Gilson, Inc. and Gilson, Inc.'s wholly owned and controlled subsidiary: Gilson, S.A.S. v. to attn. of Mapname.com customer 3
Claim Number: FA1005001325774
Complainant is Gilson, Inc. and Gilson, Inc.'s wholly owned and
controlled subsidiary: Gilson, S.A.S. (“Complainant”), represented by Eric
M. Schmalz of Foley & Lardner LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <pipettman.com>, registered with Directi.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically May
20, 2010.
On May 22, 2010, Directi confirmed by e-mail to the National Arbitration Forum that the <pipettman.com> domain name is registered with Directi and that Respondent is the current registrant of the name. Directi verified that Respondent is bound by the Directi registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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@pipettman.com. Also on June 1, 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 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 <pipettman.com> domain name is confusingly similar to Complainant’s PIPETMAN mark.
2. Respondent has no rights to or legitimate interests in the <pipettman.com> domain name.
3. Respondent registered and used the <pipettman.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Gilson, Inc. and
Gilson, Inc.'s wholly owned and controlled subsidiary: Gilson, S.A.S., is an
industry leader in the manufacture of pipettes and the sale of pipettes
exceeding 200,000 units annually. Complainant
registered the <pipetman.com> domain name in connection with the products
sold under its PIPETMAN mark April 6, 1998.
Complainant holds a trademark registration for its PIPETMAN mark with
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,080,818
issued October 29, 1978).
Respondent registered the disputed domain name March 1, 2007. The disputed domain name resolves to a website selling products previously manufactured by Complainant, including used and refurbished items, as well as products that seek to compete directly with Complainant’s products that are manufactured by third-parties.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 PIPETMAN mark based on its holding of a trademark registration for the mark with the USPTO (Reg. No. 1,080,818 issued January 3, 1978).
The Panel finds that Complainant’s registration with the USPTO is sufficient evidence of its rights in the PIPETMAN mark for the purposes of 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.”).
Complainant asserts that Respondent’s <pipettman.com> domain name is confusingly similar to Complainant’s PIPETMAN mark. Respondent’s disputed domain name merely adds an additional letter “t” to the entirety of Complainant’s mark. Respondent’s disputed domain name also appends the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a single letter to Complainant’s mark creates a confusing similarity between the disputed domain name and Complainant’s mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i).) 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Therefore, the Panel finds that Respondent’s <pipettman.com> is confusingly similar to Complainant’s PIPETMAN mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and
legitimate interests in the disputed domain name. Pursuant to the requirements of Policy ¶ 4(a)(ii), Complainant must first make a prima facie case to support its allegations before the burden of
proof on rights or legitimate interests shifts to Respondent to show that it
does have such rights or legitimate interests.
The Panel finds that Complainant made a prima facie case. The Panel is further permitted to make an
inference that Respondent lacks such rights because Respondent failed to
respond to the allegations in this proceeding.
See Intel
Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding
the “complainant must first make a prima facie case that [the]
respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii), and then the burden shifts to
[the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to
respond, it is presumed that Respondent lacks all rights and legitimate
interests in the disputed domain name.”).
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists the registrant as “PrivacyProtect.org,” which the Panel finds provides no evidence that Respondent is 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that the <pipettman.com> domain name resolves to a website that sells Complainant’s used and refurbished products as well as products from third parties who seek to compete directly with Complainant. The Panel finds that use of the disputed domain name for such a purpose is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).
The Panel finds that Respondent’s disputed domain name
incorporates a common misspelling of Complainant’s PIPETMAN mark and that
Respondent is taking advantage of a common typing error by incorporating an
additional letter “t” in the disputed domain name. The Panel finds that this
conduct, typosquatting, permits findings that Respondent has no rights to or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Microsoft Corp. v.
Domain Registration
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant also urges that Respondent registered and used the disputed domain name in bad faith. The Panel finds that Respondent’s use of the disputed domain name to sell Complainant’s used and refurbished products, as well as to offer products from third parties that would seek to compete with Complainant, constitutes a disruption of Complainant’s business. Internet users seeking to purchase Complainant’s goods may instead purchase goods from Respondent or from Complainant’s third-party competitors in the pipette industry based on the links displayed on the website resolving from the confusingly similar disputed domain name. The Panel finds that this evidence supports findings of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Complainant also contends that Respondent’s use of the disputed domain name to distribute products previously manufactured by Complainant and to sell products manufactured by Complainant’s competitors is evidence that Respondent is using the confusingly similar disputed domain name to intentionally attract Internet users for Respondent’s own commercial gain. The Panel finds that Respondent’s commercial disruption using Complainant’s own protected mark supports findings that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
As established previously, Respondent also engaged in the
practice of “typosquatting” by incorporating a common misspelling of
Complainant’s mark into the disputed domain name. The Panel finds that “typosquatting” is
itself evidence to support findings that Respondent registered and used the
disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc.
v. Geer, FA 477183 (Nat.
Arb. Forum July 15, 2005)
(finding that the respondent’s registration and use of the <nextell.com>
domain name was in bad faith because the domain name epitomized typosquatting
in its purest form); see also Microsoft
Corp. v. Domain Registration
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pipettman.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 6, 2010.
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