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Superior Windmill Inc. v. JL Company/John Longenecker [2004] GENDND 773 (10 June 2004)

1. The Parties

The Complainant is Superior Windmill Inc., Saskatoon, Saskatchewan, Canada, represented by Furman & Kallio - Barristers and Solicitors, Canada.

The Respondents are JL Company and John Longenecker, Beverly Hills, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <superiorwindmillsusa.com> and <superiorwindmillusa.com> are registered with GKG.NET, INC. (formerly GK Group LLC).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2004. On April 26, 2004, the Center transmitted by email to GKG.NET, INC. (formerly GK Group LLC) a request for registrar verification in connection with the domain names at issue. On April 27, 2004, GKG.NET, INC. (formerly GK Group LLC) transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details for the administrative, billing, 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 Respondents of the Complaint and the proceedings commenced on May 3, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2004. The Response was filed with the Center on May 19, 2004.

The Center appointed Ross Wilson as the sole panelist in this matter on June 2, 2004. 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

The Complainant is incorporated in Canada. It sells windmills and wind driven pumps which are typically used for wind driven aeration systems for ponds and dugouts. Two Canadian trademark applications for Superior Windmill were filed on July 7, 2003, and October 8, 2003. An application for a USA trademark of the same name was filed on October 9, 2003. The Complainant’s domain name <superiorwindmill.com> was registered on January 28, 2003.

The Respondents promote and distribute a pond aeration windmill. The disputed domain names were registered on September 9 and 10, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- It has common law and other rights in the marks based on use since June 2003.

- The disputed domain names are substantially identical and therefore confusingly similar to its trademarks.

- The Respondents have no rights or legitimate interests in the disputed domain names.

- The Respondents are distributors of windmills made by a direct competitor of the Complainant.

- The content of the websites of the disputed domain names consist of thinly veiled “news commentary” that seek to discredit the business of the Complainant and therefore are not used for legitimate non-commercial reasons nor do they qualify as fair use.

- The registrations were made in bad faith with contents clearly designed for the purpose of disrupting the business of a competitor.

- By using the name of the Complainant in the disputed domain names the Respondents have endeavored to misdirect Internet users to the Respondents’ offending websites. Instead of being taken to a site offering the Complainant’s products users are subjected to unsupported accusations and rhetoric regarding the Complainant and its corporate officers and offered a direct link to the Respondents and a competitor’s website.

B. Respondents

The Respondents contend that the Complainant should have avoided the domain name dispute resolution process and simply initiated a site name transfer that the Respondents are willing to authorize. In fact, in the Respondents’ Response they “request the Administrative Panel to approve the inconsequential remedies requested by the Complainant”.

6. Discussion and Findings

Despite the Respondents’ request to resolve the matter in the Complainant’s favour the Panel is obliged to formally consider the issues in accordance with paragraphs 4(i) of the Policy and 15 of the Rules.

A. Identical or Confusingly Similar

The Complainant contends that the disputed domain names of <superiorwindmillsusa.com> and <superiorwindmillusa.com> are identical or confusingly similar to its trademarks in which it has rights.

In terms of its rights in the trademarks, the Complainant lodged its two Canadian trademark applications in July and October 2003, and its US trademark application in October 2003. In each case the Complainant claims its word trademarks of Superior Windmill and its design trademark incorporating the words Superior Windmill Incorporated have been used since June 18, 2003. In addition, pending the outcome of its trademark applications, the Complainant relies on its common law rights based on continuous use in Canada, in the US and internationally.

The Complainant contends that the disputed domain names differ from its trademarks only at the end of the domain name which in one case refers to the plural of windmill and in both cases end in the country suffix of “usa”. Suffixes such as the use of a plural word or a country designation do not alter the fact that the domain names are essentially the same as the trademarks.

In their response the Respondents express the opinion that their domain names are “annoyingly similar” and that the issue is “irrelevant”. They restate that the Complainant “has failed to simply initiate a site name transfer that the JL Company has been willing to authorize all along”.

The Panel finds that the Complainant has rights in the trademarks and that the disputed domain names are confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out how a Respondent can demonstrate rights to and legitimate interest in the disputed domain name. The ways include, but are not limited to:

(i) “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or,

(ii) you (as an individual, business, or an organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or,

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Complainant contends that the Respondents are not commonly known for wares or services offered under the Superior Windmill name and therefore the use of the domain names is not for the purpose of a bona fide offering of goods and services as would be required to establish that the Respondents have rights or legitimate interests in the name as used (see The Chip Merchant Inc. v. Blue Star Electronics, d/b/a Memory World., WIPO Case No. D2000-0474).

Also, the Complainant claims that the Respondents’ website consists of thinly veiled “news commentary” that seeks to discredit the business of the Complainant. Its contents promote a competing product and cannot be considered to be used for legitimate noncommercial reasons nor do they qualify as fair use. Finally, the use of the domain names is to misleadingly divert consumers and to tarnish the Complainant’s trademark (see Kosmea Pty. Limited v. Carmel Krpan, WIPO Case No. D2000-0948).

The Respondents do not deny the claims. Their response is simply to state that it is “irrelevant” and to reiterate their position of a willingness to authorize a site name transfer if initiated by the Complainant.

The Panel finds that the Respondents have not demonstrated any rights to or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

For the purposes of determining if there was bad faith the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.

The circumstances of paragraph 4(b) involve possible bad faith motives of: (1) selling, renting or otherwise transferring the domain name for valuable consideration, (2) preventing the trademark owner from having its trademark as a domain name (provided there is a pattern of such conduct), (3) disrupting the business of a competitor or (4) attracting Internet users to a website for commercial gain by creating confusion with the Complainant’s trademark.

The Complainant’s contention that the domain names were registered in bad faith is based on the fact that the websites are designed for the purpose of disrupting the business of a competitor. Through the use of “opinions”, which in reality are unsubstantiated attacks on the Complainant and officers of the Complainant, the Respondents seek to discredit the Complainant and its business operations. As the Respondents distribute directly competing products, the content of the websites cannot be reasonably described as fair comment or editorial in nature, but is a deliberate attempt to tarnish the business of the Complainant to the advantage of the Respondents and their preferred product.

The Complainant continues by stating that by using the name of the Complainant in the disputed domain names the Respondents have endeavored to misdirect Internet users to the Respondents’ websites. Users of Internet search engines might easily be confused into believing that by selecting a link to the domain names, that they will be taken to a site offering the Complainant’s products – until they actual view the site. Once there, consumers are subjected to unsupported accusations and rhetoric regarding the Complainant and its corporate officers and offered a direct link to the website of a competitor. The Complainant is faced with the prospect of losing customers due to the content of the websites and by misdirecting consumers the Respondents have misused the Complainant’s mark in a way that operates to create a real chance of enhancing the Respondents commercial gain.

Again, the Respondents do not deny the Complainant’s claims and repeat their earlier response of willing to transfer the domain names if the Complainant initiates action.

It is the Panel’s view that the Respondents registered and used the disputed domain names in bad faith.

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 names <superiorwindmillsusa.com> and <superiorwindmillusa.com> be transferred to the Complainant.

Ross Wilson
Sole Panelist

Dated: June 10, 2004