DECISION

 

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

Claim Number: FA0204000109362

 

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 NAMES

 

The domain names at issue are <filterchargers.com> and <filtercharger.biz>, registered with Intercosmos Media Group d/b/a DirectNIC.

 

PANEL

 

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no conflict in serving as Panelist in this proceeding.

 

Judge Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 5, 2002; the Forum received a hard copy of the Complaint on April 9, 2002.

 

On April 8, 2002, Intercosmos Media Group d/b/a DirectNIC confirmed by e-mail to the Forum that the domain names <filterchargers.com> and <filtercharger.biz> are registered with Intercosmos Media Group d/b/a DirectNIC and that the Respondent is the current registrant of the names.  Intercosmos Media Group d/b/a DirectNIC has verified that Respondent is bound by the Intercosmos Media Group d/b/a DirectNIC 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 April 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 29, 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@filterchargers.com, and postmaster@filtercharger.biz by e-mail.

 

A timely Response by the Respondent was received.  However, the exhibits were received after the deadline for response.

 

Complainant made a timely additional submission, which was received May 6, 2002. 

 

On May 14, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Ret.) as Panelist.

 

All of the submissions referenced above including Respondent’s exhibits were considered by the Panel.

 

RELIEF SOUGHT

 

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

 

PARTIES’ CONTENTIONS

 

A. Complainant

The Complainant K & N Engineering, Inc. (K & N) owns numerous trademark registrations for its FILTERCHARGER mark.  For almost twenty years K & N’s FILTERCHARGER trademark has been closely identified with automotive air filters around the world, including in Malaysia.  K & N has extensively sold its FILTERCHARGER goods around the world, including in Malaysia and around the Pacific-rim region.

 

K & N has invested substantial time, effort and money developing its trademarks and the goodwill associated therewith and has established trademark rights in the FILTERCHARGER mark.

 

The domain names, <filterchargers.com> and <filtercharger.biz>, are identical to the Complainant’s FILTERCHARGER trademark except for the addition of an “s” and the TLD string “.com” in the case of <filterchargers.com>, and the addition of the TLD string “.biz” in the case of <filtercharger.biz>.

 

Respondent is not known individually, or as a business, or in any other manner by FILTERCHARGER.  Repeated searches failed to reveal any information on any ongoing business concern named “Filter Charger Mfg, Co.”

 

At the time Respondent first received notice of this dispute, on November 27, 2001, Respondent had not made any plans to use the domain name for a bona fide commercial use.  To date, Respondent’s only use has been to use the <filtercharger.com> domain name to redirect potential K & N customers to Respondent’s web site <autoairgroup.com>, which offers similar automotive products.

 

The AutoAir web site provides information for purchasing its automotive filter products.  This use is a direct infringement of K & N’s rights in its FILTERCHARGER trademark.

 

Respondent’s use of the contested domain names is with the intent to secure commercial gain and to result in the intentional diversion of K & N’s customers to a competitor’s web site.

 

Complainant offered to compensate the Respondent its documented out of pocket costs in exchange for the domain names.  Respondent asserted that its costs were $6,200 dollars, and then demanded, “what will be our compensation, USD5,000.00 or USD10,000.00 on top of our cost?”

 

K & N’s business is being disrupted by a competitor because customers who would expect to find information about K & N’s FILTERCHARGER product on the Internet are likely to be directed to Respondent’s web site.

 

B. Respondent

Other than the registration of the trademark in a few countries, the FILTERCHARGER trademark has not been registered in Malaysia and many other countries where the Complainant claims to have distributors.

 

The Complainant’s products are air filters for automobile engines whereas the Respondent’s plant manufactures filter chargers that are for refrigerant filters in the air conditioning units that are totally different from K & N’s products.

 

FILTERCHARGER is a generic name made up by 2 generic names.

 

The Complainant has filed an additional administrative proceedings against the plural domain name of <FilterChargers.com> after filing a proceeding concerning the singular domain name <filtercharger.com>, which is an admission on the part of the Complainant that the disputed domain names are generic for the reason that a trademark cannot cover the plural form.

 

The name of the company has been approved by the Malaysian Registrar of Companies for purposes of registration.  The submission and approval came on March 2002, well before the notice of dispute.

 

The Respondent is doing legitimate business in good faith by advertising on the Internet to potential customers through its web site.

 

It was the Complainant who offered compensation immediately on March, 26, 2002 after the Respondent responded to Complainant’s administrative proceeding on the disputed domain <filtercharger.com>.

 

C. Additional Submissions

 

Complainant

Complainant’s extensive world-wide use of its FILTERCHARGER mark has created enormous secondary meaning, thereby establishing protectable  rights in the mark.  Respondent’s argument that the mark is not entitled to protection is legally incorrect, and not supported by any factual basis.

 

Complainant owns valid trademark registrations for FILTERCHARGER in Japan, New Zealand, Germany, and the European Community.  Even if Complainant has no protectable mark in Malaysia, which it does, Respondent’s use infringes Complainant’s rights in numerous countries around the world.

 

Complainant’s world famous FILTERCHARGER mark is closely associated with automotive air filters around the world and in Malaysia.  Respondent’s primary activities involve the manufacturing, trading and distribution of wide range of automobile air-conditioning parts and accessories.  The Complainant has received numerous complaints from its customers that they located Respondent’s web site and were confused about whether or not Respondent was in some manner affiliated with, or owned by Complainant.

 

On November 27, 2001 Complainant’s attorney sent a letter stating that Complainant owned the trademark FILTERCHARGER and that Respondent’s registration and use of the <filtercharger.com> domain name infringed Complainant’s rights.  Four months after receiving notice of this dispute, Respondent submitted its request to use “Filter Charger Manufacturing Sdn Bhd” with the Malaysian authorities.

 

Aside from this one document, obtained four months after Respondent was notified of the dispute, Respondent has not produced any other evidence that it is known as “Filter Charger Manufacturing Sdn Bhd.”  The most convincing evidence that Respondent is not known as “Filter Charger Manufacturing Sdn Bhd” is simply that Respondent admits it is actually known as “Autoair Holdings Berhad.”

 

FINDINGS

 

For the reasons set forth below, the panel finds that Complainant has proven each of the necessary elements to have the names transferred to Complainant.

 

DISCUSSION

 

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 and/or Confusingly Similar

 

The Panel finds that the disputed domain names are identical and confusingly similar to Complainant’s FILTERCHARGER mark.  The name <filtercharger.biz> is identical to Complainant’s mark because it incorporates the entirety of Complainant’s mark and merely adds the generic top-level domain name “.biz” to Complainant’s mark.  The addition of a generic top-level domain name is irrelevant when determining whether or not a domain name is identical or confusingly similar.  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 Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

 

The Panel finds that <filterchargers.com> is confusingly similar to Complainant’s FILTERCHARGER mark because it incorporates the entirety of Complainant’s mark and merely adds an “s” to the end of Complainant’s mark.  The addition of an “s” to the end of Complainant’s mark is not enough to create a distinct mark capable of overcoming a claim of confusing similarity.  See Nat’l Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”).

 

The Panel agrees with the Finding in a previous case involving these parties that FILTERCHARGER is not a generic term.  K & N Engineering, Inc. v. Filter Charger Mfg. Co, FA 105736 (Nat. Arb. Forum Apr. 15, 2002).

Complainant has proven this element as to each of the domain names.

 

Rights or Legitimate Interests

 

The Panel finds that Respondent is not commonly known as either of the disputed domain names and as a result has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See K & N Engineering, Inc. v. Filter Charger Mfg. Co, FA 105736 (Nat. Arb. Forum April 15, 2002) (“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 also 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

 

Respondent is using the disputed domain names to redirect Internet users to <autoairgroup.com>.   The use of a domain name, confusingly similar to Complainant’s mark, to redirect Internet users to a website unrelated to Complainant is not considered to be a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i).  See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also 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).

 

Complainant has proven this element as to each of the domain names.

 

Registration and Use in Bad Faith

The Panel finds that Respondent is using the disputed domain names which are identical and confusingly similar to Complainant’s mark in order to attract Internet users to Respondent’s website for Respondent’s commercial gain.  This is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant).

 

Respondent registered another infringing domain name that has infringed upon Complainant’s trademark rights.  Engaging in a pattern of registering infringing domain names is evidence of bad faith pursuant to Policy ¶ 4(b)(ii).  See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Caterpillar Inc. v. Miyar., FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).

 

Complainant has proven this element as to each of the domain names.

 

DECISION

 

Complainant has proven each of the required elements as to each of the domain names.  Therefore, it is ordered that the domain names <filterchargers.com> and <filtercharger.biz>, be transferred to Complainant.

 

 

 

 

Judge Karl V. Fink (Ret.), Panelist
Dated: May 22, 2002