Valley Boiler,
Inc. v. Capitol Boiler, Inc.
Claim Number: FA0107000098078
PARTIES
Complainant is Valley Boiler, Inc., Roanoke, VA (“Complainant”) represented by Richard D Scott, of Woods, Rogers & Hazlegrove, P.L.C. Respondent is Capitol Boiler, Inc., Salem, VA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <valleyboiler.com>, registered with Network Solutions, Inc.
PANEL
On August 22, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 19, 2001; the Forum received a hard copy of the Complaint on July 23, 2001.
On July 24, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <valleyboiler.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 25, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 14, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@valleyboiler.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that:
1.
the <valleyboiler.com>
domain name is confusingly similar to its VALLEY BOILER INC. mark;
2. Respondent has no rights or legitimate interests in the <valleyboiler.com> domain name given that it operates a competing business within the same region under a different name; and
3. Respondent registered and uses the <valleyboiler.com> domain name in bad faith primarily to disrupt Complainant's competing business and to create a likelihood of confusion with Complainant's VALLEY BOILER INC. mark as to the source, sponsorship, affiliation, or endorsement of its website.
B. Respondent
Respondent did not submit a response.
FINDINGS
1. Complainant provides sales, installation, repairs, and services for commercial boiler systems throughout the Southwestern Virginia and Eastern West Virginia area.
2.
Complainant has used its VALLEY BOILER INC. mark in connection
with the promotion of its services since 1998.
3.
Complainant has achieved a regional reputation in boiler
installation and services under its VALLEY BOILER INC. mark.
4.
Respondent operates a competing boiler installation and
service company in the same general geographic region.
5.
Respondent registered the <valleyboiler.com> domain name on July 17, 2000.
6. The <valleyboiler.com> domain name redirects users to Respondent's own online location at <capitolboiler.com>.
DISCUSSION
Paragraph
15(a) of the Rules instructs this Panel to “decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or
Confusingly Similar
For the purposes of Policy ¶ 4(a)(i), Complainant has established its rights to the VALLEY BOILER INC. mark through its continuous and extensive use within its industry and geographic region. See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that complainant has a bona fide basis for making the complaint in the first place); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).
The <valleyboiler.com> domain name is comprised of the dominant portions of Complainant's VALLEY BOILER INC. mark; it merely omits the "INC" and adds ".com," a TLD. These changes are not of consequence to the Panel's determination that the disputed domain name is confusingly similar to Complainant's mark. See, e.g., Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s “Wellness International Network”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Respondent is using the <valleyboiler.com> domain name to redirect users to its own competing website. Such a use does not constitute a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i). See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant's site to a competing website).
In light of the fact that Respondent operates a competing business under a different name, this Panel is satisfied that Respondent is not commonly known by the <valleyboiler.com> domain name pursuant to Policy ¶ 4(c)(ii). Cf. Tuxedos By Rose v. Hector Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding no rights or legitimate interests where the Respondent registered domain names which infringed upon Complainant’s mark and had no resemblance to Respondent’s business name where Respondent’s competing business was located one and a half blocks from Complainant’s business).
Respondent uses the <valleyboiler.com> domain name to redirect users to its own online location, which is in direct competition with Complainant. Such a use is plainly not a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). E.g., Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
For the forgoing
reasons, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
In light of the competitive relationship between Respondent and Complainant, and the fact that the <valleyboiler.com> domain name redirects users to Respondent's home page for its business, it is clear that Respondent registered and uses the <valleyboiler.com> domain name in bad faith in order to disrupt the business of a competitor pursuant to Policy ¶ 4(b)(iii). E.g., Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where Respondent’s sites pass users through to Respondent’s competing business).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements under the ICANN Policy, the Panel concludes that the requested relief should be granted.
Accordingly, it is Ordered that the <valleyboiler.com> domain name be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated : August 28, 2001
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