Rockwell Automation, Inc. v.
Jose Hernandez
Claim Number: FA1004001316859
PARTIES
Complainant is Rockwell Automation, Inc. (“Complainant”), represented by John
M. Miller, of Rockwell Automation, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allenbradleyproducts.com>,
registered with Godaddy.com, Inc.
PANEL
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.
Charles A. Kuechenmeister
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 31, 2010.
On April 1, 2010, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <allenbradleyproducts.com> domain
name is registered with Godaddy.com, Inc.
and that the 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 April 9, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice the Complaint,
setting a deadline of April 29, 2010 by which Respondent could file a Response
to the Complaint, via e-mail to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts, and to postmaster@allenbradleyproducts.com. Also on April 9, 2010, the Written Notice of
the Complaint, notifying Respondent of the email addresses served and the
deadline for a Response, was transmitted to Respondent via post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts.
A timely Response was received and determined to be complete on April 30, 2010.
On May 3, 2010, Complainant filed a Reply to the Response, which was
treated as an Additional Submission timely filed, and was considered by the
Panel.
On May 7, 2010, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Charles A. Kuechenmeister as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Rockwell Automation,
Inc. (“Complainant”) is a Wisconsin corporation with its principal place of
business in
2. Complainant was
acquired by Rockwell International in 1985 and its name was changed to Rockwell
Automation in 2001, but it has continued to use the ALLEN-BRADLEY brand name in
connection with its industrial automation products. Its use of that name includes use of the domain
names <allenbradley.com> and <allen-bradley.com>, which were both
registered by Complainant in 1998.
3. Complainant holds the
following trademarks for ALLEN-BRADLEY registered with the United States Patent
and Trademark Office (“USPTO”): No. 1172994
for programmable and numerical controllers, registered October 13, 1981. No. 0712836 for pressure, temperature or time
responsive switches, registered March 21, 1961.
No. 0712800 for motor controls, registered March 21, 1961.
4. Complainant’s total sales
in 2009 surpassed $4.3 billion. It has
approximately nineteen thousand employees and operates in more than 85
countries worldwide.
5. Respondent registered <allenbradleyproducts.com> (the
“Domain Name”) on February 2, 2009. The
corresponding website uses the ALLEN-BRADLEY trade name to lure in users, who
are then presented with links to auctions on the website <ebay.com>.
6. Complainant has not
authorized or licensed Respondent to use its ALLEN-BRADLEY trade name.
7. Respondent’s sole use
of the Domain Name is for financial benefit by generating click-through revenue
as a member of the eBay Partner Network (“EPN”). At his website, Respondent displays auctions
for products that are not genuine Allen-Bradley products. In some cases the text regarding the specific
auction on eBay states that the product being sold is manufactured or produced
by another vendor, but this information only becomes available to the Internet
user after clicking through to <ebay.com> from Respondent’s website.
8. The Domain Name is
confusingly similar to Complainant’s ALLEN-BRADLEY trademark. Specifically, it creates initial interest
confusion, independent of the content of Respondent’s website. Respondent relies upon this initial interest
confusion to lure consumers to his website in order to generate income by then
redirecting them to eBay auctions.
9. Respondent offers no
actual goods or services of his own under the name “Allen-Bradley,” nor is he
known by that name. The WHOIS information for the Domain Name
lists the registrant as “Jose Hernandez.”
Respondent’s only use of
the name ALLEN-BRADLEY is to lure consumers to his website and redirect them to
<ebay.com>. Thus, Respondent has
no right or legitimate interest in that name.
10. Respondent registered
and is using the Domain Name in bad faith, in that Respondent used it to lure
consumers to his website and thereby generate click-through revenues for
himself. His bad faith is further
evidenced by the fact that the Domain Name incorporates almost verbatim a famous and well-known trademark
belonging to another, i.e.,
Complainant, which has been in continuous and extensive use for many years and
was registered with the USPTO since 1961.
Respondent had at a minimum constructive knowledge of Complainant’s
rights in that name at the time he registered the Domain Name.
B. Respondent
1. When Complainant
contacted me in March 2010 about my use of the Domain Name, I added a prominent
disclaimer to my website, stating that <allenbradleyproducts.com>
was in no way “affiliated, sponsored or approved by Rockwell Automation, the
owner of ALLEN-BRADLEY, and further stating that <allenbradleyproducts.com> can not assure that the products
listed on the website are new or genuine Allen Bradley since the items listed
here are derived from individual sellers on Ebay.” This disclaimer negates Complainant’s claim
of infringement.
2. I have currently
redirected <allenbradleyproducts.com>
to another site.
C. Additional Submission by Complainant
1. As of March 31, 2010
and as of May 3, 2010, Respondent had not added any disclaimer to his website. Even if he had, that would do nothing to alleviate
the Domain Name’s being confusingly similar to Complainant’s trademark or to mitigate
the initial interest confusion.
2. Respondent’s redirecting
traffic from his website to another site, other than <ebay.com>, likewise
does nothing to alleviate initial interest confusion.
DISCUSSION AND FINDINGS
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.
Complainant has fully demonstrated its rights in the
ALLEN-BRADLEY mark because it holds valid United States Patent and Trademark
Office (“USPTO”) registrations for the mark (e.g., Reg. No. 721,836 issued Mar. 21, 1961). A USPTO trademark registration is sufficient
proof of Complainant’s rights in the ALLEN-BRADLEY mark pursuant to Policy ¶
4(a)(i). See 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 Microsoft Corp. v. Burkes, FA
652743
(Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the
MICROSOFT mark through registration of the mark with the USPTO.”).
The Domain Name <allenbradleyproducts.com> is confusingly similar to Complainant’s ALLEN-BRADLEY mark because it contains Complainant’s mark except for the omission of the hyphen between two words, the addition of the generic term “products,” and the affixation of the generic top-level domain (“gTLD”) “.com.” Merely adding a generic term to Complainant’s mark fails to distinguish the disputed domain name from Complainant’s mark according to Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Also, the omission of the hyphen and the addition of the gTLD are minor modifications that do not affect the analysis of confusing similarity under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
The Domain Name <allenbradleyproducts.com> is confusingly similar to the ALLEN-BRADLEY mark, in which Complainant has substantial and demonstrated rights.
If a complainant
makes a prima facie case that the respondent lacks rights and legitimate
interest in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts
to respondent to show it does have rights or legitimate interest. See Hanna-
Complainant asserts and the evidence demonstrates that Respondent’s use of the Domain Name does not illustrate a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent’s Domain Name uses Complainant’s trademark in order to attract Internet users seeking ALLEN-BRADLEY products to Respondent’s pay-per-click website that features only various links to auctions on <ebay.com>. Respondent is not authorized to use the ALLEN-BRADLEY trademark. Some of the links featured on Respondent’s website resolve to auctions for products that are not authentic ALLEN-BRADLEY products. The Respondent’s use of the Domain Name to operate a pay-per-click website with links to <ebay.com> auctions for products, some of which are not authentic ALLEN-BRADLEY products, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the Domain Name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also 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)).
Further, Respondent is not commonly known by
the name ALLEN-BRADLEY or any variation thereof. The WHOIS information for the Domain Name
lists the registrant as “Jose Hernandez.”
This supports a finding that Respondent lacks rights and legitimate
interests in the Domain Name under Policy ¶ 4(c)(ii). See 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); see also
Complainant has made a prima facie case that Respondent has no right or legitimate interest in the Domain Name. Accordingly, the burden shifts to Respondent to demonstrate that he does.
Respondent’s only evidence or
argument in this regard is that his placing a disclaimer on his website
mitigates confusion between his Domain Name and Complainant and that this supports
his right to use the Domain Name as he is; in other words it demonstrates that
he has rights and legitimate interests in the Domain Name. The Panel disagrees. Although there is a dispute as to whether the
disclaimer actually appears on Respondent’s website, such a disclaimer, even if
present, does not mitigate initial interest confusion and for this reason does
not confer upon Respondent any right or legitimate interest in the Domain
Name. See AltaVista Co. v. AltaVisa,
FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does
not, and could not, accompany the domain name, then the “domain name attracts
the consumer’s initial interest and the consumer is misdirected long before
he/she has the opportunity to see the disclaimer”); see also DaimlerChrysler
Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of
a disclaimer, when the domain name consists of the complainant’s well-known
trademark, does not counter the expectation of Internet users that the domain
name is sponsored by the complainant).
Accordingly,
the Panel finds and determines that the Respondent has no right or legitimate
interest in the Domain Name.
Respondent uses Complainant’s ALLEN-BRADLEY
mark in his Domain Name to attract Internet users to Respondent’s resolving
website for commercial gain. Respondent
is a member of the <ebay.com> affiliate program and receives profit by
redirecting Internet users from Respondent’s website to auctions located on the
<ebay.com> website. These activities
demonstrate and support a finding of bad faith registration and use according
to Policy ¶ 4(b)(iv). See Yahoo!
Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002)
(“By use of <yahgo.com> to operate its search engine, a name that infringes
upon Complainant’s mark, Respondent is found to have created circumstances
indicating that Respondent, by using the domain name, has intentionally
attempted to attract, for commercial gain, Internet users to Respondent’s
website by creating a likelihood of confusion with Complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of the website or of a product
or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad
faith registration and use under Policy ¶ 4(b)(iv) where the respondent was
diverting Internet users searching for the complainant to its own website and
likely profiting).
Respondent argues that the presence
of a disclaimer on the resolving website prevents a finding of bad faith
registration. Again, there is a dispute
of fact about whether such disclaimer appears in Respondent’s website. The Panel finds, however, that even if
present, a disclaimer does not preclude a finding of bad faith registration and
use under Policy ¶ 4(a)(iii). See Continental
Airlines, Inc. v. Vartanian, FA
1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does not mitigate a finding of bad faith
under Policy ¶ 4(a)(iii) “); see
also Thomas & Betts Int’l, Inc. v. Power Cabling Corp., AF-0274
(eResolution Oct. 23, 2000) (finding bad faith based upon initial interest
confusion despite disclaimer and link to the complainant’s website on the
respondent’s website). As Complainant points out, the disclaimer,
even if present, would do
nothing to correct the Domain Name as being confusingly similar to
Complainant’s trademark or to mitigate the initial interest confusion the name
creates.
Finally,
Complainant asserts that, on account of Complainant’s registration of its
ALLEN-BRADLEY mark in 1961 and long-term use of the mark prior to Respondent’s
registration of the Domain Name in 2009, Respondent had constructive, if not
actual, notice of the ALLEN-BRADLEY mark.
The Panel notes that ALLEN-BRADLEY is not a generic name or term; its
notoriety derives solely from its association with automated industrial control
equipment. Respondent had to have had
actual knowledge of this name (and of Complainant’s rights in it) when he
registered the Domain Name. Indeed, it
is fair to infer, and the Panel finds that he selected that name because, on
account of its notoriety for automated control equipment, it would attract persons
interested in buying such equipment to his website, which was his
objective. His registration of the
Domain Name with that knowledge and for that purpose also supports a finding of
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
Accordingly, the Panel finds and determines
that respondent registered and is using the Domain Name in bad faith.
DECISION
Complainant having established all three elements required under the
ICANN Policy, the Panel concludes that the relief sought shall be GRANTED.
It is Ordered that the <allenbradleyproducts.com> domain
name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister
Dated May 20, 2010
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