Gilbarco Inc. v. Collectibles
Claim Number: FA0207000115683
Complainant is Gilbarco, Inc., Greensboro, NC (“Complainant”) represented by Steven N. Terranova, of Withrow & Terranova, PLLC. Respondent is Collectibles, Austin, TX (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gilbarco.info>, registered with Intercosmos Media Group.
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.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 16, 2002; the Forum received a hard copy of the Complaint on July 18, 2002.
On July 16, 2002, Intercosmos Media Group confirmed by e-mail to the Forum that the domain name <gilbarco.info> is registered with Intercosmos Media Group and that Respondent is the current registrant of the name. Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group 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 July 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 7, 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 firstname.lastname@example.org 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 August 21, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s <gilbarco.info> domain name is identical to Complainant’s GILBARCO registered mark.
2. Respondent does not have any rights or legitimate interests in the <gilbarco.info> domain name.
3. Respondent registered and uses the <gilbarco.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the holder of numerous trademark registrations as listed on the Principal Register of the U.S. Patent and Trademark Office (“USPTO”) reflecting the GILBARCO mark. More specifically, Complainant holds the following registration numbers securing its rights in the GILBARCO mark: Reg. No. 811,687 for the GILBARCO mark registered on February 11, 1966 indicating first use as March 15, 1948; Reg. No. 2,075,229; Reg. No. 1,229,399 (stylized); and, Reg. No. 1,278,650 (stylized). Complainant’s registered trademarks denote numerous products that address automotive needs, from fluid meters, automatic shut-off nozzles and fuel dispensers to automotive lifts and remote controlled fluid dispensing pumps.
Complainant also contends that it has acquired a significant amount of international fame in the petroleum industry, stating that its fuel dispensers and similar products disseminated under the GILBARCO mark have become synonymous with Complainant and its products.
Respondent registered the subject domain name, <gilbarco.info>, on January 18, 2002. Complainant’s investigation of Respondent’s use of the disputed domain name reveals that when Internet users key the <gilbarco.info> domain name they are redirected to <marconipumps.com>. At the <marconipumps.com> website, viewers are confronted with a disclaimer which reads, “[T]his site is in no way associated with the Danaher company, gilbarco inc., marconi systems. . .” Complainant’s research of Respondent’s website also reveals that the secondary website does not, in fact, contain any news or information of any kind. Furthermore, Complainant has been involved in a previous ICANN dispute with the current Respondent, indicating that Respondent has previously registered domain names that incorporate others’ marks.
Subsequent to Respondent’s registration of the infringing domain name, Complainant initiated contact via counsel. Mr. Robert Foley, the administrative contact for Respondent, by way of response on July 1, 2002, indicated that the suggested value of the domain name registration was $12,500,000. Respondent’s initial asking price for the domain name registration was $150,000, and $300,000 for any other parties other than Complainant who may be interested in purchasing its rights in the domain name.
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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Complainant has established rights in the GILBARCO mark through completing numerous registrations with the USPTO and continuous use of the mark in commerce since at least 1948.
Respondent’s <gilbarco.info> domain name is identical to Complainant’s GILBARCO mark. Respondent’s domain name deviates only by the insubstantial addition of the generic top-level domain (“gTLD”) “.info.” The use of top-level domains is required of registrants when securing a domain name registration, and therefore, cannot be used as a distinguishing factor. Respondent’s domain name reflects Complainant’s mark in its entirety, and the second-level domain is an exact replica of Complainant’s GILBARCO mark. See 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); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of generic top-level domain names is . . . without legal significance since use of a gTLD is required of domain name registrants").
Accordingly, the Panel finds that Respondent’s <gilbarco.info> domain name is identical to Complainant’s GILBARCO mark; thus, Policy ¶ 4(a)(i) has been satisfied.
Respondent did not submit a Response in this proceeding, and Complainant’s averments have gone uncontested. Therefore, the Panel may accept all of Complainant’s reasonable assertions as true, and hold Respondent’s failure to respond and assert circumstances that would suggest rights or legitimate interests in the subject domain name as a failure to substantiate its rights under Policy ¶ 4(a)(ii). 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); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the Respondent to demonstrate that it has rights or legitimate interests); see also Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent’s subject domain name has been lying in disuse since its registration, nearly seven months ago. Although Respondent’s passive holding of the domain name for seven months alone is not evidence of lack of rights or legitimate interests under Policy ¶ 4(a)(ii), other relevant circumstances corroborate such a finding. Complainant has provided unrefuted evidence of Respondent attempting to sell its rights in the domain name for a fee that far surpasses anything Respondent could claim for out-of-pocket expenses. Respondent’s attempts to hold an undeveloped website in conjunction with advertising the sale of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(a)(i), nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(a)(iii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Furthermore, Complainant has provided the Panel with evidence suggesting Respondent is merely using the famous GILBARCO mark to divert interested Internet users to its <marconipumps.com> website. Respondent maintains a disclaimer on its website corroborating this, which states that the redirected website is not affiliated with Complainant or any of a number of other trademark holders. Respondent’s attempt to unfairly profit from the skills, advertising and expertise of Complainant fails to demonstrate rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(iii). See 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); 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).
There is no information that suggests a legitimate connection exists between Respondent and the <gilbarco.info> domain name, or that Respondent is commonly referred to by the <gilbarco.info> identifier under Policy ¶ 4(c)(ii). Given the strength of Complainant’s mark and its longevity of use since 1948, there is a presumption that Respondent does not have rights or legitimate interests in a domain name that incorporates Complainant’s mark into its second-level domain. 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 CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
As previously stated in the Findings, Complainant’s Submission includes an account of Respondent’s administrative contact indicating that he would be willing to transfer the domain name registration for an exorbitant $150,000. It has been well established that when circumstances indicate that Respondent has registered a domain name primarily for the purpose of manipulating the Complainant into purchasing the registration, Respondent’s behavior evidences bad faith registration and use under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the Respondent demonstrated bad faith by registering the domain name with the intent to transfer it to Complainant for $3,000, an amount in excess of its out of pocket costs).
Furthermore, Complainant provides evidence that Respondent has habitually registered domain names incorporating the trademarks of others. Complainant’s Submission states:
February 11, 2002, Complainant filed a Complaint against Respondent regarding the domain name <gilbarcoonline.com>. A notice of Decision was issued by the National Arbitration Forum on March 26, 2002. In that decision, [the] Panelist. . .found that Respondent had no rights or legitimate interests in the name <gilbarcoonline>.
When considering the totality of circumstances surrounding Respondent’s registration of the subject domain name, it is evident that Respondent is attempting to benefit from the advertising and financial expenditures of others. Respondent’s disclaimer on the eventual destination, the <marconipumps.com> website, makes this assertion clear. Respondent’s disclaimer states that the website is not affiliated with the numerous well-known trademarks that appear in the domain names that routed users to the <marconipumps.com> website. Respondent’s habitual registration of famous and established trademarks in domain names corroborates a finding of opportunistic bad faith under Policy ¶ 4(a)(iii). See Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that Respondent's registration and use of the famous CHANEL mark suggests opportunistic bad faith); see also Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name ‘singaporeairlines.com’ is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <gilbarco.info> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 23, 2002
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