Complainant is AWI Licensing LLC of Wilmington, Delaware, United States of America (“United States”), represented by The Belles Group, P.C., United States.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Name Redacted1.
The disputed domain name <armstrongsceilling.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2018. On September 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 2018, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 2, 2018. Three communications from Respondent and a third party were received by the Center on October 5 and 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2018. The Center informed the parties the commencement of the panel appointment process on November 1, 2018.
The Center appointed Michael A. Albert as the sole panelist in this matter on November 7, 2018. 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 is a global leader in the design and manufacture of innovative commercial and residential ceiling, wall and suspension system solutions. Complainant has over 3,700 employees and fiscal 2015 revenues from ceiling operations in excess of USD1.2 billion. It produces suspended mineral fiber and soft fiber ceiling systems; suspension system (grid) and ceiling component products; and acoustical ceiling, wall, and structural solutions. It sells its commercial ceiling materials and accessories to resale distributors and ceiling system contractors: residential ceiling products to wholesalers and retailers, such as large home centers; and architectural specialty products to resale distributors and ceiling systems contractors.
Complainant operates its primary websites at “www.arrmstrongworldindustries.com” and “www.armstrongceilings.com”, dating back to 1999, to promote its products, and in numerous countries via country specific websites. Complainant’s websites have information on its wide range of products, information on where consumers can purchase Complainant’s produces, as well as information about the company and its strategy and business policy.
Complainant is the registered owner of the ARMSTRONG trademark in various classes in various countries around the world. This trademark has been used extensively and the company name of Complainant. The mark has acquired and enjoys substantial goodwill and valuable reputation. Complainant is the owner of numerous trademarks in the United States, including but not limited to the ARMSTRONG registrations listed below:
4664696 GET A CEILING YOUR WALLS WILL ENVY ARMSTRONG
The disputed domain name was registered on September 3, 2018. According to the Complaint, the disputed domain name has been used to send emails purporting to be from the Chief Executive Officer (“CEO”) of the Complainant.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s ARMSTRONG mark because it wholly incorporates Complainant’s ARMSTRONG mark notwithstanding the addition of the generic term “ceiling,” and the generic Top-Level domain (“gTLD”) “.com”. The disputed domain name also fully incorporates Complainant’s “Armstrong Ceilings” trade name.
Complainant also alleges Respondent is not commonly known by the disputed domain name. Respondent has never been licensed or authorized or otherwise permitted to use the mark.
Lastly, Complainant alleges that Respondent’s conduct is in bad faith as evidenced both by the similarity of the disputed domain name to Complainant’s mark and Respondent’s use of the disputed domain name to target the Complainant in a fraudulent email and phishing scheme.
Respondent did not reply to Complainant’s contentions. On October 5, 2018, a third party on behalf of Respondent indicated that Respondent “had his company credit card number stolen from an online hack and it was potentially used for the domain purchase you allege. The address for [Respondent] is correct from his credit card file and company address but the phone number is from Maryland and the email a WordPress site not related to his ownership. Please cease and dismiss all efforts against [Respondent] as he had no part in any action related to this case”. On October 24, 2018, Respondent acknowledged that the third party’s statements were “truthful and accurate”.
The disputed domain name is confusingly similar to Complainant’s well-known ARMSTRONG mark because it contains the entirety of Complainant’s mark with the addition of the letter “s”, the descriptive term “ceiling,” and the generic gTLD “.com”. Numerous UDRP panels deciding cases under the Policy have held that the incorporation of a complainant’s well-known mark in full in a disputed domain name is a compelling factor in favor of a finding of confusing similarity, and that addition of other terms (in this case a term associated with the mark) does not alleviate such confusion. See, e.g., Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782; The Ritz Hotel v. Damir Kruzicevic, WIPO Case No. D2005-1137. See also section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Registration and use of the disputed domain name to impersonate Complainant’s CEO and solicit money from Complainant further serves as evidence of the confusing similarity between the disputed domain name and Complainant’s mark and of Respondent’s intention to create such confusion.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
Respondent has no rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy. Respondent is not known by Complainant’s mark. Complainant confirms that Respondent does not have license, permission, or authorization to use Complainant’s mark. There is no evidence demonstrating any legitimate noncommercial or fair use of the disputed domain name by Respondent. Respondent’s failure to respond to the Complaint, coupled with Complainant’s contentions, are indicative that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Respondent’s conduct in this case demonstrates bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. Complainant provided evidence that Respondent’s intended use of the disputed domain name was and is to mislead the public for commercial gain.
First, given the long use and fame of Complainant’s ARMSTRONG marks, Respondent clearly knew or should have known of the ARMSTRONG mark at the time Respondent registered and used the disputed domain name. Such knowledge is sufficient to establish that the disputed domain name was appropriated by Respondent in bad faith. See Maori Television Service v. Damien Sampat, WIPO Case No. D2005-0524 (“A finding of bad faith may be made [where] the Respondent knew or should have known of the registration and use of the trade mark prior to registering the domain”).
Second, Respondent registered the disputed domain name in bad faith by knowingly providing falsified contact details and falsely claiming to be Complainant’s CEO.
Third, Respondent appears to have used the disputed domain name to engage in a “phishing” identity theft scheme and fraud upon Complainant, by sending an email using the disputed domain name and purporting to be from Complainant.
The Panel finds that Complainant has satisfied 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, <armstrongsceilling.com> be transferred to Complainant.
Michael A. Albert
Date: November 20, 2018
1 The registrant of the disputed domain name appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
Stay updated! Get new cases and decisions by daily email.