The Complainant is Cantera Doors & More, Inc., Austin, Texas, United States of America, represented by Graves, Dougherty, Hearon & Moody, Austin, Texas, United States of America.
The Respondent is Hubbard Iron Doors, Montebello, California, United States
of America, represented by Ronal Hubbard, of Hubbard Iron Doors.
2. The Domain Name and Registrar
The disputed domain name, <canteradoor.com> is registered with Go Daddy
Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2005. On February 1, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February 1, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 February 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2005. The Response was filed with the Center on March 7, 2005.
The Center appointed Henry Perritt, Jr. as the sole
panelist in this matter on March 30, 2005. 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 is a corporation organized under the laws of the State of Texas. It is a manufacturer and seller of wrought iron doors, entrances and gates, and has been in business since April 1997. Complainant has used the mark CANTERA DOORS in connection with its goods since April 10, 1997, and has applied for registration of the mark with the U.S. Patent and Trademark Office (Application Serial No. 78/532,182).
Complainant is well known throughout the United States for its wrought iron doors, entries and gates. It advertises its goods through its website, identified by the domain name <canteradoors.com>, which it registered on September 13, 1998.
The owner of the Respondent, Ronal Hubbard, has been in the Iron Door business
for more than 20 years.
5. Parties’ Contentions
Both parties present arguments which are summarized in essential detail below.
A. Complainant
Identical or Confusingly Similar to a Trade Mark or Service Mark in which the Complainant has Rights
The Complainant argues that Respondent’s domain name <canteradoor.com> is confusingly similar to Complainant’s trademark for CANTERA DOORS.
The Respondent has no rights or legitimate interests in the Domain Name
The Complainant argues that Respondent created the domain name <canteradoor.com> on October 28, 2004. Respondent has not been commonly known by the domain name <canteradoor.com> and has acquired no trademark or service mark in CANTERA DOORS or any confusingly similar variations thereof. Respondent does not use the mark CANTERA DOORS or any variant on its website. Respondent does not use the mark CANTERA DOORS in connection with any business interest or any of its goods and services.
The Domain Namewas registered and is being used in bad faith
The Complainant alleges that Respondent is a competitor of Complainant and that Respondent registered the domain name with an intent deliberately to attract and divert Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
There is no website in operation at “www.canteradoor.com.” Instead Respondent uses the domain name to re-direct consumers to its website located at “www.hubbardirondoors.com” where it advertises wrought iron doors. Respondent is using Complainant’s trademark for commercial gain. Respondent’s use of the domain name for commercial gain is evidence of bad faith.
Respondent registered the domain name with an intent to tarnish Complainant’s mark by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website, causing harm to Complainant’s goodwill in its mark. Some of the doors found on Respondent’s website are actual doors designed by Complainant, for some of which Complainant has received copyright registrations. Respondent’s use of the domain name is likely to damage the goodwill of Complainant’s CANTERA DOORS mark.
Respondent registered the domain name in order to prevent Complainant from owning the domain name.
Respondent registered the domain name in a deliberate attempt to disrupt Complainant’s activities and steal its customers.
Remedy requested
Complainant requests transfer of the domain name to Complainant.
B. Respondent
A. Whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
Respondent alleges, citing Policy, paragraph 4(a)(i), that the website name has been obtained in order to place a comparison web page as indicated in the attached documents, which is not to beimplied in a derogatory or demeaning nature, but more of an explanation to the potential customer of what aspects of the quality of the product they may wish to base their purchase on.
Respondent’s intention is to place links to both websites allowing customers to be more fully informed and confident about their future purchases.
B. Whether the Respondent has rights or legitimate interests in respect of the domain name
Respondent alleges, citing Policy, paragraph 4(a)(ii), the Respondent has no intention of trading as the Cantera door company. There are various examples in the United States of marketing strategies similar to those employed by Respondent, i.e. (“www.bestbuy.com” and “www.bestbuys.com”).
The Hubbard Iron Door website shows clear indications of being “www.hubbardirondoors.com”, and does not state or imply on any web page that it has a connection or affiliation with “www.canteradoors.com”.
C. Whether the domain name has been registered and is being used in bad faith.
Respondent alleges, citing Policy, paragraph 4(a)(iii), that although the domain
name <canteradoor.com> currently attracts certain users to the “www.hubbardirondoors.com”
website, it then becomes very clear to web surfers that they are at the Hubbard
Iron Doors website. The name Hubbard Iron Doors is very prominent on the site
as well as being referenced in the browser address bar. There has been no attempt
or evidence to show intent to tarnish or confuse the Complainant’s name.
The claim that some of the doors on the Hubbard website were designed and copyrighted
by the Complainant is totally untrue.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trade mark 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 domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar to a Trademark or Service Mark in which the Complainant has Rights
The Panel follows abundant panel precedents and accepted principles of trade mark law in deciding that <canteradoor.com> is confusingly similar to the trademark CANTERA DOORS.
Paragraph 4(a)(i) of the Policy then requires a “Trademark or Service Mark” in which the Complainant has rights. Those rights might have arisen through use and reputation or through registration. The uncontested submissions show that the Complainant has trademark rights in CANTERA DOORS. The pendency of the application for registration with U. S. Patent and Trademark Office is irrelevant to this finding.
The Panel finds that the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the domain name. The Respondent does not assert any rights, but merely reiterates the innocence of his motivation in using the domain name to steer Internet users to a site where the Respondent purportedly offers competitive information.
Based on the records, the Panel finds that the Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel is not unsympathetic with the legitimacy of bona fide criticism, parody, or competitive-product evaluation websites. Domain names that themselves indicate that they lead to a site that competes with or criticizes a trademark owner are, in my view, fair uses, and, as a matter of law not registered and used in bad faith. For example, if someone registered a domain name “xyz-compared-with-competitors,” the Panel would most likely be disinclined to find a violation of the UDRP in an action brought by the owner of the trademark XYZ.
But that is not what Respondent did. He registered a domain name nearly identical to Complainant’s trade mark. That, and the nature of the website Respondent maintains, make it clear that his purpose is to divert traffic intended for Complainant’s site to his own, in the hope that the information provided on Respondent’s website will induce potential customers to buy from Respondent rather than from Complainant.
This qualifies as bad faith under paragraph 4(b)(iv) of the Policy in that the Respondent’s use of the domain name attempts to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website.
The submissions do not demonstrate bad faith under paragraph 4(b)(ii) of the Policy because, while it may be inferred that the Respondent registered the domain name in order to prevent the Complainant from reflecting the mark CANTERA DOORS in the domain name, there is no evidence of a pattern of such conduct.
For the reasons given above, the Panel finds that the Complainant has established
the third element of the Policy.
7. Decision
For all the foregoing reasons, the Complaint is accepted, and the domain name <canteradoor.com> should be transferred to the Complainant.
Henry
H. Perritt, Jr.
Sole Panelist
Dated: April 13, 2005
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