Original Power Inc. v. KRJJL Group LLC
Claim Number: FA0908001277262
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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
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.”).
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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