Honeywell International Inc. v. Ademco Online
Claim Number: FA1004001318454
Complainant is Honeywell
International, Inc. (“Complainant”), represented by Peter S. Sloane,
of Leason Ellis, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ademcoonline.com>, registered with Godaddy.com, Inc.
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.
Dawn Osborne of Palmer Biggs Legal
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2010.
On April 12, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ademcoonline.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 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 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 email@example.com by e-mail. Also on April 14, 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 15, 2010.
The Complainant filed an Additional Submission complying with Supplemental Rule 7 on April 20, 2010.
The Respondent submitted two e mails on April 21, 2010 and a further submission submitted on April 25, 2010. The Complainant has submitted that the second e mail from April 21, 2010 and the further submission from April 25, 2010 are not within the rules and should be disregarded.
Pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne of Palmer Biggs Legal..
Complainant requests that the domain name be transferred from Respondent to Complainant.
RESPONDENT'S ADDITIONAL SUBMISSIONS
It appears that the Respondent is not legally represented and meant his e mails of April 21 to be merely holding replies until he could get to a computer. As such in the interests of justice and fairness the Panelist has decided to accept and consider the Respondent's additional submission dated 25 April, 2010.
The Complainant's submissions can be summarised as follows:
1. The Complainant is a leading company providing aerospace products, power generation systems, specialty chemicals, fibers, plastics and advanced materials.
2. In 2000 the Complainant acquired the mark ADEMCO for use in connection with burglar and fire alarm equipment which had been used since 1932.
is registered as a trade mark in the
4. The Complainant owns <ademco.com> which automatically directs to its web site.
5. ADEMCO is a well known mark and, as such, is entitled to brand protection.
6. The Respondent has incorporated the entire ADEMCO mark into the Domain Name to take advantage of the ADEMCO mark. The Respondent acknowledges the fame of the ADEMCO mark Adding the generic word online does not prevent the domain name being confusingly similar to the ADEMCO trade mark.
7. The Respondent has no legitimate right to use the ADEMCO mark and has received no authorisation from the Complainant. The Respondent is profiting by selling memberships using the ADEMCO mark. The Respondent is distributing materials and providing access to software of the Complainant without permission.
8. The Respondent's services or services offered on the site compete with services provided by the Complainant. The Respondent uses the Domain Name to advertise third party fire and burglar alarms. Customers are likely to assume that the Domain Name is the online web site of the Complainant and the Respondent adopted the Domain Name with this intention in mind. The Respondent's disclaimer is insufficient to avoid this confusion. The Respondent adopted and used the Domain Name in bad faith.
The Respondent's contentions can be summarised as follows:
1. The aim of the Respondent's site is to explain to customers how to install ADEMCO products. The Complainant will not provide such direct support to customers and if installed incorrectly there is a safety issue or the alarm may not work. The customers of the Respondent have left very good feedback. The site is beneficial to the Complainant and homeowners.
2. The Respondent has never tried to sell the Domain Name.
3. The Respondent is known as Ademcoonline.com. It does not represent itself to be the Complainant and has a disclaimer on its site.
4. The Respondent has no control over the ads that Google lists on the site. In any event ADT, featured in the ads, is a Honeywell dealer which should be good for the Complainant.
5. The Complainant's materials and software are available on other web sites for free.
C. Additional Submissions
Additional relevant points made in the Complainant's Additional Submission can be summarised as follows:
1. The Complainant does not dispute that the Respondent intends to help customers, but the Respondent does not have authorisation to offer its independent services under the ADEMCO mark in this misleading way.
2. The Respondent does not deny the Complainant's rights to the ADEMCO trade mark or the confusing similarity of the Domain Name to it.
3. Respondent permits Google to put advertisements on its web site, presumably for some commercial benefit.
4. The recent adaptation of the Respondent's disclaimer referring to the trade mark rights of the Complainant increases the chances that customers will think the Respondent is associated with the Complainant and is a tacit admission if nothing else that the Respondent considers the disclaimer was not correct before. The Respondent's web site is still confusing.
5. The Respondent was not known as Ademcoonline.com prior to adoption of the Domain Name. The adoption of this Domain Name in itself gives the commercial impression that the Respondent is affiliated with the Complainant.
6. The Respondent's logo is similar to the Complainant's mark used since 1932 incorporating and oval and red color.
Additional relevant points made in the Respondent's Additional Submission can be summarised as follows.
1. The Respondent's services only provide information on how to install the Complainant's alarm systems, not other systems.
2. There is no similarity between the two logos and no intention to deceive visitors to the Respondent's site.
The Panelist finds that the Complainant does have trade mark rights which are confusingly similar to the Domain Name and for the purposes of the Policy the Respondent does not have rights or a legitimate interest in the Domain Name which was registered and used in bad faith.
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.
Identical and/or Confusingly Similar
the .com suffix which is not taken into account for the purposes of the Policy,
the Domain Name consists of the Complainant’s ADEMCO registered trade mark and
the generic word “online”. The addition of the word “online” does not serve to
distinguish the Domain Name from the Complainant’s mark. See Broadcom
Corp v. Domain Depot FA 96854 (Nat. Arb. Forum Apr. 23, 2001)
(finding the broadcomonline.com domain name is confusingly similar to the
complainant's BROADCOM mark); see also Jerry Damson Inc. v.
Rights or Legitimate Interests
Complainant has indicated that it has not endorsed the Respondent in any way
and the Respondent’s business has no connection with the Complainant. The
Respondent was not commonly known by a name equivalent to the Domain Name prior
to its registration. Complainant contends that Respondent’s disputed domain
name resolves to a website displaying third-party links to unrelated websites
and also provides services which are charged for by means of a membership fee
some of which compete with the services of the Complainant. This appears on the
evidence to be the case. This type of use of a confusingly similar domain name
is neither a bona fide offering of
goods and services pursuant to Policy ¶ 4(c)(i), nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Skyhawke
Techs., LLC v. Timewinds Group Inc., FA 949608 (Nat. Arb. Forum May 18,
Registration and Use in Bad Faith
Paragraph 4 (b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.”
The Domain Name has been used to promote third party services not connected with the Complainant for the Respondent's commercial gain. The Panel's view on the evidence is that the site is misleading and the content increases the likelihood of confusion from use of a confusingly similar domain name in relation to competing services that the site is associated with the Complainant. In the view of the Panel this conduct constitutes bad faith under the Policy. See 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); see also My Space, Inc v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that respondent registered and used the myspacebot.com domain name in bad faith by diverting Internet users seeking the complainant's web site to its own website for commercial gain because the respondent likely profited from the diversion scheme). The reference to the Complainant's registered rights in the disclaimer in the view of the Panel as a matter of fact increases rather than decreases the likelihood of confusion. Disclaimers are often not read completely or correctly by customers and the Panel's view is that it would be insufficient to avoid confusion. See Auxilium Pharm Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006) ("Respondent's use of a disclaimer on its website does not mitigate evidence of bad faith evidence and use under Policy 4 (a)(iii)”). The logo used by the Respondent is also in the opinion of the Panel as a matter of fact similar to the Complainant's logo. The Respondent could have had the Google adword links to competing third party sites removed from its website if it had wished. See Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum Jan. 15, 2008) (“[A] party in the position of the respondent is also responsible for the sponsored links currently appearing on the web site”). As such it appears that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or the products or services on its web site.
As such the Complainant has proven that the Respondent has registered and used the Domain Name in bad faith under Paragraph 4 (b) (iv) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ademcoonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne of Palmer
Dated: April 28, 2010
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