Honeywell International Inc.
v. Corp Development & Management
Claim Number: FA1004001319204
PARTIES
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.
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.
PROCEDURAL HISTORY
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 postmaster@ademcosales.com. 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
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
The
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.
B. Respondent
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
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.
Respondent
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.
FINDINGS
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.
DISCUSSION
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).
See
Oki Data
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.
DECISION
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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