National Arbitration Forum

 

DECISION

 

Dayton Electric Manufacturing Co. v. Buy This Website at http://buy.DaytonElectric.com and James Hotka

Claim Number: FA0911001293631

 

PARTIES

Complainant is Dayton Electric Manufacturing Co. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA.  Respondent is Buy This Website at http://buy.DaytonElectric.com and James Hotka (“Respondent”), Indiana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <daytonelectric.com>, registered with Enom, 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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 11, 2009.

 

On November 9, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <daytonelectric.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 November 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 7, 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@daytonelectric.com by e-mail.

 

A timely Response was received and determined to be complete on December 7, 2009.

 

A timely Additional Submission was received from Complainant on December 15, 2009.

A timely Additional Submission was received from Respondent on December 21, 2009.

 

On December 11, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

            A.  Complainant makes the following assertions:

 

1.      Respondent’s <daytonelectric.com> domain name is identical to Complainant’s DAYTON and DAYTON ELECTRIC marks.

 

2.      Respondent does not have any rights or legitimate interests in the <daytonelectric.com> domain name.

 

3.      Respondent registered and used the <daytonelectric.com> domain name in bad faith.

 

B. Respondent makes the following assertions:

 

            1.  Complainant does not have a trademark for DAYTON ELECTRIC.

 

2.  Respondent has a legitimate business interest in the <daytonelectric.com> domain name; it was registered to build a local advertising website for electrical goods and services in Dayton, Ohio.

 

3.  Respondent did not register and use the <daytonelectric.com> domain name in bad faith because it had no knowledge of Complainant’s business name “Dayton Electric Manuafacturing Co.”  Respondent routinely registers and sells or leases domain names with the word “electric” in them.

 

C. In its Additional Submission, Complainant asserts:

 

1.      Complainant has common law rights in DAYTON ELECTRIC.

 

2.      The consideration of Respondent’s use of the <daytonelectric.com> domain name should be the use made before this UDRP complaint was filed, which showed confusing links to Complainant and its competitors.

 

3.      Respondent is a “domainer” and certainly knew of Complainant’s name.

 

4.      Respondent has engaged in a pattern of registering domain names containing others’ trademarks.

 

D. In its Additional Submission, Respondent:

 

1.      Reiterates that Complainant does not have a trademark for DAYTON ELECTRIC, and adds that Complainant itself causes confusion through its advertising.

 

2.      Explains Respondent’s business model and the risk involved.

 

 

FINDINGS

Complainant owns seven trademarks registered with the United States Patent and Trademark Office (“USPTO”) for DAYTON, for a wide variety of electric goods, showing use dating back to 1938.  Those registrations were made in the name of Dayton Electric Manufacturing Co. 

 

Respondent registered the <daytonelectric.com> domain name on July 25, 2000, and, until this UDRP Complaint was filed, used the domain name to display links to Complainant and Complainant’s competitors.

 

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the DAYTON mark through its several registrations of the mark with the USPTO (e.g., Reg. No. 776,889 issued September 15, 1964).  See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).

 

Complainant has also established common law rights in the DAYTON ELECTRIC mark through continuous commercial use of that mark in its corporate name since at least 1938.  The Panel also notes that all of Complainant’s USPTO registrations for DAYTON pertain to electrical goods.

 

Respondent’s <daytonelectric.com> domain name is confusingly similar to Complainant’s DAYTON and DAYTON ELECTRIC marks.  The disputed domain name contains Complainant’s registered mark, adds the generic term “electric”, which is part of Complainant’s long-standing corporate name, and adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the <daytonelectric.com> domain name is confusingly similar to Complainant’s DAYTON and DAYTON ELECTRIC marks under Policy ¶ 4(a)(i).  See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).      

 

Respondent contends that the <daytonelectric.com> domain name is comprised of common, descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark.  However, the Panel finds that such a determination is not necessary since Policy ¶ 4(a)(i) addresses only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Tammy Upwall and Michael Upwall d/b/a Got Beauty v. Kam Yaghobian d/b/a Got beauty products, FA 1122960 (Nat. Arb. Forum Feb. 21, 2008) (“Respondent contends that the <gotbeautyproducts.com> domain name is comprised of generic terms, and that Complainant is not exclusively associated with the GOT BEAUTY mark.  Therefore, Respondent alleges that the <gotbeautyproducts.com> domain name is not confusingly similar to Complainant’s mark.  However, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) since this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

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.”).

 

Complainant asserts that Respondent is not commonly known by the <daytonelectric.com> domain name.  The WHOIS information for the disputed domain lists “Buy This Website at http://buy.DaytonElectric.com and James Hotka” as the registrant.  The Panel finds that Respondent is not commonly known by the disputed domain name under 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant argues that the <daytonelectric.com> domain name resolves to a website that displays various hyperlinks to several third-party websites, some of which directly compete with Complainant.  Complainant further argues that Respondent receives click-through fees for these hyperlinks.  The Panel agrees and finds that Respondent’s use of the disputed domain name does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 notes that, while a “domainer” certainly can operate a legitimate business with domain names used as advertising directories, including domain names containing the word “electric”, it cannot do so when the domain name includes someone else’s trademark.  The USPTO has determined that, in the field of electric goods, Complainant’s DAYTON mark can operate to distinguish Complainant’s goods and, indeed, Complainant has done so for more than 70 years.

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent had constructive if not actual notice of Complainant’s DAYTON and DAYTON ELECTRIC marks.  At the time Respondent registered the <daytonelectric.com> domain name, Complainant already held 7 registered marks, and had been using both marks, for 62 years.  The Panel accepts Respondent’s arguments that its business model is reasonable and that it may even try to avoid infringement on others’ trademarks.  However, in this case, Respondent did not succeed.

 

Respondent’s <daytonelectric.com> domain name resolved to a website featuring hyperlinks to competing websites, constituting bad faith registration and use under Policy ¶ 4(b)(iii).  See 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 under Policy ¶ 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).

 

The Panel infers that Respondent commercially gained from these hyperlinks through click-through fees, constituting bad faith registration and use under Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“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 T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

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 <daytonelectric.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Sandra J. Franklin, Panelist
Dated: December 31, 2009

 

 

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