Branson Ultrasonic Corporation v. Marc Hofius
Claim Number: FA1356200
Complainant is Branson Ultrasonic Corporation (“Complainant”), represented by Elizabeth Brock of Harness, Dickey & Pierce, P.L.C., Michigan, USA. Respondent is Marc Hofius (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bransonultrasonicwelders.com>, registered with GoDaddy.com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2010; the National Arbitration Forum received payment on November 4, 2010.
On November 3, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bransonultrasonicwelders.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 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@bransonultrasonicwelders.com. Also on November 4, 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 November 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
Complainant is in the business of designing, developing and manufacturing plastic joiners, precision cleaners and ultrasonic metal welding equipment.
Complainant operates under the BRANSON trademark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 823,959, issued February 14, 1967).
Respondent registered the disputed domain name <bransonultrasonicwelders.com> on July 11, 2000.
The website resolving from the disputed domain name has existed in two forms.
The previous form of the website offered used BRANSON products for sale.
The website currently resolves to a page displaying links to the websites of third parties that offer services and products similar to those of Complainant.
Respondent’s <bransonultrasonicwelders.com> domain name is confusingly similar to Complainant’s BRANSON mark.
Respondent does not have any rights to or legitimate interests in the domain name <bransonultrasonicwelders.com>.
When Complainant contacted Respondent regarding the disputed domain name, Respondent offered to sell the domain to Complainant for $10,000.
Respondent registered and uses the <bransonultrasonicwelders.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the BRANSON trademark pursuant to Policy ¶ 4(a)(i) by virtue of its USPTO mark registration. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that a complainant had established rights in the BLOOMBERG mark through its registration with the United States Patent and Trademark Office); see also Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that a complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark).
The disputed domain name is confusingly similar to Complainant’s BRANSON mark. Respondent has merely added the terms “ultrasonic” and “welders.” These additions are merely descriptive of Complainant’s products. Terms such as these, which are descriptive of the business done via a mark fail to distinguish a domain name from the mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business). The disputed domain name also adds the generic top-level domain (“gTLD”) “.com.” A gTLD does not distinguish a disputed domain name from a mark. 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).
Therefore, the Panel finds that the <bransonultrasonicwelders.com> domain name is confusingly similar to Complainant’s BRANSON trademark for purposes of Policy ¶ 4(a)(i).
Complainant alleges prima facie that Respondent does not have any rights to or legitimate interests in the <bransonultrasonicwelders.com> domain name. The burden therefore shifts to Respondent to prove that it does have rights to or legitimate interests in the contested domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant under this head of the Policy, the burden shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the mere assertion by the complainant that a respondent has no right to or legitimate interest in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
In light of the evidence presented, we conclude that Complainant has made out a sufficient prima facie case on the point of Respondent’s rights to or legitimate interests in the contested domain. Because Respondent has failed to respond to the allegations of the Complaint, we may presume that Respondent does not have rights to or legitimate interests in the <bransonultrasonicwelders.com> domain name. Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that record does not reveal any evidence indicating that Respondent is commonly known by the disputed domain name. Moreover, the pertinent WHOIS information shows that the registrant of the contested domain is “Marc Hofius,” which does not resemble the disputed domain name. Accordingly, we must conclude that Respondent is not commonly known by the contested domain name so as to have demonstrated that it has rights to or legitimate interests in the domain pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent has no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant and there was no other evidence in the record to suggest that that respondent was commonly known by the domain names there in dispute).
We also note that the undenied uses of the disputed domain name lack any tendency to suggest a bona fide offering of goods and services or a legitimate noncommercial or fair use. Respondent’s first use of the domain was to employ it to resolve to a website offering for sale goods in competition with the business of Complainant. Respondent’s current website uses the domain name to display links to websites that also compete with the business of Complainant. In each instance, it is evident that Respondent has sought commercial gain from these uses of the domain, neither of which evidences a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain pursuant to Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that a respondent’s use of a domain name, formed from a complainant’s LIFESTYLE LOUNGE mark, to redirect Internet users to that respondent’s own website for its commercial gain did not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that a respondent was not using a domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because that respondent used the domain name to take advantage of a complainant's mark by employing it to divert Internet users to a competing commercial site).
Finally under this branch of the Policy, Respondent does not deny Complainant’s allegation that when Complainant contacted Respondent regarding the disputed domain name, Respondent offered to sell the domain to Complainant for $10,000. This sum is much higher than Respondents likely out-of-pocket cost to register and establish the disputed domain name. Other panels have found offers of this type to evidence a lack of rights and legitimate interests in a contested domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that a respondent’s offer to sell a contested domain name for more than its out-of-pocket costs provided evidence that that respondent had no rights to or legitimate interests in the domain); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007):
An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.
Therefore we conclude that the offer of Respondent to sell the contested domain name to Complainant for $10,000 is evidence of Respondent’s lack of rights to and legitimate interests in the domain pursuant to Policy ¶ 4(a)(ii).
The Panel thus finds that Complainant has met the requirements of ¶ 4(a)(ii).
There is evidence of Respondent’s bad faith registration and use of the disputed domain name in Respondent’s offer to sell the domain to Complainant for a sum greatly in excess of any likely costs of acquisition. Previous panels have so found under Policy ¶ 4(b)(i). See Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where a respondent offered to sell a domain name to a complainant for $10,000 when that respondent was contacted by a complainant); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that a respondent used a domain name in bad faith because it offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
It is also evident that Respondent is using the website resolving from the contested domain name to disrupt Complainant’s business. Respondent’s use of a domain name which is confusingly similar to Complainant’s mark to redirect Internet users to its website for commercial gain demonstrates bad faith registration and use of the domain pursuant to 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 contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent registered and used disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using them to operate websites that competed with a complainant’s business).
Moreover, Respondent has plainly attempted to attract Internet users to its website, for financial gain, by creating a likelihood of confusion as to the source of the domain name. This is evidence of bad faith registration and use of the contested domain name pursuant to Policy ¶ (b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002):
By use of …[a contested domain name]… to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).
See also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because that respondent was gaining commercially from the likelihood of confusion between a complainant’s AIM mark and the competing instant messaging products and services advertised on that respondent’s website which resolved from the disputed domain).
For all of these reasons, the Panel finds that Complainant has met the requirements of ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <bransonultrasonicwelders.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 13, 2010
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