Original Power Inc. v. KRJJL
Group LLC
Claim Number: FA0908001277262
PARTIES
Complainant is Original Power Inc. (“Complainant”), represented by Andrew
J. Park, of Mckenna Long & Aldridge LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <powerline.com>, registered with Wild West
Domains, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
David S. Safran, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 3, 2009; the
National Arbitration Forum received a hard copy of the Complaint on August 6, 2009.
On August 4, 2009, Wild West Domains, Inc. confirmed by e-mail to
the National Arbitration Forum that the <powerline.com> domain name is
registered with Wild West Domains, Inc.
and that the 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 10, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of August 31, 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@powerline.com by
e-mail.
A timely Response was received and determined to be complete on August 31, 2009.
On September 8, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David S. Safran as Panelist.
On September 9, 2009, a copy of the Complaint filed against one of the
same Respondents in a parallel dispute relating to the <powerline.us>
domain was received. Apart from noting the existence of the related
proceedings, this document has not been considered.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the domain at issue incorporates its
registered POWERLINE trademark in its entirety, Respondent could not obtain any
legitimate rights and was using the <www.powerline.com> domain in bad
faith since it was used to divert customers from Complainant and to pass off
Respondent as Complainant. Additionally, it is asserted that Respondent is not
commonly known by the name “Powerline.” Furthermore, it is contended that
Respondent was aware of Complainant’s trademark and registered the domain name
to trade on the goodwill of the Complainant.
B. Respondent
No formal and proper response was filed by Respondent. However, as can
best be determined from the materials submitted, it appears from the mention of
the case of Internet Specialties
West, Inc. v. Milon-DiGiorgio Enters., Inc., 559 F.3d 985 (9th Cir. 2009) that Respondent’s defense is based on
laches and from mention of the change of the website from one offering for sale
the goods of Complainant and its competitors to a holding page with a link to a
directory page that the domain is not being used in bad faith.
FINDINGS
The panel finds that the case of Internet Specialties West, Inc. v.
Milon-DiGiorgio Enters., Inc., 559
F.3d 985 (9th Cir. 2009) rather than helping Respondent, warrants a finding
that laches does not exist. The panel also finds that the domain is confusingly
similar to Complaint’s registered trademarks, that the sale of Complainant’s
goods and use of its telephone evidences knowledge of Complainant and that the
mere removal of offending content and substituting of a holding page with a
links to directory pages is not sufficient to evidence bone fide use of the domain or good faith usage.
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.
The Panel finds that Complainant has
established rights in the POWERLINE mark pursuant to Policy ¶ 4(a)(i) through
Complainant’s registration of the mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,102,367 issued September 30, 1997). See
Miller Brewing
Complainant argues that Respondent’s <powerline.com> domain name is
identical to Complainant’s POWERLINE mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s mark in its entirety and adds the generic top-level domain
(“gTLD”) “.com.” The Panel finds that
the addition of a gTLD is irrelevant in distinguishing a disputed domain from a
registered mark. See Jerry Damson, Inc. v.
The Panel is aware that Complainant must
first make a prima facie case that Respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and
then the burden shifts to Respondent to show it does have rights or legitimate
interests. See Hanna-Barbera Prods.,
Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006)
(holding that the complainant must first make a prima facie case that
the respondent lacks rights and legitimate interests in the disputed domain
name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25,
2006) (“Complainant must first make a prima facie showing that Respondent does
not have rights or legitimate interest in the subject domain names, which
burden is light. If Complainant
satisfies its burden, then the burden shifts to Respondent to show that it does
have rights or legitimate interests in the subject domain names.”).
Respondent’s WHOIS
information identifies Respondent as “KRJJL Group LLC.” Thus, the Panel finds that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006)
(finding that the respondent was not commonly known by the
<shoredurometer.com> and <shoredurometers.com> domain names because
the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic
Equip't as the registrant of the disputed domain names and there was no other
evidence in the record to suggest that the respondent was commonly known by the
domain names in dispute); see also 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).
Complainant provided
web page printouts evidencing that Respondent’s <powerline.com> domain name
resolved to a website offering household electronics to Internet users in
direct competition with Complainant. The
Panel finds that such use of the disputed domain name is neither a bona fide
offering of goods and services pursuant to Policy ¶ 4(c)(i), nor legitimate
noncommercial or fair use pursuant to 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 Ameritrade
Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002)
(finding that the respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with the
complainant, was not a bona fide offering of goods or services).
Respondent provided a letter indicating that
it was no longer offering electronics
to Internet users in direct competition with Complainant or otherwise referring
to Complainant. A review of the revised website by the Panel revealed that the
domain now resolves to a holding page with links to directory pages and a forum
containing postings solely by the Respondent. However, the Panel finds that
such passive use of the domain is not a bona fide offering of goods and
services or any other activity which could establish a legitimate use of the
domain. See Hewlett-Packard Co. & Hewlett-Packard
Dev. Co., L.P. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The
Panel finds that the passive holding of a domain name that is identical to
Complainant’s mark is not a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the
domain name pursuant to Policy
¶ 4(c)(iii).”).
The Panel finds
that Respondent’s registration and use of the <powerline.com>
domain name to operate a website offering electronic goods in direct
competition with Complainant constitutes a disruption of Complainant’s business
and qualifies as bad faith registration and use pursuant to Policy ¶
4(b)(iii). See S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also
Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding
that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)); 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).
Respondent was allegedly using the <powerline.com> domain name in order to intentionally attract Internet users to its
website by creating a strong possibility of confusion with Complainant’s
POWERLINE mark for commercial gain.
Copies of web pages submitted indicate that, until after instituting of
these proceedings. Respondent offered
power adapters, generators, and cables for sale in direct competition with
Complainant. Therefore, pursuant to
Policy ¶ 4(b)(iv), the Panel finds this use of the disputed domain name
constitutes further evidence of bad faith registration and use. See
Luck's Music Library v. Stellar
Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the
respondent engaged in bad faith use and registration by using domain names that
were identical or confusingly similar to the complainant’s mark to redirect
users to a website that offered services similar to those offered by the complainant);
see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept.
12, 2000) (finding bad faith where the respondent registered the domain name
<bigtex.net> to infringe on the complainant’s goodwill and attract
Internet users to the respondent’s website).
After filing of the Complaint that resulted
in these proceedings, the Respondent altered his website as indicated above.
However, such post-filing changes by themselves are insufficient to bar a
finding of bad faith registration and use based on the pre-filing activity of
the Respondent. See Hewlett-Packard
Company v. Alvaro Collazo
FA0302000144628 (Nat. Arb. Forum March 5, 2003) (finding “To allow Respondent’s claim that he has made
post-filing changes to his website to alter the outcome of this dispute would
open the door for all future respondents in domain name disputes to avoid the
consequences of their actions and continue to hold domain names containing the
famous, distinctive trademarks of others simply by claiming that they had modified
their websites after a complaint is filed.
This would defy the entire basis of the Uniform Domain Name Dispute
Resolution Policy.”).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <powerline.com> domain name be TRANSFERRED
from Respondent to Complainant.
David S. Safran, Panelist
Dated: September 22, 2009
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