WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Everlast Roofing, Inc. v. Rips&Hits and Brendon Nath

Case No. D2012-0034

1. The Parties

Complainant is Everlast Roofing, Inc. of Lebanon, Pennsylvania, United States of America (“U.S.”) represented by Bernstein Shur, U.S.

Respondent is Rips&Hits and Brendon Nath of Sanford, North Carolina, U.S.

2. The Domain Name and Registrar

The disputed domain name <everlastroofingnc.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 January 10, 2012. On January 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2012, 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 January 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 13, 2012.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 16, 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

Complainant has registered the word trademark EVERLAST on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 3,046,168, dated January 17, 2006, in international class (IC) 6, covering “metal roofing”. Complainant has also registered the word and design trademark "EVERLAST ROOFING, INC.”, with the words placed beneath a line drawing of one-half of a sloped roof and wall structure, registration number 3,065,577, dated March 7, 2006, in IC 6, covering “metal roofing”.¹

Complainant manufactures and sells metal roofing and siding. Complainant maintains a commercial Internet website at “www.everlastroofing.com”. Complainant registered the domain name <everlastroofing.com> in October 1999.

According to the Registrar’s verification, Respondent is the registrant of the disputed domain name. According to the Registrar, the disputed domain name was registered to Respondent on June 13, 2011. There is no evidence in this proceeding of an earlier registration of the disputed domain name. Complainant alleges that individuals named Kelly Cabon and Greg Sava control the entity that is making use of the disputed domain name, and Complainant states that it has been in discussion with these individuals. Complainant named them as respondents. However, there is no evidence on the record of this proceeding substantiating control of Respondent by such individuals, and their inclusion as named respondents is unnecessary to the satisfactory resolution of this dispute.

Respondent has used, and continues to use, the disputed domain name to direct Internet users to a commercial website headed “Everlast Roofing Inc.” that offers to sell and install roofing material in a North Carolina service area. The “Products” tab of the website lists its products as “Top Quality Roofing Materials and Supplies”. The “About” tab of the website states “About Everlast Roofing”, “Since 1998 We have been providing the best roofing solutions to all roofing needs.” The photograph on the “About” page shows two dark-suited businessmen with briefcases walking across a high-rise office complex plaza, not apparently on their way to install roofing, captioned “Everlasting Roofing for the toughest jobs”. (The Panel acknowledges that Respondent might engage a team of men in dark suits with briefcases to sell roofing to customers located within high-rise office complexes.)

The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it owns rights in the trademarks EVERLAST and EVERLAST ROOFING, INC., as evidenced by registration at the USPTO and as established by use in commerce.

Complainant argues that the disputed domain name is confusingly similar to its trademarks, and especially EVERLAST ROOFING, INC. Complainant argues that Respondent has merely added a geographic identifier, NC (for North Carolina), to Complainant’s trademark, and that this is likely to lead to consumer confusion with Complainant as to its sourcing, sponsorship, affiliation with or endorsement of Respondent’s website.

Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because Respondent registered that name having actual and/or constructive knowledge of Complainant and its trademark rights, that Respondent has used the disputed domain name in connection with a website that offers products and services that are similar to Complainant’s, and that Respondent advised Complainant that it knew of Complainant when it registered the disputed domain name. Complainant argues that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and that Respondent has deliberately attempted to take unfair advantage of Complainant and its trademark rights.

Complainant alleges that Respondent registered and used the disputed domain name in bad faith. Complainant alleges that Respondent: (1) had constructive knowledge of Complainant’s trademarks when it registered the disputed domain name because Complainant had registered its trademarks substantially prior to Respondent’s registration of the disputed domain name; (2) Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademarks, including because Respondent is offering products similar to those offered by Complainant.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to Policy 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 ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center formally notified the Complaint to Respondent at the e-mail and physical addresses provided in its record of registration. Respondent did not reply to e-mail notification. The express courier delivery service engaged by the Center successfully delivered the Complaint to the physical addresses provided by Respondent. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.

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 use, and to obtain relief. These elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) 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.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided evidence of registration of the trademarks EVERLAST and EVERLAST ROOFING, INC. at the USPTO, and of use of those trademarks in commerce in the U.S. (see Factual Background, supra).² Respondent has not disputed Complainant’s rights in those trademarks. The Panel determines that Complainant has rights in the trademarks EVERLAST and EVERLAST ROOFING, INC.

The disputed domain name incorporates the principal element of Complainant’s EVERLAST ROOFING, INC. trademark (i.e., “everlastroofing”), and adds the letters “NC”. Those letters are the U.S. postal service abbreviation for the State of North Carolina, and are commonly known among persons residing in the U.S. It is well-established under the Policy that the mere addition of a geographic identifier to a distinctive trademark generally does not serve to eliminate Internet user confusion between the domain name incorporating such geographic identifier and the trademark.³ No extenuating or exceptional circumstances have been brought to the attention of the Panel such as would justify Respondent’s actions. The Panel determines that the disputed domain name is confusingly similar to Complainant's trademark.

Complainant has established that it owns rights in a trademark and that the disputed domain name is confusingly similar to that trademark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any 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 your rights or legitimate interests to the domain name 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.” (Policy, paragraph 4(c))

Complainant has alleged that Respondent lacks rights or legitimate interests in the disputed domain name because Respondent has not made or prepared to make a bona fide offering of goods or services prior to notice of the dispute, and that Respondent has not made legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Complainant has argued that Respondent registered the disputed domain name with knowledge of Complainant’s trademark rights, and has used the disputed domain name to intentionally lead consumers to believe that Respondent is affiliated with Complainant and/or its products. There is no evidence on the record of this proceeding to suggest that Respondent was commonly known by the disputed domain name prior to its registration by Respondent. Complainant has established a primafaciecase that Respondent lacks rights or legitimate interests in the disputed domain name.

Respondent has not attempted to refute Complainant’s prima facie case. Because there is no evidence on the record of this proceeding to otherwise suggest that Respondent has rights or legitimate interests in the disputed domain name, the Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” … “(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [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 [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”

Respondent registered the disputed domain name long after Complainant initiated use of its product name in connection with an Internet website, and approximately 5 years following registration by Complainant of its trademarks at the USPTO. Even a cursory Internet search by Respondent would have revealed Complainant and its trademark products. The Panel presumes that Respondent had knowledge of Complainant and its trademarks when it registered the disputed domain name. Respondent has created a commercial Internet website directly incorporating Complainant’s distinctive trademarks. Respondent has intentionally attempted for commercial gain to attract Internet users to its website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, products or services.

The Panel determines that Respondent registered and has used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

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, <everlastroofingnc.com> be transferred to Complainant.

Frederick M. Abbott
Sole Panelist
Dated: February 29, 2012

¹ Complainant has also submitted evidence of registration at the USPTO of the trademark EVERLAST II.

²E.g., Complainant’s Internet home page includes the word and design trademark EVERLAST ROOFING, INC. and line drawing.

³ Use of the generic top-level domain “.com” is not relevant to a determination in circumstances such as those present here.