national arbitration forum

 

DECISION

 

Altec Industries, Inc. v. James Harris

Claim Number: FA1004001317549

 

PARTIES

Complainant is Altec Industries, Inc. (“Complainant”), represented by David E. Malick, of RichardsonClement PC, Alabama, USA.  Respondent is James Harris (“Respondent”), Wisconsin, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <altecsupply.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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 6, 2010.

 

On April 6, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <altecsupply.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 April 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 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@altecsupply.com by email.  Also on April 8, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 3, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1.  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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is a manufacturer of utility truck bodies and of accessories for such vehicles, including aerial buckets, winches, and hydraulic auger units. 

 

Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ALTEC mark (including Reg. No. 849,304, issued on May 21, 1968).

 

Respondent is not commonly known by the <altecsupply.com> domain name, and Complainant has not given Respondent permission to use Complainant’s ALTEC mark. 

 

Respondent registered the <altecsupply.com> domain name on June 13, 2009.

 

Respondent’s domain name redirects Internet users to <godaddy.com> at which links and advertisements for businesses unrelated to Complainant, as well as to businesses that sell Complainant’s vehicles, are displayed.

 

The links and advertisements displayed on the website resolving from the disputed domain name produce commercial gain for Respondent in the form of referral fees.

 

Respondent’s <altecsupply.com> domain name is confusingly similar to Complainant’s ALTEC mark.

 

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

Respondent registered and uses the <altecsupply.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)   the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2)   Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)   the same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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 a 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:

 

i.         the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in its ALTEC mark under Policy ¶ 4(a)(i) through its multiple trademark registrations with the USPTO.  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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). 

 

Respondent’s <altecsupply.com> domain name contains Complainant’s ALTEC mark in its entirety, merely adding the generic term “supply” and the generic top-level domain (“gTLD”) “.com.”  These additions to Complainant’s mark to form the disputed domain name are not sufficient to distinguish the domain name from the mark.  Respondent’s <altecsupply.com> domain name is therefore confusingly similar to Complainant’s ALTEC mark under Policy ¶ 4(a)(i). See 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 a complainant combined with a generic word or term); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a 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)); further see Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):

 

The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights to or legitimate interests in the <altecsupply.com> domain name.  Complainant is required to make out a prima facie case in support of these allegations.  Once Complainant has produced such a prima facie case, the burden shifts to Respondent to show that it does have rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:  

 

complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.

 

See also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008): “It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”

 

Complainant has produced a prima facie case.  Owing to Respondent’s failure to respond to the Complaint filed in these proceedings, we may presume that Respondent does not have any rights to or legitimate interests in the <altecsupply.com> domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):

 

[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.

 

See also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests in a contested domain name where a respondent failed to respond to a complaint filed under the Policy).  Nonetheless, we will examine the evidence of record, by reference to the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizant under the Policy.

 

We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <altecsupply.com> domain name, nor has Complainant given Respondent permission to use Complainant’s ALTEC mark.  Moreover, the WHOIS information for the disputed domain name identifies the registrant of the disputed domain name only as “James Harris”, which does not resemble the disputed domain name.  On this record, we must conclude that Respondent is not commonly known by the <altecsupply.com> domain name so as to have demonstrated rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name). 

 

We also observe that Complainant alleges, without objection from Respondent, that Respondent’s <altecsupply.com> domain name redirects Internet users to the website of its registrar at <godaddy.com>, and that the third-party links and advertisements displayed on the website resolving from the disputed domain name produce commercial gain for Respondent in the form of referral fees.  Respondent’s use of the contested domain name in the manner alleged is not a use in connection with 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 Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that a respondent’s parking of a domain name containing a complainant’s mark for that respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that a respondent did not have rights to or legitimate interests in a domain name that used a complainant’s mark and redirected Internet users to a website that paid domain name registrants for referring those users to its search engine and pop-up advertisements); further see Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that a respondent’s use of a disputed domain name to redirect Internet users to commercial websites unrelated to a complainant, and presumably with the purpose of receiving a commission or pay-per-click referral fee, did not evidence rights to or legitimate interests in the domain name).

 

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

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent is using the disputed domain name, which is confusingly similar to Complainant’s ALTEC mark, to redirect Internet users to the third-party <godaddy.com> domain name at which various third-party links are displayed.  Complainant also argues that Respondent receives click-through referral fees from the links displayed on the website resolving from the disputed domain name.  Respondent does not deny these assertions.  We therefore conclude that Respondent has engaged in bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iv). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that a respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and a complainant’s LIL PUNK mark by using the contested domain name to maintain a website with links to third-party websites unrelated to Complainant, and that such use of the domain for that respondent’s commercial gain demonstrated bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a domain name confusingly similar to a complainant’s mark in order to display links to various third-party websites demonstrated bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv)).

 

In addition, it appears that Respondent registered the <altecsupply.com> domain name with at least constructive knowledge of Complainant’s rights in the ALTEC trademark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office.  Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).

 

For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.         

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <altecsupply.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  May 10, 2010

 

 

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