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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eldorado Stone Operations, LLC v. Keyword Marketing, Inc.

Case No. D2007-0959

 

1. The Parties

The Complainant is Eldorado Stone Operations, LLC, South Jordan Utah, of United States of America, represented by Dorsey & Whitney, LLP, United States of America.

The Respondent is Keyword Marketing, Inc., Charlestown, West Indies, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <eldoradoculturedstone.com> is registered with BelgiumDomains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2007. On July 3, 2007, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain name at issue. On July 3, 2007, BelgiumDomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint and the proceedings commenced on July 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2007.

The Center appointed Hariram Jayaram as the sole panelist in this matter on August 7, 2007. 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 a limited liability company organized and existing under the laws of the State of Utah and has a principal place of business in South Jordan, Utah, United States of America. The Complainant has United States of America Trademark registrations for ELDORADO and ELDORADO STONE and a service mark registration for ELDORADO.

The Respondent is the registrant of the disputed domain name <eldoradoculturedstone.com>.

 

5. Parties’ Contentions

A. Complainant

This Complaint is based on the following grounds:

The Complainant submits that it has used, registered or applied to register the trademark ELDORADO, the service mark ELDORADO, and the trademark ELDORADO STONE & Design (hereinafter collectively referred to as the “ELDORADO STONE Marks”) in the United States Patent and Trademark Office and in jurisdictions around the world for a number of goods, such as cast artificial stones, bricks, tree rounds, simulated slate, fireplace hearths, flagstones and nonmetallic building materials, namely, synthetic, artificial and reformed stones, bricks, blocks and sheets as well as for services such as custom manufacture of molds for producing artificial building stones for others. The Complainant owns the following valid and subsisting U.S. trademark and service mark registrations: U.S. Trademark Registration No. 1,182,120 for the ELDORADO mark, dated December 15, 1981; U.S. Service Mark Registration No. 2,901,565 for the ELDORADO mark, dated November 9, 2004; and U.S. Trademark Registration No. 2,498,513 for the ELDORADO STONE & Design mark, dated October 16, 2001. The U.S. Registration No. 1,182,120 is incontestable pursuant to Section 15 of the Lanham Act, 15 U.S.C. § 1065. The Complainant is a building materials manufacturer which specializes in manufactured stone veneer and sells its artificial stone veneer products and manufacturing services throughout the United States and the rest of the world. It has been offering its products and services under the ELDORADO STONE Marks since at least 1968. As a result of the Complainant’s long and prominent use of its ELDORADO STONE Marks for and in connection with its products and services, such trademarks and service marks have acquired worldwide recognition as identifying exclusively the products and services of the Complainant and the vast and valuable goodwill symbolized by the ELDORADO STONE Marks when used in connection with such products and services belongs exclusively to the Complainant. The Complainant contends that it has spent considerable sums of time, effort and money for the research and development of its products and services which are promoted, marketed and sold under the ELDORADO STONE Marks. The Complainant has also spent considerable time, effort and money extensively promoting its products and services under the ELDORADO STONE Marks throughout the world.

According to Whois information, the Respondent registered the <eldoradoculturedstone.com> Domain Name on April 16, 2007. The Respondent uses the Domain Names to host a Website located at “www.eldoradoculturedstone.com”.

The Complainant contends that similarities between the Complainant’s ELDORADO STONE Marks and the <eldoradoculturedstone.com> Domain Name are evident. The word “Eldorado” is the primary element of the <eldoradoculturedstone.com> Domain Name and is identical to the Complainant’s distinctive ELDORADO trademark and service mark. The <eldoradoculturedstone.com> Domain Name begins and ends with both words that form the Complainant’s trademark and service mark ELDORADO STONE. The only difference between the <eldoradoculturedstone.com> domain name and the Complainant’s ELDORADO STONE trademark and service mark is the addition of the descriptive term “cultured” between the two words forming the Complainant’s ELDORADO STONE mark. The term “cultured” in this context is descriptive because the Complainant’s products and services are oriented around production of artificial stone veneer products and the term “cultured” is descriptive of articles which have been produced in a controlled environment, i.e., cultured pearls. The Respondent’s addition of the descriptive term “cultured” to form the <eldoradoculturedstone.com> domain name actually increases the likelihood of confusion because of the term’s obvious relationship with products and services being offered under the ELDORADO STONE Marks. As the Complainant has long established the goodwill of its ELDORADO STONE Marks in relation to its artificial stone veneer products and manufacturing services, the disputed domain name <eldoradoculturedstone.com> with the term “cultured” immediately prior to the word “stone” is more likely to cause confusion in the market place because consumers will naturally assume the disputed domain name <eldoradoculturedstone.com> belongs to or is otherwise authorized or sponsored by the Complainant.

The Complainant submits that it has not authorized the Respondent to use any of the ELDORADO STONE Marks nor to register the disputed domain name. The Respondent cannot demonstrate that it has any rights or legitimate interests in the domain name. The Respondent cannot show that it is making a legitimate noncommercial use or fair use of the domain name. Upon information and belief, the Respondent appears to be operating a sponsored link, Pay per click website at “www.eldoradocutlturedstone.com”, in which the Respondent derives revenue based on the number of times visitors click on links appearing on the website. Such commercial use of the domain name does not constitute fair use of the Complainant’s ELDORADO STONE marks. The Complainant further contends that it appears that the Respondent is using the domain name to misleadingly divert consumers to its and its sponsors’ websites for its own commercial gain.

The Respondent registered the domain name without any bona fide basis for such registration in an attempt to unfairly capitalize on the goodwill of the Complainant’s well-known ELDORADO STONE Marks. Bad faith is found if it is unlikely that the registrant would have selected the domain name in question without knowing of the reputation of the trademark or service mark. Such a finding is in the Complainant’s view particularly apt where the complainant’s trademark is well-known, as is the case with the ELDORADO STONE Marks. The Complainant submits that the Respondent registered the domain name with the specific intent to cause consumer confusion and free ride on the vast goodwill associated with the Complainant’s ELDORADO STONE Marks. Upon information and belief, the Respondent registered the domain name with full knowledge that it is confusingly similar to the Complainant’s ELDORADO STONE Marks in order to re-route to the Respondent’s website Internet traffic likely destined for the Complainant’s websites. The Respondent has been named respondent in numerous prior decisions under the Policy with regard to other domain names, all of which have been adverse to the Respondent. Such evidence demonstrates a bad faith pattern of conduct on the part of the Respondent, specifically of registering domain names in order to prevent the respective owners of trademarks and service marks from reflecting their marks in corresponding domain names. Upon information and belief, the Respondent uses the domain name to operate a sponsored link, Pay per click website from which it derives revenue through Internet advertising. The Respondent has created an online directory at the website located at “www.eldoradoculturedstone.com”. Each of the listings in the Respondent’s directory appears to be an advertiser-supported listing from which the Respondent derives income based upon the number of times visitors of the Respondent’s website click on an item in the listing. The Respondent’s chances for increased revenues rise in direct proportion to the amount of Internet traffic that the Respondent attracts to its online directory. The Complainant submits that such is the primary reason the Respondent registered and uses the Domain Name to free ride on the goodwill associated with the Complainant’s ELDORADO STONE Marks and the Internet traffic intended for the Complainant’s Webistes. Such use constitutes the Respondent’s bad faith. In addition, the Respondent’s online directory features links to third parties who provide goods and services related to the Complainant’s products and services, some of which are direct competitors of the Complainant. The Complainant submits that the use of the domain name in this manner is likely to confuse consumers into believing that the Respondent and the businesses listed in the Respondent’s online directory are affiliated with or endorsed by the Complainant, or that the Respondent’s use of the domain name is authorized by the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order for the domain name to be transferred to it:

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

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

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

The Respondent has not filed a response. The Panel has to rely on the Complainant’s statements and documents and regard them as unchallenged evidence.

A. Identical or Confusingly Similar

The Complainant has registrations for the ELDORADO STONE Marks in the United States of America. It has made long and prominent use of its trademarks for its products and services in this country and elsewhere.

The disputed domain name is <eldoradoculturedstone.com>. The primary element of this domain name is “Eldorado”. It begins with “Eldorado” and ends with “Stone” and these two words combined, also form one of the trademarks of the Complainant, i.e. ELDORADO STONE. The addition by the Respondent of the word “cultured”, a descriptive word to form the disputed domain name <eldoradoculturedstone.com> gives rise to confusion since the Complainant’s products include artificial veneer stone products. The disputed domain name is likely to be thought of as belonging to or authorized or sponsored by the Complainant. It is confusingly similar to the trademarks and service mark of the Complainant.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent is Keyword Marketing. It is therefore not commonly known by the disputed domain name. There appears to be no use or preparation to use the disputed domain name for a bona fide offering of goods and services. The website with the disputed domain name links to websites of competitors. The Respondent is operating a sponsored link a, pay per click website at “www.eldoradoculturedstone.com” and derives revenue based on the number of times visitors click on the links appearing therein. It is using the disputed domain name to misleadingly divert consumers to its and its sponsors’ websites for its own commercial gain. Such use does not constitute fair use. It has therefore no rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent has registered the disputed domain name to capitalize on the goodwill of the Complainant’s trademarks and service mark. Since the Complainant’s trademarks and service mark are widely known, it is unlikely that the Respondent chose the disputed domain name in question without being aware of them. As the disputed domain name is confusingly similar to the Complainant’s trademarks and service mark, the intention of the Respondent is clear. Its aim is to route Internet users to its website which is essentially a sponsored link, a pay - per - click website, generating revenue for the Respondent every time an Internet user clicks on a link listed in its directory.

Evidence produced before the Panel shows a pattern of conduct. The Respondent has registered domain names for the purpose of creating sponsored link, pay- per- click websites and such disputed domain names have been subject to previous UDRP proceedings and have either been cancelled or transferred to the complainants. Particulars of a few of such proceedings are as follows:

1. Bed Direct Nationwide Limited v. Keyword Marketing, Inc., WIPO Case No. D2007-0406 (<hellibeds.com>);

2. The Pillsbury Company v. Keyword Marketing, Inc., NAF Claim No. FA0608000780315 (<pillsburystore.com>);

3. Edmunds.com, Inc. v. Web Advertising, Corp. / Keyword Marketing, Inc., WIPO Case No. D2006-1380 (<edmundscar.com> and <edmundz.com>);

4. Giata Gesellschaft fьr die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137 (<giata-hotelguide.com>);

5. La Sociйtй des Autoroutes Paris Rhin Rhфne v. Keyword Marketing, Inc., WIPO Case No. D2006-1270 (<parirhinrhone.com>);

There is bad faith on the part of the Respondent in registering and using the domain name.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 name <eldoradoculturedstone.com> be transferred to the Complainant.

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Hariram Jayaram
Sole Panelist

Dated: August 21, 2007