Honeywell International Inc. v. Air Products and Controls Inc.
Claim Number: FA0707001045238
Complainant is Honeywell International Inc. (“Complainant”), represented by Peter
S. Sloane, of Ostrolenk, Faber, Gerb & Soffen, LLP,
1180 Avenue of the
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <systemssensor.com>, registered with Omnis Network, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 25, 2007.
On July 27, 2007, Omnis Network, LLC confirmed by e-mail to the National Arbitration Forum that the <systemssensor.com> domain name is registered with Omnis Network, LLC and that Respondent is the current registrant of the name. Omnis Network, LLC has verified that Respondent is bound by the Omnis Network, LLC 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 August 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 23, 2007 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 28, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <systemssensor.com> domain name is confusingly similar to Complainant’s SYSTEM SENSOR mark.
2. Respondent does not have any rights or legitimate interests in the <systemssensor.com> domain name.
3. Respondent registered and used the <systemssensor.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Honeywell International Inc., is an industry leader in the creation of technology and the manufacturing of a wide range of aerospace, automotive, power generation, specialty chemicals, fibers, plastics and home and industry control systems. Complainant has continuously used the SYSTEM SENSOR mark in connection with fire alarm system and the <systemsensor.com> domain name to market its products under the SYSTEM SENSOR mark. Complainant has registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,822,400 issued February 22, 1994).
Respondent, Air Products and Controls Inc., is a competitor of Complainant; also in the business of manufacturing fire detection, alarm and safety systems. Respondent’s <systemssensor.com> domain name was registered on July 25, 2005 and redirects Internet users to Respondent’s <ap-c.com> where it offers goods competing with those offered under Complainant’s mark.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint 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.”).
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.
Complainant has sufficiently established its rights in the SYSTEM SENSOR mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).
Respondent’s <systemssensor.com> domain name adds an extra letter “s” to the word SYSTEM, omits the space between the words SYSTEM and SENSOR and includes the generic top-level domain (“gTLD”) “.com.” It is well-established that the addition of a letter, the omission of a space and the addition of a gTLD do not negate a finding of confusing similarity. The Panel thus finds pursuant to Policy ¶ 4(a)(i) that Respondent’s <systemssensor.com> domain name is confusingly similar to Complainant’s SYSTEM SENSOR mark. See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusing similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), cert. denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s <plannedparenthood.com> domain name nearly identical); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must initially make out
a prima facie case that Respondent
has no rights or legitimate interests in the domain name at issue. See
Inc. v. VeneSign
Respondent has failed to submit a Response to the Complaint. The Panel thus presumes that Respondent has no rights or legitimate interests in the <systemssensor.com> domain name, but will still consider all the available evidence with respect to the factors listed in Policy ¶ 4(c) before making its final determination. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Nowhere in the record, including Respondent’s WHOIS information, does it indicate that Respondent is or ever has been commonly known by the <systemssensor.com> domain name. Further, Respondent has not sought, nor has Complainant granted, a license or permission to Respondent to use Complainant’s mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Respondent’s <systemssensor.com> domain name redirects Internet users to Respondent’s competing commercial website under the <ap-c.com> domain name. This site offers goods that are similar to and in direct competition with those offered under Complainant’s mark. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The <systemssensor.com> domain name is confusingly similar to Complainant’s mark and redirects Internet users to another commercial website, which offers goods that compete with those goods offered under Complainant’s mark. Respondent is a competitor of Complainant. Consequently, the Panel finds that Respondent registered and is using the disputed domain name in bad faith for the purpose of disrupting Complainant’s business pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Moreover, Respondent is presumably financially benefiting from the diversion of Internet users to its own competing website by taking advantage of the confusing similarity between the disputed domain name and Complainant’s mark. The Panel finds this to be further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <systemssensor.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 11, 2007
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