DECISION

Edward Hines Lumber Co. v. The Genesis Group OSI

Claim Number: FA0106000097697

PARTIES

Complainant is Edward Hines Lumber Co., Buffalo Grove, IL, USA (“Complainant”) represented by Alexander Olsansky, of Edward Hines Lumber Co.  Respondent is The Genesis Group OSI, Montgomery, IL, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <hinesprecisioncomponents.com> and  <hinescomponents.com> registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 20, 2001; the Forum received a hard copy of the Complaint on June 20, 2001.

On June 25, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <hinesprecisioncomponents.com> and <hinescomponents.com> are 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 June 25, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 16, 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@hinesprecisioncomponents.com and postmaster@hinescomponents.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.

On July 17, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

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 names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant urges that the <hinesprecisioncomponents.com> and <hinescomponents.com> domain names are confusingly similar to Complainant’s HINES PRECISION COMPONENTS trademark, that Respondent has no rights or legitimate interests in the <hinesprecisioncomponents.com> and <hinescomponents.com> domain names and that Respondent registered and used the <hinesprecisioncomponents.com> and <hinescomponents.com> domain names in bad faith.

B. Respondent did not file a response in this proceeding.

FINDINGS

Since the early twentieth century, Complainant has been engaged in the business of operating retail facilities to sell lumber and building materials throughout the Chicago, Illinois, area.  Complainant is the thirty-ninth largest lumber and building material dealer nationwide, and employs over 650 workers company-wide. Complainant is the parent company of HINES PRECISION COMPONENTS, LLC, a limited liability company that has provided roof and floor trusses in the Chicago area since sometime in 2000.

Respondent registered the disputed domain names on December 15, 2000.  Following Complainant’s initial request to Respondent for transfer of the disputed domain names, Respondent contacted Complainant’s Chief Financial Officer and requested compensation for the domain names above Respondent’s cost of registering the domain names.

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 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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 to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the HINES PRECISION COMPONENTS mark and that it has used the mark in connection with its Hines Lumber Co. business. The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required—unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the policy.  McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000). See 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”).

Furthermore, the domain name registered by Respondent, <hinesprecisioncomponents.com> is identical to Complainant’s HINES PRECISION COMPONENTS mark. The addition of an Internet designation such as “.com,” “.net,” and “.org” does not create a distinguishable new name where the root words are the same. See The Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); see also The Prudential Ins. Co. of Am. v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6, 2000) (finding that the domain name is identical to Complainant’s PRUDENTIAL ONLINE trademark…also the root of the domain name, namely the word "Prudential," is identical to Complainant’s mark…thus, the domain name in its entirety is confusingly similar to the Complainant’s family of marks).

Nor does the deletion of a word affect similarity.  The <hinescomponents.com> domain name omits the word PRECISION from Complainant’s mark, while incorporating the HINES and COMPONENTS portions of Complainant’s mark.  A deletion of a word from an identifiable mark that is owned by another makes the disputed domain name confusingly similar.  The <hinescomponents.com> domain name is confusingly similar to Complainant’s HINES PRECISION COMPONENTS mark, in which Complainant has the only rights.

The Panel finds that the domain names registered by Respondent are identical to and confusingly similar to Complainant’s marks. Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant established in this proceeding that it has rights to and legitimate interests in the marks contained within the domain names registered by Respondent.  The record permits the finding that Respondent has no rights to or legitimate interests in the marks contained within the disputed domain names. Respondent did not come forward with proof that it has rights to or legitimate interests in the <hinesprecisioncomponents.com> and <hinescomponents.com> domain names and in the absence of a response, it is appropriate for the Panel to accept as true all of Complainant’s allegations.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”). 

Furthermore, a presumption exists that Respondent has no rights or legitimate interests with respect to a disputed domain name where Respondent fails to submit a response.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

In addition, Respondent’s offer to sell the disputed domain names for an amount that is in excess of its out-of-pocket expenses is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), but instead constitutes evidence that Respondent does not have rights to or legitimate interests in the disputed domain names.  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

The record permits the inference that Respondent is not commonly known by the marks in issue and Respondent has not come forward to establish that it is commonly known by the <hinesprecisioncomponents.com> and <hinescomponents.com> domain names, pursuant to Policy ¶ 4(c)(ii).  See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”).

The evidence demonstrates that Respondent has not made a legitimate noncommercial, or fair use of the <hinesprecisioncomponents.com> and <hinescomponents.com> domain names pursuant to Policy ¶ 4(c)(iii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

The Panel finds that Complainant established its rights to and legitimate interests in the marks in issue and that Respondent has no such rights to or legitimate interests in the disputed domain names. Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s offer to sell the disputed domain names for valuable consideration in excess of its out-of-pocket costs directly related to registration and development of the domain name evidences bad faith pursuant to Policy ¶ 4(b)(i).  See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied; Respondent registered and used the domain names in issue in bad faith.

DECISION

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted. Accordingly, it is Ordered that the <hinesprecisioncomponents.com> and  <hinescomponents.com> domain names be transferred from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: July 30, 2001.

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