Globe Union (Bermuda) Trading Ltd. v. Pertshire / Pertshire Marketing
Claim Number: FA 1359605
Complainant is Globe Union (Bermuda) Trading Ltd. (“Complainant”), represented by Glenn A. Rice of Funkhouser Vegosen Liebman & Dunn Ltd., Illinois, USA. Respondent is Pertshire / Pertshire Marketing (“Respondent”), Virgin (British) Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gerberfaucet.com>, registered with Fabulous.com Pty Ltd.
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 November 20, 2010; the National Arbitration Forum received payment on November 20, 2010.
On November 22, 2010, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <gerberfaucet.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 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@gerberfaucet.com. Also on November 24, 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 December 20, 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 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:
1. Respondent’s <gerberfaucet.com> domain name is confusingly similar to Complainant’s GERBER mark.
2. Respondent does not have any rights or legitimate interests in the <gerberfaucet.com> domain name.
3. Respondent registered and used the <gerberfaucet.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Globe Union (Bermuda) Trading Ltd., owns the GERBER mark. It offers plumbing goods such as water closets, lavatories, valves, and bath and shower fixtures under this mark. The mark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,197,796 issued June 15, 1982).
Respondent, Pertshire / Pertshire Marketing, registered the disputed domain name <gerberfaucet.com> on April 3, 2006. The disputed domain name resolves to a links page that offers hyperlinks to third party websites that sell similar goods as Complainant.
The Respondent has been a respondent in numerous UDRP proceedings where the disputed domain name has been transferred to a complainant. See Am. Airlines, Inc. v. Pertshire, FA 1305264 (Nat. Arb. Forum Mar. 16, 2010); see also Realty Income Corp. v. Pertshire Mktg., FA 1278685 (Nat. Arb. Forum Sept. 29 2009); see also Calgary Health Region v. Pertshire Mktg, FA 746434 (Nat. Arb. Forum Aug. 28, 2006); see also Bank of Am. Corp. v. Pertshire Mktg., FA 743461 (Nat. Arb. Forum Aug. 29, 2006); see also Yokohama Tire Corp. v. Pertshire Mktg., FA 739872 (Nat. Arb. Forum Aug. 18, 2006).
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 contends it has the necessary Policy ¶ 4(a)(i) rights in the GERBER mark. After viewing the evidence, the Panel agrees. Complainant has provided its registration of the mark, which previous panels have long held sufficiently demonstrates the required Policy ¶ 4(a)(i) rights. See Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority); see also SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has sufficient rights in the GERBER mark to proceed with this claim.
Complainant also alleges that Respondent’s domain name is confusingly similar to Respondent’s GERBER mark. Respondent has merely added a term that describes a section of Complainant’s goods, “faucet,” and the generic-top-level domain “.com.” Even when combined, these additions do not distinguish a domain name from a preexisting mark. See 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).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <gerberfaucet.com> is confusingly similar to Complainant’s GERBER mark.
The Panel finds Policy ¶ 4(a)(i) is met.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <gerberfaucet.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or 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). 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 Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
The WHOIS information for the disputed domain name identifies Respondent, “Pertshire / Pertshire Marketing,” as the registrant. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (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.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel further finds that Respondent has failed to demonstrate that the domain name has a bona fide offering of goods or services or a noncommercial or fair use. Respondent uses the confusingly similar domain name to display a links page. The links displayed are of the same nature as the mark that is infringed upon. Respondent is redirecting Internet users looking for Complainant, to Complainant’s competitors. Redirection for profit, which the Panel presumes Respondent is receiving, is evidence of no bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or no legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) is met.
Complainant alleges Respondent’s use of the <gerberfaucet.com> domain name is a part of a pattern of bad faith use and registration. Respondent has been a respondent in numerous UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants. See Am. Airlines, Inc. v. Pertshire, FA 1305264 (Nat. Arb. Forum Mar. 16, 2010); see also Realty Income Corp. v. Pertshire Mktg., FA 1278685 (Nat. Arb. Forum Sept. 29 2009); see also Calgary Health Region v. Pertshire Mktg, FA 746434 (Nat. Arb. Forum Aug. 28, 2006); see also Bank of Am. Corp. v. Pertshire Mktg., FA 743461 (Nat. Arb. Forum Aug. 29, 2006); see also Yokohama Tire Corp. v. Pertshire Mktg., FA 739872 (Nat. Arb. Forum Aug. 18, 2006). The Panel finds this constitutes a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Nat. Arb. Forum Apr. 6, 2001) (finding that where the respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists).
The Panel finds that the links displayed on Respondent’s website demonstrate an intent to disrupt Complainant’s business and therefore indicate bad faith registration and use pursuant to Policy ¶ 4(b)(iii). The links displayed directly compete with the goods Complainant offers. The use of a confusingly similar domain name to compete with the business of a preexisting mark holder is an indication of bad faith registration and use.
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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”) Therefore, the Panel finds that Respondent’s intent to disrupt Complainant’s business is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent registered and is using the confusingly similar domain name to create confusion regarding the website affiliation with Complainant. Respondent is attempting to represent to Internet users that it is a source of Complainant’s goods. Registration and use of a confusingly similar domain name in order to attract Internet users for financial profit is evidence of a bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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 Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> 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).”).
The Panel finds Policy ¶ 4(a)(iii) is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gerberfaucet.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 27, 2010
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