Rockwell Automation, Inc. v. Jose Hernandez
Claim Number: FA1004001316859
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.
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
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 firstname.lastname@example.org. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Rockwell Automation,
Inc. (“Complainant”) is a Wisconsin corporation with its principal place of
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.
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.
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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