Emerson Electric Co. v. Green Media Concepts c/o Errol Chua
Claim Number: FA1005001327090
Complainant is Emerson
Electric Co. (“Complainant”), represented by David R. Haarz, of Harness, Dickey & Pierce, P.L.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <insinkeratorhotwaterdispenser.com>, registered with Name.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 28, 2010.
On May 28, 2010, Name.com confirmed by e-mail to the National Arbitration Forum that the <insinkeratorhotwaterdispenser.com> domain name is registered with Name.com and that Respondent is the current registrant of the name. Name.com has verified that Respondent is bound by the Name.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 June 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@insinkeratorhotwaterdispenser.com. Also on June 2, 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 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 (the "Rules") "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 <insinkeratorhotwaterdispenser.com> domain name is confusingly similar to Complainant’s INSINKERATOR mark.
2. Respondent does not have any rights or legitimate interests in the <insinkeratorhotwaterdispenser.com> domain name.
3. Respondent registered and used the <insinkeratorhotwaterdispenser.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Emerson Electric Co., manufactures and sells hot water dispensers, garbage disposals, and similar products. Complainant owns a trademark for the INSINKERATOR mark registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,248,333 issued May 29, 2007).
Respondent, Green Media Concepts c/o Errol Chua, registered the <insinkeratorhotwaterdispenser.com> domain name on October 19, 2009. The disputed domain name resolves to a website providing general information about hot and cold water dispensers, pictures of Complainant’s products, and sponsored links to Complainant’s competitors.
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 owns a trademark for the INSINKERATOR mark registered with the USPTO (e.g., Reg. No. 3,248,333 issued May 29, 2007). The Panel finds that a USPTO trademark registration sufficiently establishes Complainant’s rights in the INSIKERATOR mark according to Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Complainant argues that Respondent’s <insinkeratorhotwaterdispenser.com> is confusingly similar to Complainant’s INSINKERATOR mark because the disputed domain name consists of Complainant’s complete mark combined with the descriptive phrase “hotwaterdispenser” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that combining Complainant’s mark with a descriptive phrase, such as “hotwaterdispenser,” does not sufficiently distinguish the disputed domain name under the Policy ¶ 4(a)(i) confusing similarity analysis. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel also finds that the addition of the gTLD “.com” does not eliminate confusing similarity. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Accordingly, the Panel determines that Respondent’s <insinkeratorhotwaterdispenser.com> domain name is confusingly similar to Complainant’s INSINKERATOR mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Before Complainant can transfer the burden to demonstrate rights and legitimate interests to Respondent, Policy ¶ 4(a)(ii) requires that Complainant present an adequate prima facie case against Respondent. The Panel concludes that Complainant has presented a sufficient case in the instant proceeding; however, Respondent failed to satisfy its burden as it did not answer the Complaint. The Panel thus infers that Complainant’s allegation that Respondent lacks rights and legitimate interests is true. See Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . . It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel elects to consider the record, however, in light of the Policy ¶ 4(c) to determine if Respondent possesses any rights and legitimate interests in the disputed domain name.
Complainant alleges that Respondent is not commonly known by the <insinkeratorhotwaterdispenser.com> domain name. Complainant argues that in addition to the WHOIS information failing to reflect that Respondent is commonly known by the disputed domain name, there is no other evidence suggesting that Respondent is so known. Complainant has also not licensed or authorized Respondent to use Complainant’s INSINKERATOR mark. The Panel thus concludes that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant contends that Respondent’s use of the <insinkeratorhotwaterdispenser.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant asserts that Respondent’s resolving website features informational content about hot and cold water dispensers, along with pictures of Complainant’s products and sponsored links to Complainant’s competitors selling similar water dispenser products. The Panel finds that using Complainant’s mark in a domain name to redirect Internet users to a website displaying links to competitors of Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent uses the <insinkeratorhotwaterdispenser.com> domain name to redirect Internet users searching for Complainant’s products to Respondent’s website that advertises Complainant’s competitors’ products. By diverting Internet users away from Complainant toward competitors’ sites, Respondent is using the disputed domain name to disrupt Complainant’s business, indicating bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).
Complainant asserts that Respondent intentionally chose to
include Complainant’s INSINKERATOR mark in the <insinkeratorhotwaterdispenser.com> domain name to take advantage
of Complainant’s customer base.
Complainant argues that Respondent aims to redirect Complainant’s
intending customers to Respondent’s website that offers general information on
products like Complainant’s along with sponsored pay-per-click links to
websites where similar products could be bought from Complainant’s
competitors. The Panel finds that
Respondent’s activities reveal its intent to commercially profit from
misleading and attracting Complainant’s customers to a different website with
the use of Complainant’s own mark, demonstrating bad faith registration and use
under Policy ¶ 4(b)(iv). See Maricopa Cmty. Coll. Dist.
v. College.com, LLC, FA 536190 (Nat. Arb.
Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through
fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical
to Complainant’s
The Panel finds Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <insinkeratorhotwaterdispenser.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 8, 2010
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