DECISION

Associated Materials, Inc. d/b/a Alside v. Perma Well, Inc. a/k/a  Robert Biser

Claim Number:  FA0304000154121

PARTIES

Complainant is Associated Materials, Inc., Cuyahoga Falls, OH (“Complainant”) represented by Holly M. Ford, of Banner & Witcoff, Ltd. Respondent is Perma Well Inc. a/k/a Robert Biser, Pylesville, MD (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ultraguardfence.com>, registered with Network Solutions, Inc.

PANEL

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 8, 2003; the Forum received a hard copy of the Complaint on April 9, 2003.

On April 11, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <ultraguardfence.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. 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 April 23, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 13, 2003 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@ultraguardfence.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 May 21, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <ultraguardfence.com> domain name is confusingly similar to Complainant’s ULTRAGUARD mark.

2. Respondent does not have any rights or legitimate interests in the <ultraguardfence.com> domain name.

3. Respondent registered and used the <ultraguardfence.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Alside, manufactures, markets and sells vinyl fencing under the trademark ULTRAGUARD, and has done so since 1993.  Complainant registered the mark with the U.S. Patent and Trademark Office as Registration Number 1,803,751 in November of 1993.  Complainant operates 90 company-owned supply centers and has done business in the United States since 1947.  Complainant has a reputation as a manufacturer of affordable, dependable, innovative vinyl products for almost every application including fencing, siding, windows, decking, soffit, accessories and trim.  The ULTRAGUARD fencing is used in both residential and agricultural applications.

Respondent, Perma Well, Inc. a/k/a Robert Biser, is a distributor of horse fence products and distributes Complainant’s ULTRAGUARD fence product.  Respondent has been a distributor of Complainant’s product since 1994.  Respondent registered the <ultraguardfence.com> domain name on March 15, 1999 and established a website at the domain name.  After several months of negotiations following Complainant’s discovery of Respondent’s use of this domain name, Respondent agreed to cease all use of the ULTRAGUARD mark as part of its domain name.  Complainant agreed to allow Respondent use of the ULTRAGUARD mark to identify its fence product on Respondent’s new website located at <allhorsefence.com>.  Despite this agreement, in March 2003, Respondent refused to provide the necessary information for transfer of the <ultraguardfence.com> domain name.  Respondent is currently using the disputed domain name to advertise its products.

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and

(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 and/or Confusingly Similar

Complainant has established that it has rights in the ULTRAGUARD mark through continuous use in relation to its fencing product since 1993 and registration with the U.S. Patent and Trademark Office.

Respondent’s <ultraguardfence.com> domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s entire mark and merely adds the descriptive term “fence.”  The addition of a term within a domain name that describes Complainant’s products and/or services does not create a distinct mark capable of overcoming a claim of confusing similarity.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also 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”).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights and legitimate interests in the domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent, a distributor of Complainant’s product, is using a confusingly similar domain name in order to sell Complainant’s product and other horse fence products.  Respondent does not have permission to use Complainant’s mark in its <ultraguardfence.com> domain name.  Respondent is therefore using an infringing domain name to divert Internet users to Respondent’s website.  This behavior does not give rise to rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii) because it is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainant’s HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests).

Respondent, Perma Well Inc. a/k/a Robert Biser, is not known by any other name to this Panel.  Respondent not come forward with any evidence to suggest otherwise.  Thus, the Panel infers that Respondent is not commonly known as ULTRAGUARD FENCE, nor <ultraguardfence.com>.  Therefore, Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent has actual knowledge of Complainant’s rights in the ULTRAGUARD mark.  Respondent is a distributor of Complainant, and is on notice as to Complainant’s rights in the ULTRAGUARD mark through that relationship.  Similarly, Respondent is on notice of its own lack of rights; thus, Respondent’s registration of the <ultraguardfence.com> domain name despite this actual notice is evidence of bad faith registration.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Respondent is using a domain name that is confusingly similar to Complainant’s mark in order to divert Internet traffic interested in Complainant’s product to Respondent’s website.  This behavior is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv) because Respondent is using a confusingly similar domain name to cause Internet confusion for commercial gain.  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. 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 Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <ultraguardfence.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated:  May 23, 2003

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