JohnsonDiversey, Inc. v. Bridge Port Enterprises Limited
Claim Number: FA0909001284837
Complainant is JohnsonDiversey, Inc. (“Complainant”), represented by Lori
S. Meddings, of Michael Best & Friedrich LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <diversey.com>, registered with Tucows 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 17, 2009.
On September 17, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <diversey.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 September 18, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 8, 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@diversey.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 14, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Respondent registered the <diversey.com> domain name on May 30, 2000.
Respondent is not commonly known by the <diversey.com> domain name, nor has it ever been an owner or licensee of the DIVERSEY mark.
The disputed domain name resolves to a website that contains a commercial search engine and links to sites offering goods competing with the business of Complainant.
Respondent’s use of the disputed domain name to direct Internet users to a search engine and third-party websites is in these circumstances neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the subject domain name.
Respondent’s <diversey.com> domain name is substantively identical to Complainant’s DIVERSEY mark.
Respondent does not have any rights to or legitimate interests in the disputed <diversey.com> domain name.
Respondent is diverting Internet users looking for Complainant’s products to the website resolving from the disputed domain name through Internet users’ confusion between Complainant’s DIVERSEY mark and the disputed domain.
Respondent benefits commercially from its diversion of Internet customers to Respondent’s website that resolves from the <diversey.com> domain name, through click-through fees that Respondent receives from the third-party websites.
Respondent has been found by six previous ICANN panels to have registered and used trademark-related domain names in bad faith, and this record demonstrates a pattern of registering infringing domain names.
Respondent registered and uses the <diversey.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has sufficiently established rights in the
DIVERSEY trademark under Policy ¶ 4(a)(i) through its
predecessor-in-interest’s registration of the mark with the USPTO and the
subsequent assignment of it to Complainant.
Complainant contends that Respondent’s <diversey.com> domain name is identical to its DIVERSEY mark. The <diversey.com> domain name differs from Complainant’s mark only in that the generic top-level domain (gTLD) “.com” has been added to the mark. Under Policy ¶ 4(a)(i), the addition of a gTLD is irrelevant when considering whether a domain name is identical to a mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.
Therefore, the disputed domain
name is identical to Complainant’s DIVERSEY
mark for purposes of the Policy, and specifically Policy ¶ 4(a)(i). See
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights to and legitimate interests in the <diversey.com> domain name. Under Policy ¶ 4(a)(ii), once a complainant makes out a prima facie case against a respondent, that respondent then has the burden of showing evidence that it does have rights to or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights to or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”)
From our review of the Complaint and supporting papers, we are satisfied that Complainant has made out a prima facie case under Policy ¶ 4(a)(ii). Respondent, for its part, has failed to respond to the allegations of the Complaint. We are therefore free to conclude that Respondent has no rights or interests in the disputed domain name which are cognizable under the Policy. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, a respondent failed to invoke any circumstance which could demonstrate any rights to or legitimate interests in a disputed domain name). We will nonetheless examine the record before us to determine if there is in it any basis for concluding that Respondent has any such rights or interests.
We begin by noting that Complainant contends, and Respondent
does not deny, that Respondent is not commonly known by the <diversey.com> domain name, nor has
it ever been an owner or licensee of the DIVERSEY mark. Moreover, the WHOIS record for the disputed
domain name lists Respondent only as “Bridge
Port Enterprises Limited.”
Because there is no evidence to the contrary in the record, we are
constrained to conclude from this that Respondent is not commonly known by the <diversey.com> domain name within the meaning of Policy
¶ 4(c)(ii). See
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests in a contested domain name where a respondent was not commonly known
by the mark there in issue and never applied for a license or permission from a
complainant to use a trademarked name); 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, one can infer that Respondent, Onlyne Corporate Services11, is not
commonly known by the name ‘welsfargo’ in any derivation.”
We also observe that
there is no dispute as to Complainant’s allegation that the <diversey.com> domain name resolves to a website which
incorporates a search engine and features links to third-party websites that
compete with the business of Complainant in the cleaning products market. Complainant also contends that Respondent’s
use of the disputed domain name to direct Internet users to a search engine and
third-party websites is not a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
domain. We agree that Respondent’s use
of the disputed domain name is not a bona
fide offering of goods or services under Policy
¶ 4(c)(i), nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp.
v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding
that a respondent’s diversionary use of a complainant’s marks to send Internet
users to a website which displayed links to that complainant’s competitors was
not a bona fide offering of goods or services); see also Metro. Life Ins. Co. v. Bonds, FA
873143 (Nat. Arb.
Forum Feb. 16, 2007) (concluding that using a contested domain name to divert
Internet users to competing commercial websites does not represent a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of a domain under Policy ¶ 4(c)(iii)).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent does not dispute Complainant’s assertion that it has been found by six previous ICANN panels to have registered and used trademark-related domain names in bad faith and that this record demonstrates a pattern of bad faith registration and use of domain names. We conclude from this undenied record that Respondent’s extensive pattern of registering infringing domain names is evidence that Respondent has also registered and used the <diversey.com> domain name in bad faith, pursuant to Policy ¶ 4(b)(ii). See Nat’l Wildlife Fed’n v. Kang, FA 170519 (Nat. Arb. Forum Sept. 9, 2003): “Respondent has a history of registering domain names that infringe on other trademark holders' rights; therefore, Respondent's registration and use of the <yourbigback-yard.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name is identical to Complainant's YOUR BIG BACKYARD mark and prevents Complainant from reflecting its mark on-line.” See also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) where a domain name prevented a complainant from reflecting its mark in a domain name, and where a respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of bad faith cyber-squatting).
Complainant also contends, and Respondent does not deny, that Respondent is diverting Internet users looking for Complainant’s products to Respondent’s website through confusion between Complainant’s DIVERSEY mark and the disputed domain name. We conclude that such diversion disrupts the mark holder’s business, and that Respondent’s behavior in this regard is evidence of bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of domain names pursuant to Policy ¶ 4(b)(iii) by using them to operate a commercial search engine with links to the products of a complainant’s competitors); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007):
This
Panel concludes that by redirecting Internet users seeking information on
Complainant’s educational institution to competing websites, Respondent has
engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant further contends, and Respondent does not deny,
that Respondent benefits commercially from the diversion of Internet users to
Respondent’s website that resolves from the <diversey.com>
domain name, and that it does so through receipt of click-through fees from third-party
websites. We conclude from this that
Respondent is using the disputed domain name for commercial gain by creating a
likelihood of confusion with Complainant’s mark as described in Policy ¶
4(b)(iv), so that Respondent’s behavior as alleged is further evidence of
Respondent’s registration and use of the contested domain name in bad faith. See
Respondent is using the disputed domain name
to operate a website which features links to competing and non-competing
commercial websites from which Respondent presumably receives referral
fees. Such use for Respondent’s own
commercial gain is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <diversey.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 28, 2009
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