Trane International Inc. v. bethany air
Claim Number: FA2108001959169
Complainant is Trane International Inc. (“Complainant”), represented by Christopher B. Lay of IpHorgan Ltd, Illinois, USA. Respondent is Bethany Air (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tranecontractor.com>, <tranecontractor.info> and <tranecontractor.net>, registered with GoDaddy.com, LLC.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 11, 2021. The Forum received payment on August 11, 2021.
On August 12, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tranecontractor.com>, <tranecontractor.info> and <tranecontractor.net> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tranecontractor.com, postmaster@tranecontractor.info, postmaster@tranecontractor.net. Also on August 18, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 13, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Trane International Inc., offers heating, ventilation and air conditioning (“HVAC”) products and services. Complainant has rights in the TRANE mark based on registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <tranecontractor.com>, <tranecontractor.info> and <tranecontractor.net> domain names are identical and/or confusingly similar to Complainant’s TRANE mark.
Respondent lacks rights and legitimate interests in the <tranecontractor.com>, <tranecontractor.info> and <tranecontractor.net> domain names as it is not commonly known by the domain names and Complainant has not licensed, authorized, or permitted Respondent to use the TRANE mark. Additionally, Respondent does not use the domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent uses the domain names to redirect Internet users to Respondent’s commercial website at “www.bethanyair.com”. Also, Respondent’s website uses, without authorization, the TRANE logo, thereby falsely implying that Respondent is affiliated with or endorsed by Complainant as one of its contractors.
Respondent registered the <tranecontractor.com>, <tranecontractor.info> and <tranecontractor.net> domain names in bad faith with actual knowledge of Complainant’s rights in the TRANE mark based on the fame of the mark, Respondent’s willful redirection of three domain names to Respondent’s website, and Respondent’s use of the TRANE logo on the website. Respondent is using the domain names in bad faith for marketing purposes and to redirect Internet users to Respondent’s website which offers for sale HVAC products of Complainant’s competitors. In response to a cease-and-desist letter dated July 20, 2021, Respondent offered the domain name <tranecontractor.com> for sale to Complainant for $20,000. Additionally, Respondent has engaged in a pattern of bad faith registration.
B. Respondent
Respondent failed to submit a formal Response in this proceeding, despite having corresponded with the Forum. The Forum determined that this correspondence does not constitute a Response. The Panel agrees with this determination.
FINDINGS
Complainant has established all the elements entitling it to relief.
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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the domain names should be cancelled or transferred:
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have been registered and are being used in bad faith.
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(f), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint. However, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (‘Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint’).
Complainant has shown that it has rights in the TRANE mark based on numerous registrations with the USPTO (e.g., Reg. No. 623,871, registered March 27, 1956). The Panel finds Respondent’s <tranecontractor.com>, <tranecontractor.info> and <tranecontractor.net> domain names to be confusingly similar to Complainant’s TRANE mark because they merely add the generic term “contractor” to that mark, which not only fails to distinguish the domain names from the mark but rather serves to reinforce the mark’s distinctiveness. The inconsequential generic top-level domains (“gTLDs”) “.com”, “.info” and “.net” may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <tranecontractor.com>, <tranecontractor.info> and <tranecontractor.net> domain names were all registered on November 9, 2010, many years after Complainant registered its TRANE mark. They resolve to Respondent’s commercial website at “www.bethanyair.com”, which displays Complainant’s TRANE logo and offers for sale HVAC products of other manufacturers that compete directly with Complainant.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <tranecontractor.com>, <tranecontractor.info> and <tranecontractor.net> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that Respondent has registered or acquired the domain names primarily for the purpose of selling, renting or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain names; or
(ii) Respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 or of a product or service on its website or location.
As to paragraph 4(b)(i), Respondent’s offer to sell the <tranecontractor.com> domain name for $20,000 in response to Complainant’s cease and desist letter dated July 20, 2021 does not establish that such sale was Respondent’s primary purpose when registering the domain name on November 9, 2010.
As to paragraph 4(b)(ii), the <tranecontractor.com>, <tranecontractor.info> and <tranecontractor.net> domain names convey the representations that they are registered by a third-party contractor authorized by Complainant to sell and service its products. Accordingly, the Panel is not persuaded that Respondent registered the domain names in order to prevent Complainant from reflecting its TRANE mark in the corresponding domain names.
As to paragraphs 4(b)(iii) and (iv), the circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s TRANE mark when Respondent registered the <tranecontractor.com>, <tranecontractor.info> and <tranecontractor.net> domain names and did so primarily for the purpose of disrupting the business of a competitor; and that, by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the sponsorship, affiliation, or endorsement of Respondent’s website and of the goods promoted on that website.
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tranecontractor.com>, <tranecontractor.info> and <tranecontractor.net> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: September 14, 2021
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