Petzl
America, Inc. v.
Claim Number: FA0910001287640
Complainant is Petzl
America, Inc. (“Complainant”), represented by Michael B. Beck, of Nadesan Beck P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <petzlusa.com>, registered with Compana, Llc.
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 October 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 5, 2009.
On October 6, 2009, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <petzlusa.com> domain name is registered with Compana, Llc and that Respondent is the current registrant of the name. Compana, Llc has verified that Respondent is bound by the Compana, Llc 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 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 2, 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@petzlusa.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 5, 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:
Complainant is in the business of designing, manufacturing, and marketing specialized climbing, mountaineering, and industrial equipment.
Complainant has operated under the PETZL mark since 1980, and has operated a website under the <petzl.com> domain name since 1996.
Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its PETZL mark (e.g., Reg. No. 1,185,406, issued January 12, 1982).
Respondent registered the <petzlusa.com> domain name on October 18, 2005.
The disputed domain name resolves to a website featuring pop-up advertisements and a commercial search engine and hyperlinks resolving to Complainant’s competitors in the climbing, mountaineering, and industrial equipment industry.
Respondent is habitual cyber-squatter and has been named in nearly 100 UDRP domain name disputes.
Respondent’s <petzlusa.com> domain name is confusingly similar to Complainant’s PETZL mark.
Respondent is not commonly known by the <petzlusa.com> domain name.
Respondent is not authorized to use the <petzlusa.com> domain name, and does not own any cognizable right or legal interest in Complainant’s PETZL mark.
Respondent does not have any rights to or legitimate interests in the <petzlusa.com> domain name.
Respondent registered and uses the <petzlusa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar 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 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’s trademark registrations are sufficient to
establish its rights in the PETZL trademark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v.
Complainant argues that Respondent’s <petzlusa.com>
domain name is confusingly similar to Complainant’s PETZL mark pursuant to
Policy ¶ 4(a)(i). The disputed domain name contains
Complainant’s entire mark, merely adding the geographic abbreviation “
[i]t
is well established that a domain name consisting of a well-known mark,
combined with a geographically descriptive term or phrase, is confusingly
similar to the mark.
See also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Therefore, the Panel finds that Respondent’s disputed <petzlusa.com> domain name is confusingly similar to Complainant’s PETZL mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <petzlusa.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”)
Complainant has made out a sufficient prima facie case. Because of Respondent’s failure to respond to the Complaint, we may presume that Respondent does not have rights or legitimate interests in the disputed domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that, because a respondent failed to submit a Response:
Complainant’s
submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.
However, we will examine the record before us to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed <petzlusa.com> domain name sufficient to satisfy the requirements of Policy ¶ 4(c).
We begin by observing that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the <petzlusa.com> domain name. Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the disputed domain name. Moreover, the pertinent WHOIS information identifies Respondent only as “Texas International Property Associates.” Complainant likewise alleges, and Respondent does not deny, that Respondent is not authorized to use the <petzlusa.com> domain name and does not own any cognizable right or legal interest in Complainant’s PETZL mark. Therefore, we conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant asserted, without objection from that respondent, that that complainant had not authorized or licensed that respondent’s use of its mark in a domain name).
We also take note of the fact that there is no dispute on the record before us as to Complainant’s assertion that Respondent uses the <petzlusa.com> domain name to resolve to a website featuring a commercial search engine and hyperlinks which resolve to Complainant’s competitors in the climbing, mountaineering, and industrial products industry. In the circumstances here presented, Respondent likely profits from the search engine, hyperlinks and related advertisements. We therefore conclude that Respondent’s use of a domain name confusingly similar to Complainant’s mark for this purpose is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the contested domain name under Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that a respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that could be of interest to a complainant’s customers, presumably receiving “click-through fees” in the process).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges Respondent’s use of the <petzlusa.com>
domain name is a part of a pattern
of bad faith use and registration. Complainant contends that Respondent has
been named in nearly 100 UDRP domain name disputes. Respondent does not contest these
allegations. In those numerous UDRP
proceedings, the disputed domain names were transferred from Respondent to the appearing
complainants. See, for example, ABC Liquors, Inc. v.
We have already concluded that Respondent’s <petzlusa.com>
domain name resolves to a
website featuring a commercial search engine and hyperlinks which resolve to
Complainant’s competitors in the climbing, mountaineering, and industrial
products industry. The resolving website
subjects Internet users to pop-up advertisements. We have
no hesitation in concluding that Respondent’s use of the disputed domain name
as alleged disrupts Complainant’s climbing, mountaineering, and
industrial products business, and therefore
constitutes bad faith registration and use of the disputed domain name under
Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding
bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a
respondent used a disputed domain name to operate a commercial search engine
with links to a complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use of the domain under Policy ¶ 4(b)(iii)).
We have inferred
that Respondent receives click-through fees from the aforementioned hyperlinks,
search engine, and pop-up advertisements.
In addition, we conclude from the record that Internet users interested
in Complainant and Complainant’s climbing, mountaineering, and
industrial products, may become
confused as to Complainant’s possible affiliation with or sponsorship of the
website resolving from the contested domain
name, which we have found is confusingly similar to Complainant’s mark. Respondent clearly attempts to profit from
that confusion. These circumstances
demonstrate that Respondent’s employment of the contested domain name constitutes
bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv). 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).
See also Bama Rags, Inc. v. Zuccarini, FA 94381
(Nat. Arb. Forum May 8, 2000) (finding bad faith registration and use of a
domain name where a respondent used a misspelling of a complainant’s famous
mark to attract Internet users to a series of advertisements resolving from a
disputed domain name).
For all of these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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 <petzlusa.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 20, 2009
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