DECISION

 

K & N Engineering, Inc. v. Filter Charger Mfg. Co.

Claim Number: FA0203000105736

 

PARTIES

The Complainant is K & N Engineering, Inc., Riverside, CA (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale, LLP.  The Respondent is Filter Charger Mfg. Co., Selangor, Malaysia (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <filtercharger.com>, registered with Tucows.

 

PANEL

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.

 

Charles A. Kuechenmeister is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 1, 2002; the Forum received a hard copy of the Complaint on March 5, 2002.

 

On March 5, 2002, Tucows confirmed by e-mail to the Forum that the domain name <filtercharger.com> is registered with Tucows and that the Respondent is the current registrant of the name.  Tucows has verified that Respondent is bound by the Tucows 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 March 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 25, 2002 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 postmaster@filtercharger.com by e-mail.

 

A timely Response was received and determined to be complete on March 25, 2002.

 

On March 29, 2002, Complainant timely filed an additional submittal.

 

On April 2, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.

 

After the deadline for filing a Response but before April 2, 2002, the Forum received hardcopy Exhibits consisting of WHOIS reports relating to the domain-names described in Section C of the Response with corresponding names of Complainant, Respondent, Johnson & Johnson, and Procter & Gamble.

 

On April 2, 2002, Respondent sent an e-mail message to the Forum stating that an un-translated attachment, written in a language not English, was the letter of the Malayan Registrar of Companies approving Respondent's company name "Filter Charger Manufacturing Sdn Bhd."

 

On April 4, 2002, Complainant sent an e-mail message to the Forum objecting on various grounds to the Panel considering the April 2, 2002 e-mail sent by Respondent.

 

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the owner of numerous trademark registrations for the mark FILTERCHARGER, including U.S. trademark registration number 1,281,461, Australian trademark registration number 737,432, Japanese trademark registration number 2,531,649 and 2,672,810, and New Zealand trademark registration number 279,300.  All of these indicate a first use in 1982 and cover air filters for automobile and motorcycle engines.

 

Complainant has invested substantial time, effort and money developing its trademarks and goodwill associated therewith.

 

Many years after Complainant's adoption and first use of the FILTERCHARGER mark, Respondent registered the domain name <filtercharger.com> with a bad faith intent to profit from the domain.

 

The domain <filtercharger.com> is identical to the Complainant's FILTERCHARGER trademark except for the top level domain ".com".

 

Respondent has no right or legitimate interest with respect to <filtercharger.com>.  Respondent is not licensed or authorized by Complainant to use the FILTERCHARGER mark, and Respondent is not known by the name FILTERCHARGER.

 

Notwithstanding Respondent's registration of <filtercharger.com> in the name Filter Charger Mfg Co, the Respondent is not doing business under that name.  Repeated searches by Complainant failed to reveal any information on any ongoing business concern named "Filter Charger Mfg Co."

 

Respondent uses <filtercharger.com> to route Internet traffic to a website at <autoairgroup.com> which offers automobile air-conditioning parts and accessories.  This website provides information for purchasing automotive air conditioning.

 

Respondent's use of <filtercharger.com> is with the intent to secure commercial gain and to divert Complainant's customers to a competitor's website.

 

B. Respondent

The Complainant's mark FILTERCHARGER is closely identified with automotive air filters only.  Products manufactured by Respondent are refrigerant filters in air conditioning units that are totally different from Complainant's air filter products.

 

Complainant's FILTERCHARGER trademark is not registered in Malaysia, the site of Respondent's plant.

 

The mark FILTERCHARGER is a generic name made up of two characters which have their own separate meanings, "filter" being a device containing a porous material used to extract impurities, and "charger" being  an instrument that replenishes.  Thus, a "filter charger" is a product that filters and charges any liquid or gas that passes through, like "the filter charger used in our automotive air conditioning."

 

Respondent is currently incorporating under the name "Filter Charger Mfg Co" and is awaiting the approval of that name by the Malaysian Registrar of Companies.

 

Respondent has registered <filtercharger.com> to direct potential customers to its website at <AutoAirGroup.com>.   Respondent has also registered other domains which are currently directed back to its website, including <FilterChargers.com>, <FilterCharger.biz>, <AutoAirCond.com>, and <FilterDrier.com>.  Respondent is additionally searching for more domains for its new products, and is negotiating "with a few current existing domain owners which are important to our Auto Air Group."  (Response, p. 4)

 

This type of registration of generic domain names is both common and important for any manufacturing company in order to attract potential customers.  Complainant, for example, has registered the domain <AirFilter.com> to redirect Internet traffic back to its own official site.  Others which have done the same thing are as follows:  Johnson & Johnson has registered <Examination-Gloves.com>, and <Surgical-Gloves.com>. Procter & Gamble has registered <Tissue.com>.

 

C. Additional Submissions

On March 19, 2002, Complainant filed an additional submission addressing the issues raised by the Response.  Respondent's assertion that it is in the process of incorporating under the name Filter Charger Mfg Co is insufficient to demonstrate any right to the mark FILTERCHARGER, especially because there is no effort to substantiate any such use by Respondents prior to the inception of this dispute.  Also, there is no evidence to support Respondent's claim that "filter charger" is a generic name.  It simply has no such usage.

 

Complainant may not have a Malaysian trademark registration for FILTERCHARGER, but it does have common law trademark rights therein, as it has traded extensively in the Pacific Rim area specifically including Malaysia.

 

While it is true that Respondent's air conditioning parts and accessories do not compete directly with Complainant's automotive air filters, the relevant inquiry is whether Respondent's use of the mark FILTERCHARGER is likely to create confusion, and in this case there is ample evidence of the likelihood of confusion.

 

FINDINGS and DISCUSSION

The Panel accepts and has considered the Exhibits filed by Respondent on April 2, 2002, as they are specifically referenced and accurately described in the Response.  The Panel rejects and does not consider the e-mail message and attachment tendered by Respondent on April 2, 2002.  The Panel is unable to read the attachment, except to note that it has the name "Filter Charger Manufacturing Sdn Bhd" printed on it and may in fact be an official document.  Beyond that it is unintelligible to the Panel.  More importantly, however, even if it says what Respondent represents that it does, unless it somehow evidences Respondent's use of or demonstrable preparations to use the name "Filter Charger Manufacturing Sdn Bhd" or "Filter Charger Mfg Co" in a bona fide offering of goods or services prior to notice to Respondent of this dispute, the document is irrelevant.  There is no representation that it does so.  It was not timely filed, is not in the language of the Registration Agreement, and appears to have no probative value.  The Panel does not consider this tendered submission.  Rule 2(d) and 11, Rules for Uniform Domain-Name Dispute Resolution Policy, and Policy Paragraph 4(c)(i).

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

 

Identical or Confusingly Similar

Complainant owns trademark registrations for the FILTERCHARGER mark, including United States Registration Number 1,281,461.  Complainant has been using the mark in commerce since 1963.

 

Complainant's FILTERCHARGER trademark has been identified with automotive air filters around the world, including in Malaysia, having at least two outlets for its products there (Complaint Exhibit C), and other countries around the Pacific Rim region, including Australia, Hong Kong, Indonesia, Japan, Korea, New Zealand, the Philippines, Singapore, Taiwan, and Thailand.  Although Complainant's mark FILTERCHARGER is not registered with the trademark authorities in Malaysia, Complainant has established a common law right to that mark in addition to its registrations.

 

The <filtercharger.com> domain name registered by Respondent is identical to Complainant’s FILTERCHARGER mark.  It incorporates the entirety of Complainant’s mark and merely adds the generic top-level domain name “.com.”  The addition of a generic top-level domain name to another’s registered mark is not enough to create a distinct mark capable of overcoming a claim of identical or confusing similarity.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Sporty's Farm L.L.C. vs. Sportsman's Market, Inc., 202 F.3d 489 (2nd Cir. 2000) cert. denied, 530 U.S. 1262 (2000), ("For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com.").

 

Respondent also asserts that <filtercharger.com> is made up of two generic terms, “filter” and “charger,” and therefore no one has exclusive rights over the disputed domain name.  Respondent offers no proof, however, and the Panel is unaware of any support for the proposition that "filtercharger," the result of combining those terms and using them as a single term, exists at all in common usage other than as Complainant's mark.  The two separate elements, "filter" and "charger" are generic, but "filter" and "charger" are not the name in contention, FILTERCHARGER is, and there is no evidence to support that as a generic term in which Complainant can claim no trademark rights.  On the contrary, the trademark registration authorities of no fewer than seven sovereign nations have concluded just the opposite and have registered that name as a trademark, for Complainant.  (Complaint Exhibit B)

 

Respondent further asserts that it manufactures refrigerant filters in air conditioner units only, whereas Complainant manufactures air filters for engines, and that even if the names are similar no confusion can occur because its product base is completely different from Complainant’s.  As Complainant points out, however, the primary issue is whether there is a likelihood of confusion caused by the allegedly infringing use of the mark.  Where the products of the parties involved are not identical, the likelihood of confusion issue extends to whether the public would "probably assume" that the product or service represented by a name is associated with the source of a different product represented by a similar name or mark.  Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1229 (C.A. Del.,1978).  Similarity or dissimilarity of the products themselves is only one of several factors to be considered.  Others include (1) the strength of Plaintiff’s mark; (2) the degree of similarity between marks; (3) the relationship between parties’ channels of trade; (4) the relationship between parties’ advertising; (5) the degree of care exercised by relevant consumers; (6) evidence of actual confusion, and (7) the intent of the allegedly infringing user.  Id.; Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.1961).

 

In the present case, both parties products are or involve filters for automotive applications.  (Complaint Exhibit D, Respondent’s web site)  Complainant’s FILTERCHARGER mark is famous world wide and was before Respondent registered <filtercharger.com>.  <Filtercharger.com> is virtually identical to Complainant’s FILTERCHARGER mark.  Both parties actively market and advertise via the Internet; the channels of trade are the same.  Similarly, both parties cater to the same automotive market.  The degree of care exercised by consumers of Complainant's and Respondent's products is not materially different from that exercised by consumers of other automotive consumer products generally.  The Complainant has received numerous complaints from its customers that they located Respondent’s web site and were confused about whether the Respondent was in some manner affiliated with, or owned by Complainant.  Finally, Respondent appears to be deliberately creating a likelihood of confusion between it and Complainant.  See, discussion below under the heading Registration and Use in Bad Faith.

 

Based upon the foregoing, the Panel finds and determines that <filtercharger.com> is identical or confusingly similar to the mark FILTERCHARGER, in which Complainant has rights.

 

Rights and Legitimate Interests

Apart from the mere registration of <filtercharger.com> by Respondent, the record is devoid of evidence of any right or legitimate interest Respondent may have in respect of FILTERCHARGER or the disputed domain-name.  While use of a name or a mark may give rise to a common law trademark right, Respondent's use of the disputed domain-name in this case is solely to attract the attention of Internet users.  Any person visiting the <filtercharger.com> website is immediately redirected to another website under the name <autoairgroup.com> at which goods and services are offered under the name AutoAir.  (Complaint Exhibit D)  This type of use is not a bona fide offering of goods or services within the meaning of Policy Paragraph 4(c)(i).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (commercial use of the domain-name to confuse and divert Internet traffic is not a legitimate use of the domain-name).  Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain-name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).  Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainants HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests).  Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

 

Even though Respondent lists its name as “Filter Charger Mfg Co,” Complainant’s search revealed no record or evidence that such a company really exists under or lawfully uses that name.  Respondent admits that its authority to use “Filter Charger Mfg Co,” or “Filter Charger Manufacturing Sdn Bhd” as its corporate name was still pending before the Malaysian Registrar of Companies as of March, 25, 2002, the date of the Response.  (Response Section 2.0)[1]  Accordingly, the Panel finds that Respondent is not commonly known as “Filter Charger Mfg Co,” or “Filter Charger Manufacturing Sdn Bhd” and has no rights or legitimate interest in respect of <filtercharger.com> based upon its attempt to incorporate under or to use either of those names as an assumed corporate name.  See, Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also, Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

 

Finally, Complainant, which clearly does have rights in the mark FILTERCHARGER, has not granted Respondent any right to use it as part of <filtercharger.com>, and indeed has commenced these proceedings to prevent that use.

 

Based upon the foregoing, the Panel finds and determines that Respondent has no right or legitimate interest in respect of the disputed domain-name.

 

Registration and Use in Bad Faith

Respondent asserts that it did not register the disputed domain name in bad faith because it is a generic name intended to redirect Internet traffic to Respondent’s main website located at <AutoAirGroup.com.>  Respondent asserts that these products do not compete with Complainant’s products, and lists other generic domain names that it has registered for the same purpose, including <filterdrier.com>, <filtercharger.biz>, <filterchargers. com> and <autoaircond.com.>  Respondent points out that Complainant has done the same thing, by registering a generic name-based domain, <AirFilter.com,> and that other companies have similar registrations to direct consumer attention to their websites and products.  (Response Section C.)  As was determined above, however, FILTERCHARGER is not a generic term.  Furthermore, these other registrations and uses do not involve the potential for confusion present with Respondent's registration and use of FILTERCHARGER.  The generic name-based domain argument simply does not work in this case.

 

Much of the evidence supporting the confusingly similar and no right or legitimate interest elements, as set forth above, also supports the bad faith use element.  The <filtercharger.com> domain-name is so confusingly similar to Complainant's mark that the Internet user will likely believe that there is an affiliation between Respondent and Complainant or that Complainant has at least endorsed this use of it.  Moreover, the fact that the disputed domain-name is used solely to attract attention and then divert traffic to another site, at which there is absolutely no use of or even reference to it, is convincing evidence of bad faith use.  Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain-name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

 

Based upon the foregoing, the Panel finds and determines that the Respondent registered and is using <filtercharger.com> in bad faith.

 

DECISION

 

Based upon the foregoing Findings and Discussion, the relief sought in the Complaint is granted.  The disputed domain-name  <filtercharger.com> is ordered transferred to Complainant.

 

 

Charles A. Kuechenmeister

Dated:  April 15, 2002