. In this regard, Respondent points to what it describes as a “prominent” disclaimer on the websites associated with the Domain Names. Respondent also claims that its activities are “bona fide” because Respondent is marketing Complainant's products in connection with one of Complainant's authorized distributors, to whom it was introduced by Complainant.
For the reasons set forth below, the Panel concludes Respondent has failed to demonstrate it has rights or legitimate interests in the Domain Names.
Although the Panel notes that the evidence of record indicates some dealings between Complainant and Respondent, there is no evidence demonstrating that these dealings conferred any rights on Respondent with regard to the Marks. Likewise, there is no evidence Complainant licensed or otherwise permitted Respondent to use the Marks or to apply for any domain name incorporating the Marks. In correspondence between counsel for the parties Complainant welcomed Respondent to contact a named representative to discuss becoming “an authorized Broan-NuTone reseller and obtain a license to use Broan-NuTone media and intellectual property.” And according to evidence made of record, it is Complainant's policy that even “authorized online resellers are not permitted to use the Broan-NuTone trademark in a domain name.” At the most Complainant acknowledged that Respondent “may use the Broan-NuTone name on its website solely in connection with the lawful sale of Broan-NuTone products and parts, provided that such use falls within the parameters of the nominative fair use doctrine; and provided that such use is not likely to mislead or confuse consumers regarding the relationship between your client and Broan-NuTone.”
Without rights to the Marks, and after having developed a website with a non-infringing domain name (<needapart.com>), Respondent registered the Domain Names (incorporating Complainant's well-known Marks) and is using them in a manner not only to sell Complainant's parts and products but also the parts and products of approximately 18 other manufacturers. Use that intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com”, WIPO Case No. D2000-0847. Accordingly the Panel concludes that Respondent's use of the Domain Names is not a “bona fide” one under the Policy.
Complainant has raised Oki Data Americas, Inc. v. ASD, Inc., supra, to support its position. That case involved whether the use of a manufacturer's trademark as a domain name by an authorized dealer should be regarded as a bona fide offering of goods/services within the meaning of paragraph 4(c)(iii) of the Policy. Some UDRP panels have relied on the Oki Data case when the reseller or dealer is not authorized (see, e.g., AREVA v. Industrial Tests, Inc., WIPO Case No. D2009-1686; Magma Products Inc. v. Herb Halling, WIPO Case No. D2007-0995) other panels have not (see, e.g., Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292). Insofar as Complainant has raised Oki Data, Respondent has responded to those arguments, and other panels have applied it even where the reseller is not a contractually authorized one, the Panel will address the merits under that case.
Respondent has not satisfied at least two of the minimum factors under the Oki Data case to demonstrate its bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. First, Respondent must use the site (associated with the domain names) to sell only the trademarked goods. Here that is not the case. When a visitor types in either of the Domain Names, they arrive at one of two landing pages that are akin to the first page of a website. Those pages are summary promotional pages that mention Complainant's parts and products (i.e., bathroom fans, range hoods). If a visitor to either of those landing pages wants additional information about, or to purchase, Complainant's products or parts, they need only click on various words, links, photos and the like on the landing pages to be transported seamlessly to Respondent's <needapart.com> website where Respondent provides detailed information about Complainant's parts and products as well as information about at least 18 other manufacturers' products. Respondent's <needapart.com> website also permits visitors to purchase the parts and products advertised, the landing pages do not. So for all intents and purposes, Respondent is not using the pages associated with the Domain Names only to sell Complainant's products and replacement parts
Respondent's landing pages bear the following disclaimer: “DISCLAIMER: “BROAN” is a registered trademark of Broan-NuTone, LLC. NeedAPart.com is an independent third party reseller of GENUINE OEM Broan replacement parts and is not affiliated with Broan-NuTone, LLC.” The print size of the disclaimer on one page is about 6 pt and on the other page it is about 8 pt. On both pages the print size is noticeably smaller than that of the surrounding text and the disclaimer is absent from Respondent's <needapart.com> website where visitors can shop and purchase goods. Thus the effectiveness of the disclaimer based on its size and placement, alone, is questionable. In contrast with the small disclaimer, Respondent's prominent use of the sentence “We Sell Genuine OEM Broan [or NuTone] Replacement Parts” on the landing pages without any other distinguishing trademark or trade name other than the descriptive phrase “NeedAPart” would lead visitors to believe that they have arrived at an authorized reseller or dealer of Complainant. Thus, the Panel finds that Respondent's disclaimer alone as well as in the context of the landing page fails to serve an effective purpose as required by Oki Data. Even if the Panel were to consider the text of the disclaimers effective in disabusing visitors of any confusion once they arrive at Respondent's site, they clearly do not offset the obvious risk of “initial interest confusion.” It is highly likely that many of those encountering the Domain Names through a search engine will believe that the landing pages belong either to Complainant or a licensee or authorized distributor.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
Respondent was well aware of Complainant and its rights in the Marks when it registered the Domain Names. Setting aside the U.S. trademark registrations for the Domain Names and Complainant's long-standing use of the Marks, Respondent chose to include Complainant's parts and products on its website before registering the Domain Names. Thus the Panel is satisfied that Respondent registered the Marks in bad faith.
Also, it follows from what has been said regarding Respondent's lack of rights or legitimate interests in the Marks that Respondent is using the Domain Names intentionally to attempt to attract, for commercial gain, visitors to its web site by creating a likelihood of confusion with Complainant's Marks as to the source, sponsorship, affiliation or endorsement of its web site. Pursuant to the Policy, paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii). Furthermore, insofar as before registering the Domain Names Respondent had already established a website using a non-infringing domain name (<needapart.com>), Respondent's use of the Domain Names to promote and sell the products of other manufacturers indicates an attempt to divert Internet users looking for Complainant to Respondent's website for commercial gain.
Lastly, against Respondent's counsel's protestations, the Panel concludes that Respondent's refusal to transfer the Domain Names unless Complainant granted a license “for rights to use certain videos belonging to the Broan-Nutone” indicates Respondent's bad faith use of the Domain Names particularly in view of previous cease and desist letters.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 names, <broanreplacementparts.com> and <nutonereplacementparts.com> be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Dated: July 27, 2010