Weather Shield, Mfg., Inc. v. Domain Magic, LLC

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Weather Shield, Mfg., Inc. v. Domain

Magic, LLC

Case No. D2007-0052

1. The Parties

The Complainant is Weather Shield, Mfg., Inc. (“Complainant”), Wisconsin, United States of America, represented by Price, Heneveld, Cooper, DeWitt & Litton, United States of America.

The Respondent is Domain Magic, LLC, (“Respondent”)

Lutz, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <weathershielddoors.com>

(“Disputed Domain Name”) is registered with Intercosmos Media Grup

d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2007. On January 15, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On January 15, 2007, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, 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 January 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 8, 2007.

The Center appointed Lynda M. Braun as the sole panelist

in this matter on February 13, 2007. 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 in this administrative proceeding is Weather Shield, Mfg., Inc., a corporation of the state of Wisconsin, having a place of business at One Weather Shield Plaza, Medford, Wisconsin.

Complainant first registered the mark WEATHER SHIELD MFG, INC. MEDFORD, WIS. in 1981 and has obtained multiple registrations since, including a registration for the mark WEATHER SHIELD used in association with the sale of windows and doors, as well as the following United States Registration Nos.:

MARK

REG. NO.

GOODS AND SERVICES

WEATHER SHIELD WINDOWS & DOORS SINCE 1955

2,656,163

Metal Windows and Doors

WEATHER SHIELD LITE FOUNDATION

2,433,690

Charitable Fund Raising

WEATHER SHIELD LEGACY SERIES

2,404,149

Aluminum Clad Wood Windows

WEATHER SHIELD LEGACY SERIES

2,525,571

Aluminum Clad Windows

RETROVISION WEATHER SHIELD

WINDOWS & DOORS MEDFORD WI

2,256,809

Vinyl Windows and Doors

CUSTOM SHIELD WEATHER SHIELD WINDOWS & DOORS MEDFORD WI

2,260,676

Wood Replacement Windows

PROSHIELD WEATHER SHIELD Wooden WINDOWS & DOORS MEDFORD WI

2,264,454

Windows and Doors

VISIONS 2000 WEATHER SHIELD WINDOWS & DOORS MEDFORD WI

2,260,675

Non-Metallic Vinyl Windows & Doors

VISIONS WEATHER SHIELD

WINDOWS & DOORS MEDFORD WI

2,302,765

Vinyl Windows and Doors

WEATHER SHIELD WINDOWS & DOORS MEDFORD WI WEATHER SHIELD

2,259,066

Metal Windows and Doors

WEATHER SHIELD WINDOWS & DOORS MEDFORD WI

2,298,864

Metal Windows and Doors

WEATHER SHIELD WINDOWS & DOORS MEDFORD WI

2,246,627

Nonmetal Windows and Doors

WEATHER SHIELD

2,085,821

Metal Windows and Doors

WEATHER SHIELD MFG, INC.

MEDFORD WIS.

1,166,521

Windows and Doors

All of the registered trademarks are used in connection with, among other things, the sales of windows and/or doors and services associated therewith. In addition, Complainant owns the domain name <weathershield.com>, which is registered with Network Solutions, Inc.

Complainant has spent considerable time and money

advertising and marketing its products bearing its apparently known marks. Today,

50 years after being founded, Complainant has grown substantially and is one

of the leading window and door manufacturers in the United States of America.

Employees now work in more than two million square feet of manufacturing space

in five different cities and manufacture windows and doors of every style, shape

and size and promote those products throughout the nation. Complainant’s

dealers were recently recognized as the 2006 dealers of the year by Window &

Door magazine. Complainant has designed and provided windows and doors for use

in several energy efficient ThermSmart homes and showcase homes.

5. Parties’ Contentions

A. Complainant

The following are the allegations made by Complainant in this proceeding:

Complainant has owned rights to the mark WEATHER SHIELD MFG, INC. MEDFORD, WIS. since 1981, and has obtained multiple federal registrations since, including a registration for the mark WEATHER SHIELD used in association with the sale of windows and doors. Complainant holds many trademark registrations that include the words “WEATHER SHIELD” (hereinafter referred to as “WEATHER SHIELD marks”). All of the registered trademarks are used in connection with, among other things, the sales of windows and/or doors and services associated therewith. In addition, Complainant owns the domain name <weathershield.com>, which is registered with Network Solutions, Inc.

Complainant has spent considerable time and money advertising and marketing its products bearing its widely known marks.

The Respondent registered the Disputed Domain Name <weathershielddoors.com>

Respondent knew of the rights that Complainant has in the various WEATHER SHIELD marks at the time of obtaining the Disputed Domain Name and acted in bad faith when procuring the Disputed Domain Name. Complainant engages in extensive marketing and advertising, including brochures and mailings that feature its name and mark. Furthermore, Complainant’s website receives a great deal of traffic and would have been discovered by Respondent if Respondent would have conducted even minimal internet searching. In addition, Complainant’s rights in the WEATHER SHIELD marks would have been readily discovered if Respondent had conducted a basic domain name search or a search of the United States Patent & Trademark Office records, which are readily available on the internet. Moreover, this indication of constructive notice is further evidenced by Respondent’s use of the Disputed Domain Name to misdirect internet users to third party door and window manufacturers  the very business in which Complainant has developed its reputation in for the last 50 years. Considering the inclusion of the word “windows” in the Disputed Domain Name, it is inconceivable that Complainant’s business was not known to Respondent.

Respondent is using the Disputed Domain Name to promote and advertise websites offering window and door products for sale by Complainant’s competitors. When an unknowing Internet user searches for legitimate services related to windows and doors and types in the Disputed Domain Name into the address bar of his or her internet browser, the user is directed to a website that advertises hyperlinks for competitors of Complainant.

Moreover, when the internet user clicks on any of the links on Respondent’s page, the user is directed to sponsored search listings for websites, many of which offer doors or windows or installation of the same in competition with the products and services offered by Complainant.

Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent has no connection or affiliation with Complainant and has not been granted consent or a license, express or implied, to use the WEATHER SHIELD marks in a domain name or in any other manner.

Respondent has never been known, recognized, or otherwise associated with the Disputed Domain Name.

The Disputed Domain Name is confusingly similar to the registered WEATHER SHIELD marks of Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s

contentions.

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii)):

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no right or legitimate interest in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complaint shows that Complainant has valid and

well-established exclusive rights in its WEATHER SHIELD marks. Complainant possesses

a valid federal trademark registration, uses its WEATHER SHIELD marks to offer

its business-related products and services, and has expended significant resources

to promote its WEATHER SHIELD marks. See generally MSNBC Cable, LLC

v. Tysys.com, WIPO Case No. D2000-1204.

Complainant also has established common law rights in the word mark WEATHER

SHIELD based on its use of these words alone on its products, on its website,

and its domain name <weathershield.com>. See Askonas Holt Ltd v. Webocracy

Inc., WIPO Case No. D2000-0392 (common

law trademarks are protected under the Policy).

As numerous courts and prior WIPO UDRP panels have

recognized, the incorporation of a trademark in its entirety is sufficient to

establish that a domain name is identical or confusingly similar to the Complainant’s

registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115

F. Supp. 772, 777 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>,

<kenworthtrucks.com> and similar domain names are not appreciably different

from the trademarks PETERBUILT and KENWORTH); Quixtar Investments Inc. v.

Dennis Hoffman, WIPO Case No. D2000-0253

(finding that QUIXTAR and <quixtarmortgage.com> are identical for purposes

of the Policy). The addition of descriptive or non-distinctive terms in the

domain name does not affect a finding that a domain name is confusingly similar

to a complainant’s registered trademark.

The Panel finds that Respondent’s <weathershielddoors.com>

domain name is confusingly similar to Complainant’s WEATHER SHIELD marks.

The Disputed Domain Name incorporates the entirety of Complainant’s WEATHER

SHIELD marks and the only difference between the Disputed Domain Name and Complainant’s

WEATHER SHIELD marks lies in the addition of the word “doors” and

the addition of the “.com” after Complainant’s WEATHER SHIELD

marks. The addition of such generic phrases to a complainant’s mark is

not sufficient to escape a finding of similarity when a disputed domain name

otherwise wholly incorporates a complainant’s mark. See Westcoast Contempo

Fashions Ltd. v. Manila Indus. Inc., Claim No.: FA0610000814312 (Nat’l

Arb. Forum, November 29, 2006) (explaining that the disputed domain name was

confusingly similar to the complainant’s mark despite the fact that respondent

had added a word associated with the complainant’s business to the mark);

Dermalogica, Inc, and Int’l Dermal Institute, Inc. v. Domains to Develop,

Claim No.: FA0307000175201 (Nat’l Arb. Forum, September 22, 2003) (explaining

that merely adding the letters “t” and “a” to the mark

did not sufficiently differentiate the respondent’s domain name from the

complainant’s mark). Indeed, the phrase “doors” is descriptive

and non-distinctive because it is commonly used. Finally, it is well-established

that the addition of the phrase “.com” is “non-distinctive

because it is required for registration of a domain name.” See RRI

Financial, Inc. v. Ray Chen, WIPO Case

No. D2001-1242.

The Panel therefore concludes that the disputed domain name <weathershielddoors.com> is identical or confusingly similar to Complainant’s WEATHER SHIELD marks in which Complainant has valid and exclusive rights.

B. Rights or Legitimate Interests

Once a complainant establishes that a respondent’s

domain name is identical or confusingly similar to a complainant’s mark,

and has made a prima facie case that the respondent lacks rights or legitimate

interest in the domain name, the burden shifts to the respondent to establish

some rights or legitimates interest with respect to the domain name. See

Sony Kabushiki Kaisha a/t/a Sony Corporation v. sony.net, WIPO

Case No. D2000-1074. The Panel noting that that the Complainant has not

authorized the Respondent to use the WEATHER SHIELD marks, finds that Complainant

has made such a prima facie case, which Respondent has not answered.

Respondent has not shown that it has made any bona

fide commercial use or any legitimate non-commercial or fair use of the

Disputed Domain Name without any intent either for commercial gain or to mislead

or divert consumers or tarnish the trademark at issue. Complainant states in

the Complaint, and submits evidence in its schedule of annexes to the Complaint,

that the Disputed Domain Name <weathershielddoors.com> is being used to

promote and advertise websites offering window and door products for sale by

Complainant’s competitors. When an unknowing Internet user searches for

legitimate services related to windows and doors and types in the Disputed Domain

Name into the address bar of his or her internet browser, the user is directed

to a website that advertises hyperlinks for competitors of Complainant. Moreover,

when the internet user clicks on any of the links on Respondent’s page,

the user is directed to sponsored search listings for websites, many of which

offer doors or windows or installation of the same in competition with the products

and services offered by Complainant. Respondent’s use of the Disputed

Domain Name to redirect unsuspecting internet users to click-through advertisements

and sponsored links present on <weathershielddoors.com>, including to

those competing with Complainant, fails to constitute a bona fide commercial

offering of goods and services under the contested Disputed Domain Name. Such

use certainly does not constitute a legitimate non-commercial or fair use without

any intent either for commercial gain, or to mislead or divert consumers or

tarnish the trademark at issue. See MSNBC Cable, LLC v. Tysys.com, WIPO

Case No. D2000-1204; see also Qwest Communications International, Inc.

v. DefaultData.com a/k/a Brian Wick, (“The domain name is thereby

used with intent for commercial gain to misleadingly divert consumers and to

tarnish the trademark at issue”).

Respondent’s default notwithstanding, there

is no evidence in the record that the Respondent is in any way associated with

Complainant, that Respondent is now or was ever known by <weathershielddoors.com>,

that Respondent possesses any trademark or service mark rights in the Disputed

Domain Name <weathershielddoors.com>, or that the Respondent has other

authority or permission to use Complainant’s WEATHER SHIELD marks. Indeed,

the Complainant states expressly WIPO Case

No. D2003-0002 that the latter is not the case. See, e.g., Calvin

Klein Trademark Trust and Calvin Klein, Inc. v. Jonathan Dardashti, WIPO

Case No. D2001-1158 (finding no legitimate interest because, inter alia,

the complainant had not licensed mark to the respondent). Furthermore, by not

submitting a response to Complaint, the Respondent has failed to invoke any

other circumstance that might demonstrate, pursuant to paragraph 4(c) of the

Policy, that it holds some right or legitimate interest in the Disputed Domain

Name. See Ahead Software AG. v. Leduc Jean, WIPO

Case No. D2004-0323; see also Nintendo of America, Inc. v. Tasc,

Inc. and Ken Lewis, WIPO Case No. D2000-1563

(respondent’s default alone sufficient to conclude that it had no right

or legitimate interest in the domain name).

Therefore, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by Complainant.

C. Registered and Used in Bad Faith

First, in view of the circumstances the Panel infers

the Respondent’s bad faith intent from the Respondent’s lack of

response to the Complaint. See Awesome Kids LLC and/or Awesome Kids L.L.C.

v. Selavy Communications, WIPO Case No. D2001-0210.

Second, Respondent’s knowledge of Complainant’s

WEATHER SHIELD marks when Respondent first registered the Disputed Domain Name

supports a finding of registration in bad faith. As the undisputed evidence

in the Complaint shows that Complainant owns numerous U.S. trademark registrations,

the Panel infers that the Respondent was well aware of Complainant’s WEATHER

SHIELD marks but chose, in spite of such knowledge, to register the Disputed

Domain Name with the intent of causing consumer confusion and financially benefiting

from the goodwill inherent in those well-known WEATHER SHIELD marks. Such conduct

is a demonstration of bad faith. See Fairmont Hotel Management L.P. v. Puts,

WIPO Case No. D2001-0431 (finding bad

faith because “Complainant’s registered trademark is long-established

and widely known and so, in the absence of evidence or even an assertion by

the Respondent to the contrary, knowledge of the Complainant’s rights

in the trademark can be imputed to the Respondent at the time of registration

of the domain names.”). This indication of constructive notice is further

evidenced by Respondent’s use of the Disputed Domain Name to misdirect

internet users to third party door and window manufacturers - the very business

in which Complainant has developed its reputation for the last 50 years. Considering

the inclusion of the word “windows” in the disputed domain name,

it is inconceivable that Complainant’s business was not known to Respondent.

See Gov. Employees Insurance Co. (GEICO) v. Forum LLC, WIPO

Case No. D2005-1131.

Third, Respondent provides links on its website to

Complainant’s competitors’ web sites - other apparel manufacturers

that market and sell the identical products as Complainant. Diverting traffic

in this manner with the result that consumers searching for Complainant may

land on a competitor’s site inadvertently, but then decide to purchase

from that manufacturer because it has taken an interest in the goods offered

is the epitome of bad faith. Indeed, the foregoing is known as initial interest

confusion in U.S. trademark law and is actionable. See Micro Electronics,

Inc. v. J Lee, WIPO Case No. D2005-0170

(diversion of traffic evidence of bad faith). Moreover, the diversion

of traffic to another site trades on the good will of the mark owner, creates

a mistaken belief that the mark owner condones the conduct or somehow is affiliated

with the other site and/or gives the impression to consumers that the products

from the site with the confusingly similar domain name are WEATHER SHIELD products

or are otherwise associated with Complainant. This, too, demonstrates bad faith.

Fourth, Respondent has obtained or at least expected to obtain some commercial gain, either by selling links to Complainant’s competitors, selling advertising space, or by through the “pay per click” being paid. Respondent’s use of the Disputed Domain Name for commercial benefit by receiving “pay-per-click” fees and diverting Internet users to Complainant’s competitors is evidence of bad faith registration and use pursuant to paragraph 4(b)(iii) and (iv) of the Policy (. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat’l Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat’l Arb. Forum November 22, 2002) (finding that if respondent profits from its diversionary use of complainant’s mark when the domain name resolves to commercial websites and respondent fails to contest the Complaint, it may be concluded that respondent is using the domain name in bad faith pursuant to paragraph 4(b) )(iv) of the Policy.

Further, no plausible good faith explanation for Respondent’s

use of the Disputed Domain Name can be provided and it is well settled that

Respondent’s method of infringement (using an additional word to misdirect

Internet traffic) constitutes bad faith under the Policy. See Microsoft Corp.

v. Devansh Mehta, Claim No. FA0603000652942 (Nat’l Arb. Forum May

23, 2006); American Express Marketing & Development Corp., v. Gold Coast

Employee Relations, Claim No. FA0603000662950 (Nat’l Arb. Forum May

1, 2006); Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO

Case No. D2006-0033.

Finally, Respondent’s bad faith is also evidenced

in its pattern of abusive registration, infringement, and cybersquatting. Domain

names of Respondent incorporating famous and distinctive marks have recently

been the subject of UDRP proceedings and in each case, the Panel ordered Respondent

to transfer the disputed domain name to the complainant. See Albert Einstein

Healthcare Network v. Domain Magic, LLC, Claim No. FA0611000846808 (Nat’l

Arb. Forum, January 11, 2007); Greg Young Publishing v. Domain Magic, LLC,

Claim No. FA0701000886337 (Nat’l Arb. Forum February 16, 2007); Deason

v. Domain Magic, LLC, Claim No. FA0612000869574 (Nat’l Arb. Forum,

January 30, 2007). Such conduct - the registration of multiple domain names

that are confusingly similar to established marks - has been deemed to be evidence

of bad faith. CSC Holdings, Inc. v. Elbridge Gagne, WIPO

Case No. D2003-0273.

Accordingly, the Panel finds that the third element

of paragraph 4(a) of the Policy has been met by Complainant.

7. Decision

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 name, <weathershielddoors.com>, be transferred to the Complainant.

Lynda M. Braun

Sole Panelist

Dated: February 26, 2007

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