WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Woodmark Corporation v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd
Case No. D2017-1912
1. The Parties
Complainant is American Woodmark Corporation of Winchester, Virginia, United States of America, represented by Gavin Law Offices, PLC, United States of America.
Respondent is Above.com Domain Privacy of Beaumaris, Australia / Host Master, Transure Enterprise Ltd, of Wilmington, Delaware, United States of America.
2. The Domain Name and Registrar
The disputed domain name <shenadoahcabinetry.com> (the "Disputed Domain Name") is registered with Above.com, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 29, 2017. On October 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 3, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 6, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 11, 2017.
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 Respondent of the Complaint, and the proceedings commenced on October 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 3, 2017.
The Center appointed R. Eric Gaum as the sole panelist in this matter on November 20, 2017. 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
Complainant owns numerous federally registered trademarks that wholly incorporate the mark SHENANDOAH, including, without limitation, the following registrations with the United States Patent and Trademark Office ("USPTO"):
SHENANDOAH CABINETRY – Registration No. 2,417,860, registered January 2, 2001;
SHENANDOAH – Registration No. 4,777,358, registered July 21, 2015;
SHENANDOAH CABINETRY – Registration No. 4,894,565, registered February 2, 2016;
SHENANDOAH VALUE SERIES – Registration No. 4,881,761, registered January 5, 2016;
SHENANDOAH VALUE SERIES – Registration No. 4,964,569, registered May 24, 2016; and
SHENANDOAH LIFETIME LIMITED WARRANTY – Registration No. 4,903,969, registered February 23, 2016.
In connection with its cabinetry products, Complainant has established a website located at "www.shenandoahcabinetry.com" and other domain names, which Complainant uses to promote and sell its cabinetry products.
This dispute concerns the Disputed Domain Name <shenadoahcabinetry.com> registered on February 19, 2010, which resolves, via redirection, to a website that advertises competitors of Complainant.
5. Parties' Contentions
Complainant manufactures and distributes kitchen and bathroom cabinets for use in new homes and remodels. Complainant markets approximately 500 lines of cabinetry sold under five brand names, including SHENANDOAH CABINETRY. The company's nationwide sales are made through home improvement retailers, builders, and independent distributors. As of 2016, Complainant has more than 5,500 employees, nine manufacturing facilities, and seven service centers across the United States of America. The SHENANDOAH CABINETRY brand is sold exclusively through Lowe's. Complainant has invested over USD 100 million in the last three years alone on advertising its brand name marks, to ensure these marks are automatically and consistently associated with customer service and excellence in providing kitchen and bathroom cabinetry.
Complainant federally registered its SHENANDOAH CABINETRY mark, Registration No. 2,417,860, on January 2, 2001 in goods and services class 20 for a line of wooden furniture, including kitchen cabinets, bathroom vanities, bookcases, entertainment centers, and hutches, sold exclusively through home centers. Complainant further registered its marks SHENANDOAH, Registration No 4,777,358, and SHENANDOAH CABINETRY, Registration No. 4,894,565, on July 21, 2015 and February 2, 2016 respectively, both in connection with kitchen cabinets and bathroom vanities. Furthermore, SHENANDOAH is an arbitrary term that has no meaning in relationship to the cabinetry industry and thus enjoys the highest level of protection. As made clear through the various registrations, Complainant focuses on kitchen and bathroom cabinetry.
Complainant has also registered dozens of domain names that incorporate its SHENANDOAH CABINETRY and SHENANDOAH marks, including <shenandoahcabinetry.com>, <shenandoahcabinetry.net>, <shenandoahcabinetry.org>, <shenandoahcabinetry.info>, <shenandoahcabinetry.biz>, <shenandoahcabinetry.us>, <shenandoahvaluecabinetry.com>, and <shenandoahcabinets.net>.
Complainant's website "www.shenandoahcabinetry.com" is promoted through search engine optimization techniques and is the top result when searching for "Shenandoah Cabinetry". Additionally, Alexa.com, a global analytics website, has tracked that the top five keyword searches that send traffic to Complainant's website at "www.shendandoahcabinetry.com" include the terms "shenandoah cabinets" or "shenandoah cabinetry".
The Disputed Domain Name is confusingly similar to Complainant's SHENANDOAH CABINETRY and SHENANDOAH marks. The Disputed Domain Name incorporates the entirety of the SHENANDOAH CABINETRY mark, with only one minor distinction — the omission of the second "n" in "Shenandoah". Thus, the only difference between the Disputed Domain Name <shenadoahcabinetry.com> and the Complainant's Complainant's marks is the purposeful misspelling of SHENANDOAH CABINETRY by deleting the letter "n."
Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent is not in any way associated with Complainant or its SHENANDOAH CABINETRY brand, and to Complainant's knowledge, has not been known by or linked to the name "Shenandoah Cabinetry". Respondent has not licensed, nor has Respondent sought or received authorization from Complainant to use the Disputed Domain Name, either express or implied, or any variations thereof, either at the time Respondent registered and began using the Disputed Domain Name or at any time thereafter. Respondent is not an authorized distributor or reseller of Complainant's cabinetry. No other connection exists between Complainant and Respondent.
The Disputed Domain Name was registered on February 19, 2010, well after Complainant acquired rights in Complainant's marks and well after Complainant registered and operated <shenandoahcabinetry.com> and its associated domain names.
Respondent has not made any bona fide offering of goods or services. Instead, the Disputed Domain Name, through an advertising service, diverts Internet users to various landing pages that link to and/or advertise competitors of Complainant. Upon information and belief, each time the Disputed Domain Name is entered into a browser, it redirects to one of at least five landing pages, three of which are cabinetry-related webpages. The first is a Home Depot search results page showing results for "cabinets" that include products from competitors of Complainant. The second is a Yahoo search results page for "Shenandoah cabinet refacing" that includes links to competitors, including both cabinetry sellers and cabinet refacing businesses. The third is The Home Depot's homepage, a website that offers competitive cabinetry products. The fourth is a webpage for "Click Validator," which generally inquires about clicks on web ads. The fifth is a webpage recommending that users "Disable Search Tracking."
Moreover, in a visit to the Disputed Domain Name on an iPhone, the Disputed Domain Name redirects to a parked page with links relating to bathroom and kitchen cabinetry that click through to direct competitors of Complainant. In a visit to the Disputed Domain Name on an Android device, the Disputed Domain Name redirects to a Yahoo search results page showing results for "cabinets" that include links to direct competitors of Complainant as well as a parked page with links relating to bathroom and kitchen cabinetry that click through to direct competitors of Complainant. The majority of these landing pages point consumers to direct competitors of Complainant, unjustly capitalizing on the value of the SHENANDOAH CABINETRY mark. The redirection of the landing page at the Disputed Domain Name appears to be completed through an advertising service called Ad Marketplace and/or its corresponding search network AmpXchange, as captured in screenshots of the transition from "www.shenadoahcabinetry.com" to a landing page. Respondent does not disclose its relationship, or rather lack thereof, with Complainant on any of the landing pages. Furthermore, the term "Shenandoah" has no generic or descriptive meaning related to cabinetry, but is rather a distinctive mark established by Complainant in connection with cabinetry.
First, Respondent's bad faith is clearly evidenced by Respondent's attempt to target consumers of Complainant's products and redirect consumers typing in the Disputed Domain Name to landing pages with competing advertisements and products through an advertising service. Such advertisements intentionally exploit consumers and disrupt Complainant's business.
Moreover, in this clear case of "typosquatting," the slight misspelling of Complainant's mark is undoubtedly done intentionally in order to divert internet traffic through the advertising service to the landing pages to which the Disputed Domain Name redirects.
The SHENANDOAH CABINETRY mark is virtually identical to the Disputed Domain Name save for the intentional misspelling. That intentional misspelling attempts to draw unsuspecting consumers to the Disputed Domain Name when they mistype the Disputed Domain Name for Complainant's website by accidentally leaving out a letter. Furthermore, the intentional misspelling demonstrates that Respondent is attempting to capitalize on the reputation and brand recognition that Complainant's marks have developed in the cabinetry industry. The Disputed Domain Name redirects to a number of landing pages that advertise products or links that primarily direct consumers to Complainant's competitors. Thus, Respondent has targeted Complainant for Respondent's pecuniary benefit by having the Disputed Domain Name redirect to landing pages with products and advertising that directly compete with Complainant. Respondent has taken advantage of the SHENANDOAH CABINETRY mark in order to confuse Complainant's customers and deplete Complainant's customer base. The combination of targeting, intentional misspelling, and redirecting to landing pages that contain products and advertisements for Complainant's competitors shows Respondent's bad faith.
Second, Respondent has used a privacy service to shield its identity from the WhoIs database. Respondent's use of a privacy shield is indicative of Respondent's bad faith intent in registering and using the Disputed Domain Name.
Respondent is no stranger to UDRP proceedings. Respondent was the named respondent in all of the following domain name disputes, many of which involved typosquatting similar to the case at hand, and all of which resulted in transfer of the disputed domain name: (a) ZB, N.A dba Zions First National Bank v. Above.com domain privacy / Host Master, Transure Enterprise Ltd, WIPO Case No. D2017-0804 (ordering transfer of the domain name <zionsbnk.com>); (b) A Place for Mom, Inc. v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd, WIPO Case No. D2016-2265 (ordering transfer of the domain name <wwwaplaceformom.com>); (c) ZB, N.A. dba Amegy Bank v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd, WIPO Case No. D2017-1268 (ordering transfer of the domain name <amgeybank.com>); (d) Andrey Ternovskiy dba Chatroulette v. Host Master, Transure Enterprise Ltd / Above.com Domain Privacy, WIPO Case No. D2017-1282 (ordering transfer of the domain name <chatroulettedeutschland.net>); (e) TP-Link International Limited v. Host Master, Transure Enterprise Ltd., WIPO Case No. D2016-1922 (ordering transfer of the domain name <tplinklogin.net>); (f) CBN Lojistik Depolama Ve Dagitim Anonim Sirketi v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd, WIPO Case No. D2016-1227 (ordering transfer of the domain name <40ayak.net>); and others. Respondent's significant history of prior UDRP proceedings evidences that Respondent is an unreformed and unrepentant serial cybersquatter who will continue to trade off of others' trademark rights for Respondent's own pecuniary gain.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
The Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules, establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center forwarded notification of the Complaint to Respondent via email and the written notice of the proceeding via courier in accordance with the contact details found in the appropriate WhoIs database confirmed by the Registrar. The Center also forwarded notification of default to Respondent via email.
Based on the methods employed to provide Respondent with notice of the Complaint and default the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of this proceeding. The Panel also finds that the failure of Respondent to furnish a reply is not due to any omission by the Center.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) the respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent's domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present. As Respondent has failed to submit a response to the Complaint, the Panel may accept as true all of the reasonable allegations of the Complaint (see, Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Based upon the registered trademarks for SHENANDOAH CABINETRY, SHENANDOAH, and related marks, and the continuous use of the marks, Complainant clearly has rights in the marks. The Panel agrees with Complainant that the Disputed Domain Name <shenadoahcabinetry.com> is comprised entirely of Complainant's registered SHENANDOAH CABINETRY mark with the only difference being the absence of the letter "n".
Complainant asserts, and the Panel agrees, that the Disputed Domain Name <shenadoahcabinetry.com> is confusingly similar to the trademark SHENANDOAH CABINETRY. "A domain name which contains a common or obvious misspelling of a trademark normally will be found confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name." See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.9. "Typosquatting," the practice of misspelling an element of the mark, has been consistently regarded in previous UDRP decisions as creating domain names confusingly similar to the relevant mark. ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627 (finding that "typosquatting" creates domain names confusingly similar to the relevant mark).
The Panel finds that the Disputed Domain Name <shenadoahcabinetry.com> is confusingly similar to the trademark SHENANDOAH CABINETRY owned by Complainant pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the respondent's rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(i) before any notice to you [respondent] 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 has not licensed or authorized Respondent to use its trademarks in any manner and there has never been any relationship between them.
There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the Disputed Domain Name <shenadoahcabinetry.com>.
The Panel finds that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name <shenadoahcabinetry.com> pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists several circumstances, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
(i) circumstances indicating that you [respondent] 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 that 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 web site or other online 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.
Respondent is clearly attempting to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Long after Complainant established its rights in its trademarks, Respondent acquired and began commercially using the Disputed Domain Name to divert Internet traffic intended for Complainant. Respondent was certainly aware of Complainant's rights in its SHENANDOAH CABINETRY mark when Respondent acquired the Disputed Domain Name, which incorporates the mark. At a minimum, Respondent had constructive knowledge of Complainant's marks due to its various trademark registrations.
The Disputed Domain Name has been used to deceptively attract Internet users to Respondent's websites, which resolve, via redirection, to websites of Complainant's competitors. Respondent is clearly using the Disputed Domain Name to intentionally attract Internet users and consumers looking for Complainant, by creating a likelihood of confusion with Complainant, all for commercial gain.
The Panel finds that Respondent's registration and use of the Disputed Domain Name, with actual or constructive knowledge of Complainant's trademark rights, establishes Respondent's registration and use of the Disputed Domain Name in bad faith pursuant to 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 Disputed Domain Name, <shenadoahcabinetry.com>, be transferred to Complainant.
R. Eric Gaum
Date: December 4, 2017