Johnson Controls, Inc. and Johnson Controls Technology Company v. Apex Software, Inc. c/o Keith Martin
Claim Number: FA0810001229554
Complainant is Johnson Controls, Inc. and Johnson
Controls Technology Company (“Complainant”), represented by John H. Weber, of Baker & Hostetler LLP, Washington, DC, USA. Respondent is Apex Software, Inc. c/o Keith
Martin (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <johnsoncontrolsystems.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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 October 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 16, 2008.
On October 16, 2008, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <johnsoncontrolsystems.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 October 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 17, 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 postmaster@johnsoncontrolsystems.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 20, 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 <johnsoncontrolsystems.com> domain name is confusingly similar to Complainant’s JOHNSON CONTROLS mark.
2. Respondent does not have any rights or legitimate interests in the <johnsoncontrolsystems.com> domain name.
3. Respondent registered and used the <johnsoncontrolsystems.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is in the business of selling building controls products and services, automotive interiors products and services and automotive batteries and services. Complainant markets and sells these products and services under the JOHNSON CONTROLS mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on November 14, 1978 (Reg. No. 1,105,961). Complainant is an international company with over 1,300 locations. In 2007, Complainant made over $34 billion in sales of its products and services.
Respondent registered the <johnsoncontrolsystems.com> domain name on June 1, 2008. The disputed domain name resolves to a website featuring advertising links to third-party websites that sell products related to Complainant’s products. Respondent is also offering to sell the disputed domain name on eBay, on the official Apex Software, Inc., website, and on the website that resolves from the disputed domain name itself.
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 finds that Complainant has established rights in
the JOHNSON CONTROLS mark for purposes of Policy ¶ 4(a)(i) through its
trademark registration with the USPTO. See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive."); see also Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Complainant contends that
Respondent’s <johnsoncontrolsystems.com>
domain name is confusingly similar to Complainant’s JOHNSON
CONTROLS mark.
The <johnsoncontrolsystems.com>
domain name differs from Complainant’s
mark in three ways: (1) the space between the words has been removed; (2) the
descriptive term “systems” has been added to the end of the mark; and (3) the
generic top-level domain (gTLD) “.com” has been added to the mark. Removing spaces from a mark does not
sufficiently distinguish a domain name from that mark for the purposes of
Policy ¶ 4(a)(i), nor does adding a descriptive term to the mark. See
Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000)
(finding that the domain name <bodyshopdigital.com> is confusingly
similar to the complainant’s THE BODY SHOP trademark);
see also Novell, Inc. v.
Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the
<novellsolutions.com> domain name confusingly similar to the NOVELL mark
despite the addition of the descriptive term “solutions” because even though
“the word ‘solutions’ is descriptive when used for software, Respondent has
used this word paired with Complainant's trademark NOVELL”). The addition of a gTLD is also inconsequential when
considering whether a domain name is identical to a mark. See Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000)
("[T]he addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants . . . ."). Therefore,
the Panel finds that despite these changes, the disputed domain name remains
confusingly similar to Complainant’s JOHNSON CONTROLS mark, and so Respondent’s disputed domain name is not
sufficiently distinguished from Complainant’s mark pursuant to Policy ¶
4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <johnsoncontrolsystems.com> domain name. Under Policy ¶ 4(a)(ii), if the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
Complainant contends that Respondent is not commonly known
by the <johnsoncontrolsystems.com>
domain name nor has it ever been the owner or licensee of the JOHNSON CONTROLS
mark. The WHOIS record for the disputed
domain name lists Respondent as “Apex Software,
Inc. c/o Keith Martin.”
Respondent has failed to show any evidence contrary to Complainant’s
contentions that Respondent is not commonly known by the <johnsoncontrolsystems.com> domain
name. Because there is no evidence that
Respondent has ever been known by any variant on the JOHNSON CONTROLS mark, the
Panel finds that Respondent is not commonly known by the <johnsoncontrolsystems.com> domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain
v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum
Respondent is using the <johnsoncontrolsystems.com> domain name to host a website that features links to third-party websites that are selling similar products to those sold by Complainant. Complainant contends that Respondent receives “click-through” fees from those third-party websites, and therefore is commercially benefitting from the use of the disputed domain name. The Panel finds that these uses by Respondent of the <johnsoncontrolsystems.com> domain name are neither bona fide offerings of goods or services under Policy ¶ 4(c)(i) nor legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Compaq Info. Techs. Group v Jones, FA 99091 (Nat. Arb. Forum Oct. 4, 2001) (finding that the respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to a commercial website as part of that website’s affiliate program, where the resultant website contained banner ads as well as various links to offers for free merchandise, including merchandise from the complainant's competitor).
Respondent has offered to sell the disputed domain name on at least three separate websites. An offer to sell a disputed domain name is evidence that a respondent has given up any claim to rights or legitimate interests in the domain name. See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights). Therefore, the Panel finds that Respondent’s offers to sell the disputed domain name are evidence that Respondent lacks any and all rights and legitimated interests in the <johnsoncontrolsystems.com> domain name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has offered to sell the <johnsoncontrolsystems.com> domain name on at least three different websites. A general offer to sell a disputed domain name is evidence that the registrant has registered and is using the domain name in bad faith. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). The Panel therefore finds that Respondent’s offers to sell the <johnsoncontrolsystems.com> domain name are evidence that Respondent has registered and used the <johnsoncontrolsystems.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”).
The <johnsoncontrolsystems.com>
domain name is directing Internet customers to Respondent’s website that
resolves from the disputed domain name. Complainant
contends that Respondent is intentionally creating this diversion through the
confusion caused by the similarity of the JOHNSON CONTROLS mark and the <johnsoncontrolsystems.com> domain
name. Complainant also contends that
Respondent is intentionally disrupting Complainant’s business by further
diverting confused customers to third-party websites that sell products in the
same market as Complainant. The Panel
finds that Respondent is disrupting Complainant’s business, and therefore, that
Respondent’s registration and use of the disputed domain name is in bad faith
pursuant to Policy ¶ 4(b)(iii). See Clear Channel Commc’ns, Inc. v. Beaty Enters.,
FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding evidence of bad faith use and registration where the respondent
and the complainant both operated in the highly regulated field of radio
broadcasting and the respondent registered a domain name incorporating the
complainant’s call letters); see
also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding
that the respondent registered and used the domain name <eebay.com> in
bad faith where the respondent has used the domain name to promote competing
auction sites).
Complainant also contends that Respondent is gaining
commercially from this diversion, through the click-through fees that
Respondent is receiving from the third-party websites. In the Panel’s judgment, Respondent is
intentionally using the disputed domain name for commercial gain by creating a
likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶
4(b)(iv), the Panel finds that this use is also evidence of Respondent’s
registration and use of the <johnsoncontrolsystems.com>
domain name in bad faith.
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 GRANTED.
Accordingly, it is Ordered that the <johnsoncontrolsystems.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 1, 2008
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