ERICO International Corporation v. Bee
Net Co., Ltd.
a/k/a Exothermic Welding Co., Ltd.
Claim Number: FA0203000105953
PARTIES
Complainant
is ERICO International Corporation,
Solon, OH (“Complainant”) represented by Peter
B. Korte. Respondent is Bee Net Co., Ltd. a/k/a Exothermic Welding
Co., Ltd., Bangkok, THAILAND (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <cadweld.net>,
registered with Gandi.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 20, 2002; the Forum received a hard copy of the
Complaint on March 25, 2002.
On
March 29, 2002, Gandi confirmed by e-mail to the Forum that the domain name <cadweld.net> is registered with Gandi
and that Respondent is the current registrant of the name. Gandi has verified that Respondent is bound
by the Gandi 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 29, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 18,
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@cadweld.net by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 29, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.” 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations:
The
disputed domain name is identical to Complainant’s mark. Respondent has no connection with
Complainant and thus has no rights or legitimate interest with the disputed
domain name. By using the disputed
domain name, 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 source, sponsorship, affiliation, or endorsement
of Respondent’s website. Therefore,
Respondent has registered and used the disputed domain name in bad faith.
B.
Respondent did not submit a Response in this proceeding.
FINDINGS
Complainant owns numerous registered
trademarks in the CADWELD mark.
Complainant owns several marks registered with the United States Patent
and Trademark Office, including; Reg. No. 1,091,347, registered on May 16, 1978
and Reg. No. 704,962, registered on September 27, 1960. Complainant also registered the CADWELD mark
in several countries throughout the world including Respondent’s home country
of Thailand, Reg. No. 91,048, registered on November 26, 1984. Since 1939, Complainant has used the CADWELD
mark in connection with superior engineered products and has aggressively
marketed the mark and subsequently has annual sales in excess of $35
million. Complainant uses
<cadweld.com> to promote its product over the Internet.
Respondent registered <cadweld.net>
on March 19, 2001 and redirects Internet users to Respondent’s website located
at <exothermicweld.com>, which promotes Respondent’s product and which is
a business that competes with Complainant.
Further, Respondent’s website <exothermicweld.com> includes the
claim that Respondent’s product is cheaper than Complainant’s product.
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the 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.
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 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 urges that the disputed
domain name is identical to Complainant’s mark based on the mark’s registration
with the USPTO as well as with agencies in Respondent’s home country of
Thailand.
Respondent uses Complainant’s mark in its
entirety and merely adds “.net.” Such a
minor difference does not create the necessary distinction to differentiate the
disputed domain name from the mark.
Therefore, the disputed domain name <cadweld.net>
is identical to Complainant’s
CADWELD mark. 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 (2d 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."); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1146 (9th
Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . .
assume, as a rule of thumb, that the domain name of a particular company will
be the company name [or trademark] followed by ‘.com.’”).
The disputed domain name is identical to
Complainant’s CADWELD mark and the Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant urges that it has rights in
the mark and that Respondent does not.
Respondent has not filed a Response and in such circumstances, the Panel
is permitted to presume that Respondent has no rights or legitimate interests
in <cadweld.net>.
See Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no legitimate interest in the domain names). Since a Response was not filed, the Panel
also will presume that all allegations in the Complaint are true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence).
Respondent uses a domain name that is
identical to Complainant’s mark to divert users to a website that offers goods
in competition with Complainant’s goods.
This behavior by Respondent does not demonstrate a bona fide use
connected with the disputed domain name pursuant to Policy ¶ 4(c)(i). See Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21,
2000) (finding that the disputed domain names were confusingly similar to
Complainant’s mark and that Respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona fide offering of goods); see
also Vapor Blast Mfg. Co. v. R &
S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that
Respondent’s commercial use of the domain name to confuse and divert Internet
traffic is not a legitimate use of the domain name).
By using a domain name that is identical
to Complainant’s mark, Respondent has redirected users that are seeking to
reach Complainant’s products. These
actions are not a legitimate, non-commercial or fair use pursuant to Policy ¶
4(c)(iii). See Caterpillar Inc. v. Quin, D2000-0314
(WIPO June 12, 2000) (finding that Respondent does not have a legitimate
interest in using the domain names <caterpillarparts.com> and
<caterpillarspares.com> to suggest a connection or relationship, which
does not exist, with Complainant's mark CATERPILLAR); see also AltaVista v. Krotov, D2000-1091 (WIPO
Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected
websites does not constitute a legitimate interest in the domain name); see
also 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).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant urges that Respondent acted
in bad faith. Respondent registered a
domain name that incorporates its competitor’s CADWELD mark in its entirety and
simply adds the generic top-level domain “.net.” Further, Respondent redirects users to its own website located at
<exothermicweld.com>, which offers competing goods. This activity is evidence of bad faith
registration pursuant to Policy ¶ 4(b)(iii).
See EthnicGrocer.com, Inc.
v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad
faith where Respondent’s sites pass users through to Respondent’s competing
business); see also Surface
Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001)
(finding that, given the competitive relationship between Complainant and
Respondent, Respondent likely registered the contested domain name with the
intent to disrupt Complainant's business and create user confusion).
By using a domain that is identical to
Complainant’s mark to redirect users to a website that offers competing goods,
Respondent has used <cadweld.net> in bad faith pursuant to Policy ¶
4(b)(iv). See TM Acquisition Corp. v. Carroll, FA
97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used
the domain name, for commercial gain, to intentionally attract users to a
direct competitor of Complainant).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
should be hereby granted.
Accordingly, it is Ordered that the <cadweld.net> domain name be transferred
from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: May 9, 2002.
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