Plaston AG Corporation v. Domains Plus, LLC
Claim Number: FA0901001244679
Complainant is Plaston
AG Corporation (“Complainant”), represented by Robin R. Welgat, of Coman & Anderson, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <airoswiss.com>, registered with Godaddy.com, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 27, 2009.
On January 27, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <airoswiss.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 January 29, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of February 18, 2009
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@airoswiss.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <airoswiss.com> domain name is identical to Complainant’s AIR-O-SWISS mark.
2. Respondent does not have any rights or legitimate interests in the <airoswiss.com> domain name.
3. Respondent registered and used the <airoswiss.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Plaston AG Corporation, is a leading manufacturer of air purifiers, air humidifiers, and air dehumidifiers. Complainant owns a trademark registration for the AIR-O-SWISS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,770,832 issued October 7, 2003, filed December 4, 2001).
Respondent registered the <airoswiss.com> domain name on November 21, 2002. From that date until 2004, Respondent failed to make an active use of the disputed domain name. From 2004-2006, Respondent’s disputed domain name redirected users to the <factorydirectsuperstore.com> domain name, which offered commercial products. After Complainant contacted Respondent about the disputed domain name, Respondent changed the content on the associated website to contain non-commercial information about air quality and pollution.
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.
Complainant asserts rights in the AIR-O-SWISS mark through
registration of the mark with the USPTO.
Even though Respondent registered the <airoswiss.com> domain name on November 21, 2002, before the
USPTO registered Complainant’s AIR-O-SWISS mark on October 7, 2003, the Panel
finds that the effective date for Complainant’s trademark rights is the filing
date on December 4, 2001. See Phoenix Mortgage Corp. v.
Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of
Complainant's federal rights is . . . the filing date of its issued
registration. Although it might be possible to establish rights prior to that
date based on use, Complainant has submitted insufficient evidence to prove
common law rights before the filing date of its federal registration.”); see also Planetary Soc’y v. Rosillo,
D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of
Complainant’s trademark rights date back to the application’s filing
date). Therefore, Complainant’s
registration of the AIR-O-SWISS mark establishes rights in the mark for
purposes of Policy ¶ 4(a)(i). See
Miller Brewing
Complainant argues that the <airoswiss.com> domain name is nearly identical to
Complainant’s mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s mark in its entirety, omits two hyphens, and adds the generic
top-level domain (“gTLD”) “.com.” The
Panel finds that the removal of hyphens and addition of a gTLD are irrelevant
in distinguishing a disputed domain name from an established mark. See SCOLA v. Wick, FA 1115109 (Nat. Arb.
Forum Feb. 1, 2008) (concluding that
“the domain name at issue is identical to [the] complainant’s SCOLA mark, as
the only alteration to the mark is the addition of the generic top-level domain
“.com.”); see also Chernow
Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that
the use or absence of punctuation marks, such as hyphens, does not alter the
fact that a name is identical to a mark"); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb.
Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant
for purposes of the Policy). Therefore,
the Panel finds that Respondent’s <airoswiss.com> domain name is identical to Complainant’s
AIR-O-SWISS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and legitimate interests in the <airoswiss.com> domain name. When Complainant makes a prima facie case in support of its allegations, the burden is shifted to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case, Complainant has established a prima facie case. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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).
Complainant asserts that Respondent is neither commonly
known by the disputed domain name, nor licensed to register domain names using
the AIR-O-SWISS mark. Respondent’s WHOIS information identifies
Respondent as “Domains Plus LLC,” and therefore lacks
any defining characteristics relating it to the disputed domain name. Therefore, the Panel finds that without
affirmative evidence of being commonly known by the disputed domain
name, Respondent lacks all rights and legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v.
Lee Yi, FA 139720 (Nat.
Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
In the years 2002-2004, Respondent failed to make an active use of the disputed domain name. As a result, the Panel finds that Respondent did not make a bona fide offering of good or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name).
From 2004-2006, Respondent’s disputed domain name resolved to a commercial website. The Panel finds such use to be further evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
In 2004-2006, Respondent’s disputed domain name resolved to a commercial website. The Panel finds that such use of the disputed domain name to commercially benefit by causing a likelihood of confusion between the disputed domain name and Complainant’s mark is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
From 2002-2004, Respondent owned the <airoswiss.com> domain name but did not actively use it. The Panel finds that such non-use constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to make an active use of a domain name permits an inference of registration and use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <airoswiss.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: March 12, 2009
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