Donaldson Company, Inc. v. Ruben Garcia
Claim Number: FA0911001294372
Complainant is Donaldson Company, Inc. (“Complainant”), represented by Joel
D. Leviton, of Fish & Richardson, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <donaldsonfilters.com>, registered with Fabulous.com Pty Ltd.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 13, 2009.
On November 16, 2009, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <donaldsonfilters.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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@donaldsonfilters.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
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:
1. Respondent’s <donaldsonfilters.com> domain name is confusingly similar to Complainant’s DONALDSON mark.
2. Respondent does not have any rights or legitimate interests in the <donaldsonfilters.com> domain name.
3. Respondent registered and used the <donaldsonfilters.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Donaldson
Company, Inc., is a manufacturer and provider of filtration systems. Complainant promotes its products and
services under the DONALDSON mark, which Complainant registered with the United
States Patent and Trademark Office (“USPTO”) on September 13, 1949 (Reg. No.
514,998). Complainant has used the
DONALDSON mark continuously in commerce since at least as early as 1915, and
now provides its products and services in over 80 countries.
Respondent, Ruben Garcia, registered the <donaldsonfilters.com> domain name on October 11, 2002. The disputed domain name resolves to a website that features links to third-party websites which offer products and services in direct competition with Complainant.
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 the 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 DONALDSON mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO (Reg. No. 514,998 issued September 13, 1949). The Panel finds Complainant need only demonstrate registration of a mark in any jurisdiction, it is not necessary for the registration to occur in Respondent’s jurisdiction under the Policy. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant contends that
Respondent’s <donaldsonfilters.com>
domain name is confusingly similar to its DONALDSON mark. The <donaldsonfilters.com> domain name differs from Complainant’s mark in two ways:
(1) the descriptive term “filters” has been added to the mark; and (2) the
generic top-level domain (“gTLD”) “.com” has been added. The Panel finds that the addition of a term
that describes a mark holder’s business, as does “filters” in this case, does
not sufficiently distinguish a domain name from a mark that it incorporates for
the purposes of Policy ¶ 4(a)(i). The
Panel also finds that the addition of a gTLD does not reduce the likelihood of
confusion between the domain name and the mark, because every domain name must
contain a top-level domain. Therefore,
the Panel finds that these changes do not minimize or eliminate the resulting
likelihood of confusion, and so the <donaldsonfilters.com> domain name is confusingly similar to Complainant’s
DONALDSON mark pursuant to Policy ¶ 4(a)(i).
See Marriott Int’l, Inc. v. Café au lait, FA
93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain
name <marriott-hotel.com> is confusingly similar to the complainant’s
MARRIOTT mark); see also Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding
that the <hoylecasino.net> domain name is confusingly similar to the
complainant’s HOYLE mark, and that the addition of “casino,” a generic word
describing the type of business in which the complainant is engaged, does not
take the disputed domain name out of the realm of confusing similarity); see also 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.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <donaldsonfilters.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). Respondent has failed to respond to these proceedings. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that Respondent is not commonly known
by the <donaldsonfilters.com> domain name nor has it ever been the
owner or licensee of the DONALDSON mark. Respondent has been identified in the WHOIS
registrant information as “Ruben Garcia,”
and nothing in the WHOIS record for the disputed domain name lists Respondent
as any variant on the DONALDSON mark.
Respondent has also failed to show any evidence contrary to
Complainant’s contentions. The Panel
therefore finds that Respondent is not commonly known by the <donaldsonfilters.com>
domain name pursuant to
Policy ¶ 4(c)(ii). See Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name); see also Braun Corp. v. Loney,
FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was
not commonly known by the disputed domain names where the WHOIS information, as
well as all other information in the record, gave no indication that the
respondent was commonly known by the disputed domain names, and the complainant
had not authorized the respondent to register a domain name containing its
registered mark).
Complainant contends
that Respondent is using the <donaldsonfilters.com> domain
name to advertise the websites of Complainant’s competitors. The Panel finds that using a domain name to
promote a third-party business that competes with Complainant is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of a domain name 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. balata inc, FA 888649
(Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar
<viaggidea.com> domain name to operate a website that features links to
various commercial websites from which Respondent presumably receives referral
fees….is neither a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶
4(c)(iii).”. The Panel therefore
finds that Respondent’s use of the <donaldsonfilters.com> domain
name is neither a bona fide
offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use of the <donaldsonfilters.com> domain
name under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that
Respondent is using the <donaldsonfilters.com> domain name (initial
registration: October 11, 2002) to host a website
advertising competitors of Complainant, and that this diversion of Internet
users to competing businesses is an intentional disruption of Complainant’s
business by Respondent. Consequently,
Complainant contends that Respondent’s actions are evidence of
Respondent’s registration and use of the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iii). The
Panel agrees with Complainant’s contentions and finds that Respondent’s
competitive use of the disputed domain name indicates that Respondent
registered and is using the disputed domain name in bad faith pursuant to
Policy ¶ 4(b)(iii). See 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).”); see also
Complainant also contends that Respondent is gaining commercially from “click-through fees” that Respondent is collecting from the third-party websites, and that these fees are evidence of Respondent’s bad faith registration and use of the <donaldsonfilters.com> domain name pursuant to Policy ¶ 4(b)(iv). The Panel agrees and finds that Respondent’s commercial gain from its use of the <donaldsonfilters.com> domain name is evidence of its bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <donaldsonfilters.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 28, 2009
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