Indiana Mills & Manufacturing, Inc. v. After-Sales Inc.
Claim Number: FA0808001220836
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <indianamills.com>, registered with Wild West Domains, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 18, 2008.
On August 18, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <indianamills.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. 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 22, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 11, 2008 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 22, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <indianamills.com> domain name is identical to Complainant’s INDIANA MILLS mark.
2. Respondent does not have any rights or legitimate interests in the <indianamills.com> domain name.
3. Respondent registered and used the <indianamills.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has been manufacturing and selling safety restraint systems throughout the world for more than four decades. Complainant has been conducting its business under the INDIANA MILLS mark since at least 1994. Complainant provides evidence of use of the mark since this time and subsequent registration of the INDIANA MILLS mark with various governmental trademark authorities, including the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,233,319 issued May 22, 2000) for land vehicle occupant restraint systems.
Respondent’s <indianamills.com> domain name was
registered on July 21, 1999 and redirected Internet users to Respondent’s
<after-sales.com> domain name where similar and competing seat belts and
other restraint systems were offered until Respondent received a cease-and-desist
letter from Complainant. Currently, the
disputed domain name resolves to a website displaying solely the phrase “This
domain is for
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.
The Panel recognizes that Complainant need not have registered its mark with a governmental trademark authority at the time that the disputed domain name was registered, so long as it can establish common-law rights in its purported mark at that same time. The Panel determines that common-law rights can be established pursuant to Policy ¶ 4(a)(i) through continuous use and secondary meaning. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant has operated under the INDIANA MILLS mark since
at least 1994 having later received trademark registrations of the mark with
numerous governmental authorities across the world, including with the
UKIPO. The Panel finds the evidence in
the record sufficient to establish Complainant’s common law rights in the
INDIANA MILLS mark under Policy ¶ 4(a)(i).
See Jerry Damson, Inc. v.
The <indianamills.com> domain name contains Complainant’s INDIANA MILLS mark in its entirety, omitting spaces and including the generic top-level domain (“gTLD”) “.com.” The omission of spaces and inclusion of a gTLD are typically considered irrelevant to a Policy ¶ 4(a)(i) analysis. Accordingly, the Panel finds the disputed domain name to be identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
As a preliminary matter, Complainant must establish a prima facie case under Policy ¶ 4(a)(ii)
that Respondent lacks rights and legitimate interests in the disputed domain name. See
VeriSign Inc. v. VeneSign
No response has been filed in this case. As a consequence, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name. However, in consideration of Policy ¶ 4(c), the Panel will still proceed to determine if all of the requisite elements are demonstrated in Complainant’s filings. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”).
The WHOIS information lists Respondent under only the alias “After-Sales Inc.” Moreover, Complainant has at no time provided permission or license to Respondent to utilize the INDIANA MILLS mark. Without any additional information in the record, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument).
The <indianamills.com> domain name originally redirected Internet users to Respondent’s <after-sales.com> domain name, where similar and competing safety restraint systems were advertised and sold. The Panel determines that this competitive use does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Currently, the <indianamills.com> domain name
resolves to a website displaying solely the phrase “This domain is for
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The <indianamills.com> domain name currently
resolves to a website stating: ““This domain is for
The disputed domain name originally redirected Internet users to a website that directly competed with Complainant. Consequently, the Panel finds that Respondent has registered and used the <indianamills.com> domain name in bad faith for the purpose of disrupting Complainant’s business in violation of Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Additionally, since similar and competitive products were
advertised and sold on the website originally displayed after the redirection,
the Panel may presume that this use commercially benefited Respondent.
Therefore, the Panel finds this to be further evidence of Respondent’s bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions,
FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith
under Policy ¶ 4(b)(iv) where the respondent was using the
<dellcomputerssuck.com> domain name to divert Internet users to
respondent’s website offering competing computer products and services); see also Asbury Auto. Group, Inc. v.
The Panel concludes 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 <indianamills.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 22, 2008
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