Honeywell International Inc. v. Corp Development & Management
Claim Number: FA1004001319204
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 <ademcosales.com>, registered with Godaddy.com.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 14, 2010.
On April 15, 2010, Godaddy.com confirmed by e-mail to the National Arbitration Forum that the <ademcosales.com> domain name is registered with Godaddy.com and that the Respondent is the current registrant of the name. Godaddy.com has verified that Respondent is bound by the Godaddy.com 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 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 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 16, 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 May 6, 2010.
Complainant’s Additional Submission was received on May 11,
Respondent’s Additional Submission was received on May 13,
On May 13, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant informs that it is a diversified technology and manufacturing leader of aerospace products and services, control technologies for buildings, homes and industry, automotive products, power generation systems, specialty chemicals, fibers, plastics and advanced materials.
In 2000, Complainant acquired all rights and title to the mark ADEMCO for use in connection with the manufacture and distribution of burglar and fire alarm equipment. ADEMCO, an acronym for Alarm Device Manufacturing Company, has extensively been used as a name and mark since the founding of the company in 1932. ADEMCO has been registered for many years with the USPTO. Copies of some of the Certificates of Registration attached as Exhibit D of the Complaint. The said trademark is also registered in a number of other countries (as shown by Exhibit E of the Complaint).
Complainant, through its predecessor-in-interest, registered the domain name <ademco.com> in 1995, and the related website automatically redirects Internet users to the website of Honeywell Security Group.
mark ADEMCO has such an illustrious history that Complainant has even opened an
The Complainant states that the disputed domain name is identical to, or confusingly similar with, Complainant’s trademark ADEMCO, as <ademcosales.com> incorporates the ADEMCO mark in full, with the addition of the generic term “sales”.
The Complainant further states that the Respondent has no legitimate right or interest in the disputed domain name, especially as Respondent is using the domain name to intentionally attract customers of Complainant’s products and thereby divert them away from Complainant and its authorized distributors, licensees, and affiliates. According to the Complainant, Respondent is using <ademcosales.com> to sell, without Complainant’s license or authorization, competitive third party products. Respondent’s website under the disputed domain name employs a drop-down tab feature entitled “Shop Manufacturers”, allowing Internet users to specifically search not just for ADEMCO branded products but also for products manufactured by companies other than the Complainant.
Respondent registered the disputed domain name on April 1, 2008 – more than a decade after the Complainant registered its mark as a domain name (on March 14, 1995) and several decades after Complainant began using its mark (in 1923) in the burglar and fire alarm industry.
The Complainant argues that Respondent’s website, through the unauthorized use of the domain name, attracts Internet users desirous of acquiring Complainant’s ADEMCO materials and/or its products and diverts them from their legitimate source for Respondent’s unlawful commercial gain. Moreover, Respondent has intentionally crafted a website to mislead internet users confused by the domain name into mistakenly believing that Respondent is Complainant (or at least affiliated with Complainant). Complainant accuses Respondent for having created a header on the home page of its website using Complainant’s marks in a blatant attempt to try to communicate legitimacy and/or authorization by Complainant. The display of the name Honeywell in the distinctive stylized letters used by Complainant and the display of the mark ADEMCO in the color red for which Complainant is well-known is sure to mislead consumers into mistakenly believing that Respondent is Complainant or that Complainant has endorsed the activities of Respondent.
In addition, the Complainant claims that Respondent has plagiarized Complainant’s copyrighted marketing materials on its web site.
Complainant concludes that it is beyond dispute that Respondent has registered and is using <ademcosales.com> in bad faith.
The Respondent claims to be an ADEMCO dealer, and informs that the web site under <ademcosales.com> was set up in 2008 for the main sale of Ademco and Honeywell products and accessory products related to the sale and installation of Ademco and Honeywell product line. Mr Charles Lufkin, president and owner of the Respondent, has been an Ademco Dealer for more than 35 years, with an account under Action Alarm Consultants, Inc.
The Respondent further claims that the Complainant has had full knowledge of Respondent’s registered domain name and web site, and has given Respondent special pricing in order to compete on the Internet.
Respondent denies that it has ever claimed to be the same company as the Complainant, and informs that it has always stated on its web site that <ademcosales.com> is a division of Corporate Development & Management, Inc.
Respondent states that the disputed domain name is not confusingly similar to the Complainant’s name and mark According to the Respondent, Complainants logo is used only to show that Respondent sells Complainant’s products.
Respondent claims that all activity on behalf of the Respondent has been out in the open and with the full knowledge of the Complainant, and further that the Complainant has spent many hours and thousands of dollars to promote the site and to help it to get to the top of the Google search engine, including a recent $5000 payment to a company to help in this effort. Respondent asserts that there has never been a complaint in the two years it has been in business, from the Complainant or any else about the site. In addition the Complainant has discontinued the use of the <ademcosales.com> web site and forwards all traffic to its Honeywell site.
Respondent denies being a competitor of the Complainant, as Complainant does not sell directly to end users, only to dealers like the Respondent.
Respondent claims to have a legitimate right and interest in using the disputed domain name, being a dealer of the Complainant and therefore with the right to advertise that Respondent sells Complainant’s products. The items on the corresponding web site are 99% supplied by the Complainant, and the rest are items which the Complainant does not sell at all.
Respondent, referring again to the fact that it is an authorized dealer of the Complainant, denies having registered and using the domain name in bad faith. Respondent declares its willingness to put more space between the logo of the Complainant and the logo of the Respondent, should this be a requirement from the Complainant.
C. Additional Submissions
Complainant’s Additional Submission largely reiterates the allegations made in the Complainant, adding a reference to the UDRP Case Oki Data Ams., Inc, v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) and an extensive discussion in support of Complainant’s view that Respondent does not meet the criteria of the said case.
The Complainant refers to Respondent’s statement that its purported owner, Charles Lufkin, has been an authorized dealer of Complainant for over 35 years and is currently still an active installing dealer operating under the name Action Alarm Consultant, Inc. Complainant notes in its Additional Submission that neither Mr. Lufkin nor Action Alarm Consultants, Inc. are parties to these proceedings. Complainant argues that Respondent has made no showing that establishes privities between Respondent and Mr. Lufkin or between Respondent and Action Alarm Consultants, Inc.
Additionally, Complainant argues that Respondent’s argument that there is a relationship between Complainant and Respondent based on Respondent’s dealing with a subsidiary of Complainant is incorrect. Complainant states that Respondent’s current business arrangement allows them to purchase products from Complainant’s subsidiary ADI and resell them. Complainant argues however that Respondent cannot use this arrangement to refer to Respondent as an authorized dealer of Complainant’s products. Complainant further argues that to become an authorized dealer an installer must participate in one of two distinct programs offered by Complainant which are wholly separate from merely purchasing products from Complainant’s subsidiary. Complainant asserts that neither Mr. Lufkin nor Respondent are members of either program and as such cannot be considered authorized dealers of Complainant’s products under its ADEMCO mark.
In its Additional Submission, Respondent repeats that it has legitimate interest in the disputed domain name and is not, nor has ever, been in bad faith within the meaning of the Policy.
Respondent asserts that all of the products sold on the Respondents web page are sold by Complainant solely owned company Ademco Distribution, Inc., and that Respondent is an authorized purchaser / qualified reseller of their security products.
The Panel finds that Complainant has established trademark rights in the ADEMCO trademark, represented by (among other registrations):
U.S. No. 1,198,553 ADEMCO, issued June 22, 1982
Respondent registered the disputed domain name <ademcosales.com> on April 1, 2008.
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.
The Complainant has provided evidence of multiple trademark registrations of its ADEMCO mark with the USPTO.
The Panel finds that Complainant’s registration of its ADEMCO trademark is sufficient to establish Complainant’s rights under 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 relevant part of the disputed domain name is <ademcosales>. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The domain name is distinguished only by the addition of the generic term “sales”. This alteration does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).
The only feature of the word “sales” is a clear indication that the connecting web site is of commercial purpose.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark ADEMCO. The Policy ¶ 4(a)(i) has been satisfied.
The Respondent claims to be an “authorized purchaser” and “qualified reseller” of Complainant’s products, further stating that being a dealer gives Respondent the right to advertise that Respondent sells Complainant’s products. Respondent also asserts that it “mainly” sells Complainant’s products, and that up to 99% of the items sold on the corresponding web site are supplied by the Complainant.
Complainant, on the other hand, states that Respondent’s current business arrangement allows them to purchase products from Complainant’s subsidiary ADI and resell them, but that this arrangement does not make Respondent an authorized dealer of Complainant’s products. Complainant informs that to become an authorized dealer an installer must participate in one of two distinct programs offered by Complainant which are wholly separate from merely purchasing products from Complainant’s subsidiary.
In the lack of any other supporting documents from the Respondent, and in view of the above statement of the Complainant, the Panel concludes that while Respondent does seem to resell Complainant’s products (and thus have a dealer account number), it is not the same as being an officially authorized dealer or reseller of the Complainant.
However, previous panels have held that, under certain conditions, a reseller may have legitimate rights to a disputed domain name. One condition is that there is an authorization from the Complainant, which seems not to be the case here. Other conditions, as set up by the said previous panels, are that the Respondent is
- actually selling the goods or services at issue;
- selling only Complainant’s products on the website in question;
- accurately disclosing the relationship between Complainant and Respondent (meaning Respondent is not causing confusion by suggesting Respondent is the owner of the trademark); and
- not attempting to corner the market in all domain names incorporating Complainant’s mark and thereby prevent Complainant from reflecting its mark in its own domain name).
Although Respondent sells “mainly” the Complainant’s products, the Panel is not convinced that this in fact represents as much as 99% of Complainant’s ADEMCO products. The drop-down menu, featuring a number of other products, strongly indicates that the competitive products stand for considerably more than 1% of the available items. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”)
Further, the Panel has carefully considered Complainant’s and Respondent’s arguments and evidence regarding Respondent’s use of Complainant’s logos, text, etc. Respondent seems to confuse its right to inform that it sells genuine products of the Complainant with a (non-existing) right to create a confusing domain name and add features to the corresponding web site suggesting a closer relationship with the Complainant than just being a reseller with no specific and official authorization. See Caterpillar Inc. Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
In conclusion, the Respondent cannot rely on the situation described in the Oki Data Americas, Inc. v. ASD Inc., and other similar cases, and this Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name, and finds for Complainant under Policy ¶ 4(a)(ii).
Respondent was obviously aware of the existence of Complainant’s trademark when registering the disputed domain name. It is further concluded that the domain name was chosen in order to associate to Complainant’s company, mark, products and services.
Respondent has used <ademcosales.com> “mainly” to sell products of the Complainant, but also products of Complainant’s competitors.
As shown by Complainant, Respondent has created a header on the website resolving from the disputed domain name that displays Complainant’s marks in an attempt to communicate authorization by Complainant. As also shown by the Complainant, the resolving website contains prominently displayed word-for-word reproductions of Complainant’s marketing materials.
The Panel finds that Respondent’s inclusion of Complainant’s mark and other content from Complainant’s own website is an attempt by Respondent to pass itself off as Complainant or at least to create an impression of a very close business relationship, which is further evidence that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
All in all, the Panel holds that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel concludes that the Complainant has succeeded in proving the three elements within paragraph 4(a) 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 <ademcosales.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: May 20, 2010
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