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WIPO Arbitration and Mediation Center

The Complainant is Easy Heat, Inc., a corporation organized and existing under the laws of the State of Delaware, U.S.A. and having a place of business at 31977 U.S. 20 East, New Carlisle, IN 46552, U.S.A. Complainant is represented by Baker & Daniels.

The Respondent is Shelter Products, P.O. Box 5009, Roseburg, OR 97223 U.S.A.

The domain names at issue are <warmtile.com> and <warmtiles.com>. The domain names were registered with Network Solutions, Inc.

Complainant initiated this proceeding by filing a Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on March 9, 2001. The Center reviewed the Complaint to verify that it satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. On March 15, 2001, the Center sent an acknowledgement of its receipt of the Complaint via email to Complainant and Respondent. The Center also requested that Complainant provide an electronic version of the Complaint, names and contact details of three candidates for the Administrative Panel, and payment of the required fees, in accordance with the Rules. The Center received an Amended Complaint correcting the original Complaint’s deficiencies by email on March 22, 2001 and in hardcopy on March 26, 2001. On March 29, 2001, the Center sent Respondent a Notification of Complaint and a copy of the Complaint via email. The Notification informed Respondent that it must submit a Response by April 17, 2001. The Center sent hard copies of the Notification via Federal Express to Respondent’s Post Office box and street addresses. Employees of Respondent signed receipts of delivery for both packages on April 3, 2001. Respondent failed to submit a response within the required period. On April 23, 2001, the Center issued a Notification of Respondent Default. On June 4, 2001, after clearing for conflicts, the Center appointed Dennis S. Deutsch and Mark V.B. Partridge as panelists and David H. Bernstein as presiding panelist.

Because Respondent has submitted no Response, we accept the allegations of the Amended Complaint as true. See Rita Rudner v. Internetco Corp., Case No. D2000-0581 (WIPO, August 3, 2000) § 4; see also Rules paragraph 5(e) ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the complaint.").

Complainant manufactures and markets electrical heating products. Since 1995, it has used the trademark WARM TILES in conjunction with electrical heating cable for installation in flooring. Complainant owns a federal trademark registration, U.S. Trademark Registration No. 2,102,385, for that mark. The WARM TILES product is a system of electrical heating cables which may be installed under tiles or other types of flooring to warm the floor. Complainant uses the WARM TILES mark on its packaging and in its advertising literature, as well as on its website at www.easyheat.com.

Respondent is a heating supplies distributor. Its website describes the company as "the country's premiere distributor of radiant floor heating systems" www.spnsupply.com. Since as least as early as January 14, 1998, Respondent has purchased Complainant’s WARM TILES products for resale. On or about April 16, 1999, Complainant learned that Respondent was using the domain name <warmtile.com> to sell products of the same type as Complainant’s products. In addition to advertising WARM TILES products at www.warmtile.com, Respondent posted copies of Complainant’s advertising literature on its own website, www.spnwsupply.com. Respondent cleverly edited Complainant’s advertising material, though, to remove all reference to Complainant and to replace every reference to "Easy Heat" with a new reference to "Shelter Products."

After an initial round of emails in April 1999 (concerning Respondent’s misuse of Complainant’s trademark on both the www.warmtile.com and www.spsnsupply.com websites), Complainant, on or about September 3, 1999, sent a demand letter to Respondent objecting to its use of the domain names. Although the record does not contain any response, the Respondent is no longer operating a website at www.warmtile.com or www.warmtiles.com. However, it continues to use Complainant’s WARM TILES trademark and advertising literature at its www.spsnsupply.com website.

Complainant asserts that it owns the WARM TILES trademark, and that the <warmtiles.com> domain name is identical to its trademark. Complainant further contends that the <warmtile.com> domain name is confusingly similar to its trademark, since the only difference is the omission of the letter "s."

Complainant argues that Respondent has no rights or legitimate interests in the domain names. Complainant states that Respondent knew of Complainant’s trademark when it registered the domain names, has never been commonly known by the domain names and is not making a legitimate noncommercial use of the domain names.

Complainant claims that Respondent registered the domain names for the purpose of disrupting Complainant’s business by preventing Complainant from using the domain names to promote its products. Complainant further alleges that Respondent intentionally attempted to attract, for commercial gain, users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which sold Complainant’s products.

The Respondent did not file a Response to the Complaint.

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and used in bad faith.

A. Respondent’s Domain Names Are Identical or Confusingly Similar to Complainant’s Mark.

Complainant’s federal trademark registration is prima facie proof of its ownership of the WARM TILES mark. See EAuto, L.L.C. v. Triple S. Auto Parts, Case No. D2000-0047 (WIPO, March 24, 2000). Complainant has shown that the domain names are confusingly similar to its registered trademark: <warmtiles.com> is identical to the WARM TILES trademark, but for the gTLD ".com", and <warmtile.com>, which also deletes the final letter "s", is confusingly similar thereto. Id. Complainant, has, therefore, satisfied the first element of the Policy.

B. Respondent Has No Rights to or Legitimate Interests in the Domain Names.

The second factor poses a more complicated question. Although Respondent has not submitted a Response, it is clear from the record that Respondent is a distributor of Complainant’s WARM TILES product. In light of this fact, the question is whether Complainant can prove that Respondent’s use of the domain name was not connected with a bona fide offering of goods. Policy paragraph 4(c)(1).

Most panels addressing this issue have found that a distributor does not have the unfettered right to register a domain name incorporating the trademark of the licensor. See, e.g., Motorola, Inc. v. NewGate Internet, Inc., Case No D2000-0079 (WIPO, April 14, 2000); Nikon, Inc. and Nikon Corporation v. Technilab, Inc., Case No. D2000-1774 (WIPO, February 26, 2001). A minority of panels, however, has held that a distributor may register the trademark of a licensor in connection with a bona fide offering of the licensor’s goods. See, e.g. Weber-Stephens Products. Co. v. Armitage Hardware, Case No. D2000-0187 (WIPO, May 11, 2000) (finding a legitimate interest where Respondent and Complainant had arrangement that Respondent could sell Complainant’s grills); Frederick M. Nicholas, Administrator, The Sam Francis Estate v. Magidson Fine Art, Inc. Case No. D2000-0673 (WIPO, September 27, 2000) (allowing Respondent gallery to keep <samfrancis.com> as long as site made clear the non-affiliation with the artist).

Even under the minority view, however, Respondent’s actions do not constitute a legitimate use. Respondent failed to identify Complainant as the source of the WARM TILES product, and instead suggested, through clever editing that replaced "Shelter Products" for "Easy Heat," that it was the manufacturer of the WARM TILES heating system. See Complaint, Exhibit H. A distributor’s use of a licensor’s trademark must accurately reflect the user’s relationship with the trademark owner. See Houghton Mifflin Co. v. The Weathermen, Inc., Case No. D2001-0211 (WIPO, April 17, 2001) ("a licensee or reseller using a domain name that consists solely of a trademark owner’s mark must take steps to prevent confusion by making it clear in its use of the domain name that it is not the mark owner, even if it offers legitimate goods."). Respondent’s use of the <warmtile.com> domain name created confusion as to the source of the WARM TILES product and thus cannot be considered a legitimate use.

Nor can Respondent claim a right to the domain names based on common usage or noncommercial fair use. Nothing in the record indicates that Respondent has ever been commonly known under either domain name. Its use of the names was clearly for the purpose of commercial gain.

Accordingly, the Panel concludes that Complainant has met its burden of establishing that Respondent has no rights to or legitimate interests in the domain names.

C. Respondent Registered and Used the Domain Names in Bad Faith.

Complainant alleges that "Respondent has, by using the domain name, intentionally attempted to attract, for commercial gain, Internet users to its website or other online location by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location and of a product or service on Respondent’s website or location." This practice is evidence of bad faith under Policy paragraph 4(b)(iv).

Respondent used the www.warmtile.com website to promote and sell "Warm Tiles" floor heating systems without acknowledging the WARM TILES trademark or providing any reference to Complainant. Respondent’s use likely created confusion as to the source of the WARM TILES product and diverted customers from Complainant’s own website, which also promotes the WARM TILES product. Absent any other evidence, bad faith registration may be inferred from this course of conduct. See Universal City Studios, Inc. v. G.A.B. Enterprises, Case No. D2000-0416 (WIPO, June 29, 2000).

Respondent’s registration of both the <warmtile.com> and <warmtiles.com> domain names is also evidence of bad faith. The registration of multiple domain names may give rise to the inference that the Respondent registered the names to prevent Complainant from using them to promote its product. See Nikon, supra.

Complainant thus satisfied the third and final element of the Policy.

For the foregoing reasons, the Panel concludes that the domain names at issue are identical or confusingly similar to Complainant’s mark, Respondent lacks any legitimate rights in those domain names, and Respondent registered and used the domain names in bad faith. Accordingly, the domain names <warmtile.com> and <warmtiles.com> should be transferred to Complainant.

David H. Bernstein
Presiding Panelist

Dennis S. Deutsch
Panelist

Mark V.B. Partridge
Panelist

Dated: June 14, 2001