D.P.L. Enterprises, Inc. v. No Valid Company
Claim Number: FA1005001324203
PARTIES
Complainant is D.P.L. Enterprises, Inc. (“Complainant”), represented by Ronald D. Green, of Greenberg Traurig, LLP,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <air-care-filters.com>, registered with NETWORK SOLUTIONS, LLC.
PANEL
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2010.
On May 12, 2010, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <air-care-filters.com> domain name is registered with NETWORK SOLUTIONS, LLC. and that the Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. 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 May 21, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 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@air-care-filters.com. Also on May 21, 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 June 1, 2010.
A timely Additional Submission, which complied with Supplemental Rule 7, was received on June 4, 2010.
On
June 7, 2010, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the National
Arbitration Forum appointed Carol M. Stoner, Esq., as
Panelist.
Complainant requests that the domain name <air-care-filters.com> be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges as follows:
Complainant DPL is a corporation
headquartered in
The Air Care Mark is one of the
most widely recognized marks in the air filter industry, per the declaration of
the company president, Richard Papaleo. DPL has expended substantial sums of
money advertising and promoting its business, particularly its air filters,
throughout the
DPL utilizes distributors for much of its air filter sales. In approximately 2003, it contracted with John Marks of Air Tech Systems, Inc. to distribute its products. Mr. Marks contacted DPL and asked if DPL would permit him to register the <air-care-filters.com> domain name to advertise and promote DPL’s products. Upon consideration of that request, DPL granted Mr. Marks and his company a license to use its mark as part of that domain name to promote DPL’s products online.
In 2010, Mr. Marks and his company ceased distribution of DPL’s products and began to use the <air-care-filters.com> domain name to advertise the products of DPL’s competitors. On February 15, 2010, DPL withdrew its license and asked that the domain name be transferred to DPL as mark owner. Mr. Marks refused to cease his infringing activities and to return the domain name.
The <air-care-filters.com> domain name is unquestionably similar to the AIR CARE Mark. It contains the dominant portion of the mark as well as the word “filters” which consumers associate with the Air-Care Mark. The domain name adds only the top level domain.
While Respondent formerly legitimately possessed the url pursuant to a license, the license has been revoked. Respondent is now using the mark to advertise, promote and sell goods and services of DPL’s competitors.
Respondent is not commonly known by the text of the <air-care-filters.com> domain. And Respondent is not making a legitimate noncommercial or fair use of the <air-care-filters.com> domain name, but rather is using it for commercial purposes.
Respondent is using the <air-care-filters.com> domain name in bad faith in derogation of ICANN Rule 3(b)(ix)(3) to advertise and sell the products of DPL’s competitors.
Respondent Marks knew about Complainant’s AIR-CARE Mark when he registered the domain name, as he asked for permission to register the name. He knew that he had no independent right to use the domain name without DPL’s permission. Respondent hopes that Internet users will find his website while searching for DPL on the World Wide Web.
Respondent’s prior knowledge of Complainant’s AIR-CARE Mark and his intent to profit by confusing the public are clear evidence of bad faith under the Policy ¶ 4(b)(iv).
B. Respondent
Respondent alleges as follows:
The domain name <air-care-filters.com> is not identical to the complainant’s service mark. Respondent asked the general manager of DPL enterprises if Mr. Papaleo would like to buy the url and was told, “We have no interest in the url, do as you wish.” Respondent did not have a contract with DPL, as the url was available to anyone who wanted to purchase it.
Respondent has spent over $100,000 over the last seven years on the site advertising the <air-care-filters.com> url with no objection from Complainant. Complainants do not want the retailers to know that that they sell their filters to the general public, so they sell under the name acfilter.com, so as not to let their retailers know that they are selling below their retailer’s prices. The account holder’s name is listed as No Valid Company, as a result of Respondent’s complaint to Network Solutions of privacy violations.
Respondent states his belief that the instant complaint is a result of Respondent’s complaint that Air Care was copying material from Respondent’s website, and placing
it on Complainant’s website. It was removed and this Complaint ensued.
Respondent states his admittedly non-lawyer belief that a registered trademark would endow the owner with exclusive use of that name, versus the 197,000,00 internet sites where the term “Air Care” is used.
Mr. Papaleo has recorded the logo style of trademark registration, and there are six other registered logos with the name of Air Care.
Complainant has failed to register a similarly sounding domain name. Respondent did
not initially register the domain name in bad faith as Complainant stated that they had
no interest in doing so.
The Respondent is not a distributor, but a retailer selling DPL and other products under the name of Air Tech. Complainant has stolen national accounts from Respondent’s company. On the customer service page, Respondent offers a disclaimer indicating, “Note, we sell our own brand of filters, Air Tech Systems, electrostatic air filters.”
C. Additional Submissions
On June 4, 2010, Complainant submitted a timely Additional Submission.
Complainant further alleges as follows:
Complainant states that Respondent failed to address the questions of confusing similarity; rights or legitimate interest in the domain name; and use and registration in good faith. Further, Complainant states that Respondent provides no evidence of any right to the infringing domain name.
Complainant states that Respondents’ non-identical argument fails in the face of the law’s requirement for the more minimal confusingly-similarity standard. Complainant convincingly refuted Respondent’s permission- to- use argument by stating that his usage was based solely upon his status as a distributor and conditional licensee. That is, he could use the mark to advertise and promote DPL’s products. “When Mr. Marks ceased distribution of DPL’s products, that license also terminated.”
Complainant states that Mr. Marks admission that he is using the infringing domain name to sell goods and serves of DPL’s competitors is not using it for a legitimate noncommercial or fair use purpose. His investment of monies does not procure for him any additional rights.
Complainant states that the contested mark is being used in bad faith, as by Mr. Marks own admission, he is using the mark to promote the products of DPL’s competitors. DPL has a valid and incontestable mark registration with the PTO.
FINDINGS
(1) the domain name <air-care-filters.com>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.
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.
Complainant submits evidence that it owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) (No. 2,581,421 issued June 18, 2002) for its AIR-CARE INDOOR AIR QUALITY SPECIALISTS mark. The Panel finds that Complainant possesses rights in its AIR-CARE INDOOR AIR QUALITY SPECIALISTS mark under Policy ¶ 4(a)(i) through its trademark registrations. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant has registered the mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i) analysis. See Experian Inf. Solutions, Inc. v. Credit Research, Inc. D2002-0095 (WIPO May 7, 2002) (“the fact that Complainant’s marks incorporate distinctive design elements is irrelevant to this analysis. Since a domain name can only consists of alphanumeric text, design elements are ignored when considering this element.”)
Complainant argues that the <air-care-filters.com>domain
name is confusingly similar to its AIR-CARE INDOOR AIR SPECIALISTS mark. The disputed name differs from Complainants
mark in two insignificant ways: 1) a hyphen and the descriptive term “filters”
have replaced the terms “INDOOR AIR QUALITY SPECIALISTS;” and 2) the generic
top-level domain (“gTLD”) “.com” has been added to the mark. Complainant contends that these changes are
not sufficient to distinguish the disputed domain name from Complainant’s
mark. The Panel finds that Respondent’s
disputed domain name is confusingly similar to Complainant’s AIR-CARE INDOOR
AIR QUALITY SPECIALISTS mark pursuant to Policy ¶4(a)(i). See Health Devices Corp. v.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna Barbera Prod., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant agrees that it had previously licensed Respondent to use its AIR-CARE INDOOR AIR QUALITY SPECIALISTS MARK in a domain name. However, Complainant disputes that Respondent is currently authorized or licensed to use its mark.
Neither Complainant nor Respondent have offered any evidence that Respondent is commonly known by the disputed domain name. The WHOIS information for the disputed domain name identifies “No Valid Company” as the registrant, while Complainant states that the disputed domain name registrant has been identified as “John Marks.” The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii) where there is no evidence on record indicating that Respondent is commonly known by the disputed domain name and Respondent did not refute Complainant’s assertions in its Response. See Educ. Broad. Corp. v. DomainWorks., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Am. W. Airlines, Inc. v. Paik, FA 206936 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name “Ilyoup Paik a/k/a/ David Sanders.” Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”
Complainant has submitted credible evidence to show that Respondent is using the <air-care-filters.com> domain name to operate a website displaying advertisements and third party links to Complainant’s competitors. Complainant rightfully argues that such use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. The Panel finds that Respondent’s use of the <air-care-filters.com> domain name to display third-party links for Complainant’s competitors 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 Expedia Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005)(finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii); see also Tesco Pers. Fin. Ltd.v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
Respondent
registered the domain <air-care-filters.com> subsequent to the USPTO registration of the
trademark Air-Care Indoor Air Quality Specialists in June 18, 2002, based upon
an oral license. However, this license was conditioned upon the limitation that
the domain name be used to advertise and promote DPL’s products. (See Annex 2,
Declaration of Richard Papaleo, President of DPL Enterprises, Inc.) This
condition was broken from the inception, as Respondent states in his response
that “”I sold many other product brand names on my site over 7 years, and they
had no objection” Thus, Respondent
admits to an intentional breach of contract, irrespective of his
unsubstantiated defense of ratification.
Respondent’s conditional license and immediate breach of the conditions
of the license is sufficient evidence for the Panel to conclude that
Respondent contemplated use of the domain name ab initio, to advertise products which competed with Complainant. Thus, Respondent’s initial registration of the domain name was in bad faith and violative of Policy ¶ 4(b)(iv).
By admission of
both parties, Respondent ceased distribution of DPL’s products in 2010, yet
refused to terminate his use of the disputed domain name. Continuing use of the
disputed domain name following cessation of the distributorship,
is a clear breach of the original agreement to use the name to advertise and
promote DPL’s products. The Panel is
convinced that Respondent’s post termination use of the <air-care-filters.com> domain name to operate a directory that displays
advertisements and third-party links to Complainant's competitors has disrupted
Complainant's business.
The Panel
therefore finds that Respondent has registered and used the <air-care-filters.com> name in bad faith. See Tesco Pers. Fin. Ltd. V. Domain
Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a
confusingly similar domain name to attract internet users to a directory
website containing commercial links to the websites of a complainant’s
competitors represents bad faith registration and use under Policy ¶ 4(b)(iii);
see also Persohn v. Lim, FA 874447
(Nat. Arb. Forum Feb 19, 2007)(finding bad faith registration and use pursuant
to Policy ¶ 4(b)(iii) where a respondent
used the disputed domain name to operate a commercial search engine with links
to the complainant’s competitors).
Complainant’s contends that Respondent registered
and used the <air-care-filter
filters.com> domain name in bad faith because Respondent
attempted to intentionally attract Internet users to its confusingly similar
domain name to collect click-through fees.
Panel agrees with Complainant’s presumption that
Respondent received compensation
for the third-party links displayed on its website through the mechanism of click-through fees, and that such use is evidence of bad faith. The Panel therefore finds that Respondent registered the <air-care-filters.com> domain name in bad faith under Policy ¶ 4(b)(iv) where Respondent has maintained a commercial links page and presumably collects click-through fees for the links displayed on its website. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
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 <air-care-filters.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner,
Esq., Panelist
Dated: June 30, 2010
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