Putzmeister America, Inc. v. James III
Claim Number: FA1103001377168
Complainant is Putzmeister America, Inc. (“Complainant”), represented by Walter M. Schey, California, USA. Respondent is James III (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <putzmeisterusa.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 10, 2011; the National Arbitration Forum received payment on March 10, 2011.
On March 10, 2011, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <putzmeisterusa.com> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 March 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 2011 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@putzmeisterusa.com. Also on March 11, 2011, 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 April 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <putzmeisterusa.com> domain name is confusingly similar to Complainant’s PUTZMEISTER mark.
2. Respondent does not have any rights or legitimate interests in the <putzmeisterusa.com> domain name.
3. Respondent registered and used the <putzmeisterusa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Putzmeister America, Inc., owns the exclusive rights to the PUTZMEISTER mark which it uses in connection with its sale of new and used concrete pumping equipment. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its PUTZMEISTER mark (Reg. No. 2,479,279 issued August 21, 2001).
Respondent, James III, registered the <putzmeisterusa.com> domain name on November 17, 2010. The disputed domain name resolves to a website which is in direct competition with Complainant’s business. When any of the links on Respondent’s page are clicked, Internet users are redirected to a website for “United Equipment Sales, Inc.”
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 its rights in the PUTZMEISTER mark through its registration with the USPTO (Reg. No. 2,479,279 issued August 21, 2001). The Panel finds this to be sufficient evidence pursuant to Policy ¶ 4(a)(i), based on past panels’ decisions allowing federal trademark registration to prove rights in a complainant’s mark. 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 Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant contends that Respondent’s <putzmeisterusa.com> domain name is confusingly similar to Complainant’s PUTZMEISTER mark. The disputed domain name contains Complainant’s entire PUTZMEISTER mark, adds the geographic term, “usa” and adds the generic top-level domain (“gTLD”) “.com.” Previous panels have shown that the addition of a geographic term and a gTLD to a complainant’s mark are insufficient to distinguish a disputed domain name from said mark. See Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel finds Respondent’s domain name to be confusingly similar to Complainant’s PUTZMEISTER mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
In order for the burden of proof to shift to Respondent, Complainant must first make a prima facie case in support of its allegations. Here, Complainant has failed to make a prima facie case in showing that Respondent does not have rights or legitimate interests in the <putzmeisterusa.com> domain name. Complainant simply states that Respondent has not demonstrated rights or legitimate interests by failing to provide any of the elements under Policy ¶ 4(a)(ii). However, Complainant fails to provide any evidence in support of Complainant’s assertions. Complainant does not explain how Respondent uses the disputed domain name and how that use is 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)(i). Complainant also does not provide any evidence or allege any arguments relating to whether Respondent is commonly known by the disputed domain name. Accordingly, the Panel finds in favor of Respondent pursuant to Policy ¶ 4(a)(ii). 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 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.”).
It is not enough for Complainant to simply assert that Respondent is using the disputed domain name in bad faith. But Complainant must also provide evidence of such. In this instance, Complainant has not provided screen shots or any other indication that Respondent is using the <putzmeisterusa.com> domain name in bad faith, but has merely made self-serving allegations. Therefore, the Panel finds in favor of Respondent under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Complainant has FAILED to establish all three elements required under the ICANN Policy. The Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <putzmeisterusa.com> domain name REMAIN WITH Respondent.
John J. Upchurch, Panelist
Dated: April 18, 2011
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