American Power Conversion, Corp. v. Redy Battery Co.
Claim Number: FA0912001299362
Complainant is American Power Conversion, Corp. (“Complainant”), represented by Daniel
J. Holmander, of Barlow, Josephs & Holmes Ltd., Rhode
Island, USA. Respondent is Redy Battery
Co. (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <apcupsbattery.com>, registered with Godaddy.com, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 21, 2009.
On December 16, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <apcupsbattery.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 December 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 19, 2010 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@apcupsbattery.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <apcupsbattery.com> domain name is confusingly similar to Complainant’s APC mark and BACK-UPS mark.
2. Respondent does not have any rights or legitimate interests in the <apcupsbattery.com> domain name.
3. Respondent registered and used the <apcupsbattery.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Power
Conversion, Corp., is a provider of uninterruptible power supplies and
batteries. Complainant holds several
registrations of the APC mark with the United States Patent and Trademark Office
(“USPTO) (e.g., Reg. No. 2,165,205
issued June 16, 1998). Complainant also
holds a registration of the BACK-UPS mark with the USPTO (Reg. No. 1,689,902
issued June 2, 1992).
Respondent, Redy Battery Co., registered the <apcupsbattery.com> domain name on October 21, 2003. The disputed domain name resolves to a website that sells products that directly compete with Complainant and displays Complainant’s APC mark next to the competing products.
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 APC mark (e.g., Reg. No. 2,165,205 issued June 16, 1998) and the BACK-UPS mark (Reg. No. 1,689,902 issued June 2, 1992) under Policy ¶ 4(a)(i) through its registrations of the marks with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also 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).”).
Respondent’s <apcupsbattery.com>
domain name combines Complainant’s APC mark and a significant portion of
Complainant’s BACK-UPS mark. In
addition, the disputed domain name adds the descriptive term “battery,” which
describes Complainant’s battery supply business, and adds the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that these alterations to Complainant’s marks do not sufficiently distinguish
the disputed domain name from Complainant’s marks. Therefore, the Panel finds that the <apcupsbattery.com> domain name is
confusingly similar to Complainant’s APC mark and BACK-UPS mark under Policy ¶
4(a)(i). See G.D. Searle & Co. v.
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Initially, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes this showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). The burden now shifts to Respondent, from which no response was received. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). Although Respondent has not alleged that it has rights or legitimate interests in the disputed domain name, the Panel elects to examine the record under Policy ¶ 4(c).
The WHOIS information for the <apcupsbattery.com> domain name lists “Redy Battery Co.” as the registrant, which does not
indicate that Respondent is commonly known by the disputed domain name. Respondent has not provided any evidence that
suggests that Policy ¶ 4(c)(ii) applies in this case. Therefore, 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 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).
Respondent’s <apcupsbattery.com> domain name
resolves to a website that displays Complainant’s APC mark and sells products
that directly compete with Complainant.
The Panel finds that such use by Respondent 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).
The Panel finds that Respondent’s
display of Complainant’s mark to sell competing products is an attempt by
Respondent to pass itself off as Complainant.
The Panel finds that such an attempt is further evidence that Respondent
lacks rights and legitimate interests in the <apcupsbattery.com> domain name under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb.
Forum May 30, 2003) (finding that the respondent attempts to pass itself off as
the complainant online, which is blatant unauthorized use of the complainant’s
mark and is evidence that the respondent has no rights or legitimate interests
in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007)
(“Because [the] respondent in this case is also attempting to pass itself off
as [the] complainant, presumably for financial gain, the Panel finds the
respondent is not using the <mortgageresearchcenter.org> domain name for
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 finds
that Policy ¶ 4(a)(ii) has been satisfied.
Since Respondent registered the <apcupsbattery.com> domain name on October 21, 2003, the
disputed domain name has resolved to a website that sells products that
directly compete with Complainant’s battery supply business. The Panel finds that Respondent’s use of the
disputed domain disrupts Complainant’s business. The Panel further finds that such a
disruption constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat.
Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s
mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”);
see also Surface Prot. Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between the complainant and the respondent, the
respondent likely registered the contested domain name with the intent to
disrupt the complainant's business and create user confusion).
The Panel finds that
Respondent’s aforementioned engagement in passing itself off as Complainant by
displaying Complainant’s mark and selling competing products constitutes bad
faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002)
(“Respondent is using the domain name at issue to resolve to a website at which
Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge
of Complainant’s business and trademarks. The Panel finds that this conduct is
that which is prohibited by Paragraph 4(b)(iv) of the
Policy.”); see also Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding
that the respondent’s use of the <saflock.com> domain name to offer goods
competing with the complainant’s illustrates the respondent’s bad faith
registration and use of the domain name, evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <apcupsbattery.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: February 11, 2010
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