Donaldson Company, Inc. v. Kinequip Inc.
Claim Number: FA1005001325232
Complainant is Donaldson Company, Inc. (“Complainant”), represented by Joel
D. Leviton, of Fish & Richardson P.C., P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <buydonaldson.com>, registered with GoDaddy.com.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on May 18, 2010.
On May 19, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <buydonaldson.com> domain name is registered with GoDaddy.com and that 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 May 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 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@buydonaldson.com. Also on May 20, 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 June 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <buydonaldson.com> domain name is confusingly similar to Complainant’s DONALDSON mark.
2. Respondent does not have any rights or legitimate interests in the <buydonaldson.com> domain name.
3. Respondent registered and used the <buydonaldson.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Donaldson
Company, Inc., is a worldwide provider of filtration systems with business
locations in 37 countries providing its filtration and air purification
products and services in more than 80 countries. Complainant holds multiple trademark
registrations with the United States Patent and Trademark Office (“USPTO”) for
its DONALDSON mark (e.g., Reg. No.
514,998 issued September 13, 1949).
Respondent, Kinequip Inc., registered the disputed domain name on March 24, 2005. The disputed domain name resolves to a parked website featuring numerous third-party links to websites that offer air cleaning and filtration products that directly compete with Complainant.
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 the 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 asserts rights in its DONALDSON mark based on
its multiple registrations of the DONALDSON mark with the USPTO (e.g., Reg.
No. 514,998 issued September 13, 1949).
The Panel finds that Complainant’s registration of its DONALDSON mark
dating as far back is 1949 is substantial evidence of Complainant’s rights in
the mark for the purposes of Policy ¶ 4(a)(i).
See 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.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s
federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks
were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant asserts that
Respondent’s <buydonaldson.com> domain name is confusingly similar to Complainant’s DONALDSON mark. Respondent’s disputed domain name
incorporates the entirety of Complainant’s mark and adds the generic term “buy”
and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a
generic term creates a confusing similarity between the disputed domain name
and Complainant’s mark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding
that the respondent’s domain names were confusingly similar to Complainant’s
GOOGLE mark where the respondent merely added common terms such as “buy” or
“gear” to the end); see also 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 the
complainant combined with a generic word or term). The Panel also finds that the addition of a
gTLD is not relevant for the purposes of Policy ¶ 4(a)(i)
analysis. See 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); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar).
Therefore, the Panel finds that Respondent’s <buydonaldson.com> domain name is confusingly similar to Complainant’s
DONALDSON mark pursuant to Policy ¶ 4(a)(i).
The
Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant argues that Respondent lacks rights and legitimate
interests in the disputed domain name.
Policy ¶ 4(a)(ii) requires that Complainant
first make a prima facie case in
support of its allegations before the burden will shift to Respondent to prove
it has rights or legitimate interests in the disputed domain name. The Panel finds that a sufficient prima facie case has been established
based on Complainant’s submissions in this case and that Respondent’s failure
to respond can be seen as additional evidence that Respondent lacks rights and
legitimate interests. See 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.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
However, the Panel will examine the record to determine whether
Respondent has rights or legitimate interests in the disputed domain name under
Policy ¶ 4(c).
Complainant indicates that the WHOIS information identifies the registrant of the disputed domain name as “Kinequip Inc.” which Complainant argues does not suggest Respondent is commonly known by the disputed domain name. Without any evidence in the record to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant alleges that the disputed domain resolves to a parked website featuring third-party links that directly compete with Complainant’s business in the air cleaning and filtration products industry. The Panel presumes that Respondent profits via the receipt of click-through fees generated by the displayed third-party links. The Panel finds that Respondent’s use of the confusingly similar disputed domain name for this purpose is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use for the purposes of 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant alleges that Respondent is using the disputed
domain name to re-direct Internet users to Respondent’s commercial website that
offers links to products that compete with Complainant’s air cleaning and
filtration products business.
Complainant claims that Respondent’s use of the disputed domain name for
this purpose disrupts Complainant’s business.
The Panel agrees and finds that Respondent’s registration and use of the
disputed domain name is evidence of bad faith under Policy ¶ 4(b)(iii). 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 argues that Respondent’s use of the disputed domain name to link Internet users seeking Complainant’s products with a website the provides numerous sponsored links to Complainant’s competitors exploits the goodwill associated with Complainant’s DONALDSON mark and is evidence of Respondent’s bad faith. The Panel finds that Respondent’s use of the confusingly similar disputed domain name to intentionally attract Complainant’s potential customers for Respondent’s own commercial gain by capitalizing on the use of Complainant’s mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant argues that although Respondent’s disputed domain name resolves to a parked website, Respondent itself authorized the use of the parking service and condoned its use of the confusingly similar disputed domain name. The Panel finds that Respondent is ultimately responsible for the content displayed on a parked website and that as such it is further evidence of Respondent’s bad faith. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent. [The] respondent has given those service providers permission to use the Disputed Domains . . . . [The] respondent has expressly authorized the activities being carried on by the domain parking service providers, either specifically or by carte blanche. It must be presumed that [the] respondent is aware of the general nature of the services provided by those organizations and the business model that they employ . . . . The key fact here is that [the] respondent, in collaboration with the domain parking service providers, is exploiting [the] complainant's goodwill.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buydonaldson.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 28, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum