Lutron Electronics Co., Inc. v. Welch Services Group Limited
Claim Number: FA1103001377398
Complainant is Lutron Electronics Co., Inc. (“Complainant”), represented by Christiane S. Campbell of Duane Morris LLP, Pennsylvania, USA. Respondent is Welch Services Group Limited (“Respondent”), represented by Duncan Welch of Joshi & Welch Limited, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lutroninstaller.com>, registered with Tucows, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Honorable Nelson A. Diaz, Alan L. Limbury, Dr. Reinhard Schanda, Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 11, 2011; the National Arbitration Forum received payment on March 11, 2011.
On March 14, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <lutroninstaller.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 March 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 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@lutroninstaller.com. Also on March 14, 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.
A timely Response was received and determined to be complete on April 4, 2011.
On April 8, 2011 Complainant submitted an Additional Submission that was in compliance with Supplemental Rule # 7.
On April 13, 2011 Respondent submitted an Additional Submission that was in compliance with Supplemental Rule # 7.
On April 19, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Nelson A. Diaz, Alan L. Limbury, Dr. Reinhard Schanda, Chair, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it is the owner of the famous LUTRON® trade and service mark for use in connection with a multitude of lighting and shading products, such as, dimmers, lighting control systems, ballasts, window treatment systems, switches and related accessories. Complainant is a leading manufacturer of lighting control worldwide, and has offices worldwide, in a number of countries. The LUTRON® mark is the subject of approximately forty-five (45) trademark registrations worldwide, and Complainant is the owner of at least seventy (70) “lutron” domain names.
In the U.S., Complainant’s registrations are valid and subsisting, and have reached incontestable status. The LUTRON® mark was first used by Complainant in commerce at least as early as 1962.
Complainant contends that its LUTRON® mark is registered and in use in such locations as Europe, South America, Canada, Australia, Indonesia, Africa, etc.
The Complainant’s rights in the LUTRON® mark in the UK have been recognized by Nominet UK Dispute Resolution Service Independent Expert in Lutron Electronics Co., In. v. Ben Hardyment, Nominet Case DRS No. 4038 (November 15, 2006).
As stated above, Complainant uses and has registered its LUTRON® mark for a variety of lighting control goods. Complainant’s LUTRON® mark appears on lighting controls and window shading systems in residences and commercial structures, such as stadiums, universities, office buildings, hotels, aquariums, casinos and courthouses, worldwide. Additional information about Complainant can be found in its website, www.lutron.com.
According to Complainant the domain name <lutroninstaller.com> is identical or confusingly similar to Complainant’s LUTRON® trademark. The domain name <lutroninstaller.com> incorporates Complainant’s LUTRON® mark in its entirety and merely adds the generic and/or descriptive word “installer”. The addition of the word “installer” is not sufficient to distinguish the subject domain name from Complainant’s LUTRON® trademark.
Rather than distinguishing Respondent’s domain name and website, the addition of the word “installer” instead creates a false impression that Respondent is associated or affiliated with Lutron. Indeed, the manner in which Respondent has attached “installer” to Lutron’s trademark in its domain name is, under trademark principles, likely to be understood as being a variation of the trademark LUTRON and, when used as a domain name, it is likely to be understood as providing a link to a website belonging to the Complainant or being sponsored by the Complainant or to a website of an authorized dealer of the Complainant.
As a result Respondent has no rights or legitimate interests in the <lutroninstaller.com> domain name. Respondent is not using the <lutroninstaller.com> domain name in connection with a bona fide offering of goods or services, Respondent is not commonly known by a name related to the domain name, and Respondent is not making a legitimate non-commercial or fair use of the domain name.
Further, Respondent has never been authorized to use the mark LUTRON® as part of its domain name. Respondent was at one time – but is no longer – a customer account of Complainant’s and nothing more.
Even where a Respondent demonstrates a right to resell a Complainant’s products, “the right to resell products does not create the right to use a mark more intensively than required to advertise or sell the product. Respondent is certainly using the LUTRON® mark more extensively than necessary. In addition to the registration of the <lutroninstaller.com> domain name, Respondent uses the LUTRON® mark, the Lutron design mark, and other Lutron trademarks, all over its website, so prominently and prevalently as to suggest to consumers that Respondent is the Complainant, or at the very least is associated or affiliated with Complainant. Statements and slogans on Respondent’s website such as “Relax, let Lutron do all the work” and “Let Lutron enhance your lifestyle”, only add to the false suggestion.
Complainant contends that Respondent’s activities and correspondence with Complainant suggest that it is presently an authorized reseller, but that is not the case. At one time, Respondent had a customer account with Complainant, through which it purchased LUTRON® goods and resold them. The account was terminated, however, when Respondent refused to comply with Lutron’s customer policies. Further, even an authorized reseller must meet certain requirements in order to show that it is making a bona fide offering of goods or services and has a legitimate right or interest in the domain name. The non-exhaustive list of requirements includes a requirement that the registrant reseller’s site accurately disclose the registrant’s relationship with the trademark owner. It may not falsely suggest that is an authorized agent.
Further, Respondent does not meet these requirements. Respondent at one time was a Lutron account. However, its customer account has been terminated for violation of customer policies. Secondly, the <lutroninstaller.com> site does not accurately disclose the Respondent’s “relationship” with the Complainant. Indeed, it falsely and misleadingly suggests that Respondent is Lutron, or that there is at least a legitimate “relationship” where there is in fact no connection, affiliation of sponsorship between the parties at all.
The homepage of the <lutroninstaller.com> site makes statements such as “Lutron gives you ...” and “Lutron brings you...” and “Bring your home into the future with Lutron”. Any reasonable consumer finding the <lutroninstaller.com> site would surely think they had arrived at a legitimate Lutron website, as only Lutron itself could logically make such statements. The only reference to Respondent “Welch” is in the site’s masthead, where the words “Welch Lutron Installation” is displayed next to – and equally prominently with – the LUTRON® trademark and Lutron Logo. This addition of the term “Welch” was only very recently added to the site. No doubt Respondent is aware of the likely deception, as it posts the following notice, in nearly invisible 7-point Arial font, hidden at the bottom right corner of the homepage:
“LUTRON and the LUTRON logo as used on this website in relation to electrical apparatus are trade marks of Lutron Electronics Co., Inc. The official Lutron Electronics, Co., Inc. can be accessed at http://www.lutron.com”.
This notice does not function as a disclaimer in the literal sense, as it does not disclaim sponsorship, affiliation or association between the site and Lutron. It also does not make clear the “relationship” between Lutron and Respondent. A reasonable consumer, even if able to see this notice, could read this notice and still think he or she is looking at a legitimate Lutron-sponsored LUTRON® product installation site. Further, the notice is too little too late, as consumers would have already been misled to the site before seeing it.
Further, after being notified that Respondent was in violation of Lutron’s customer policy, and indeed was infringing Lutron’s rights, Respondent changed its <lutroninstaller.com> homepage. The page now displays the LUTRON® word and Lutron logo marks in the masthead in equal size and prominence as the “Welch” name. The name “Welch” in the masthead is accompanied by the words “Lutron Installation”.
According to Complainant it is significant that even where authorization to resell a Complainant’s products exists, this is distinctly different form the authorization by Complainant to register and use a domain name incorporating the Complainant’s trademark. Even a license agreement or close working relationship between Respondent and Complainant is not sufficient to confer on Respondent rights or legitimate interests in the domain name.
Complainant does not dispute that resellers may register domain names and establish websites for their retail services; however, such resellers must do this “under their own names or other names”, so long as these names “do not infringe the trademark rights of third persons”. Respondent’s use of Lutron’s trademark in a domain name is “classic trademark infringement, even if the ultimate result of the same is that some of the revenue flows to the owner of the marks”.
Respondent is not currently authorized to sell LUTRON® products, or use the LUTRON® trademark in any capacity. Respondent makes inaccurate and misleading statements and presentations on its site, falsely suggesting there is a relationship with Complainant. Thus, Respondent has no right or legitimate interests in the domain name.
Complainant further contends that Respondent is clearly not commonly known as any name related to the <lutroninstaller.com> domain name, nor could it be, as only Complainant has exclusive rights to the Lutron trade name and LUTRON® trademark for the goods in question, worldwide. The Whois records show that the domain name is registered to “Welch Services Group Limited”, the named Respondent in this Complaint. The “Administrative Contact” and “Technical Contact” for the domain name is James Welch. The information detailed on the “home” pages refers only to Complainant, Lutron. Finally, the copyright notice on the <lutroninstaller.com> site says “© 2011 Welch Services Group”.
To the extent that the public knows Respondent as “Lutron” or “Lutron Installer” it is because they mistakenly believe that they are actually dealing with the Complainant when they enter the <lutroninstaller.com> site.
Respondent is, and is known as “Welch Services Group Limited”. It is not commonly known by any name reflected in the <lutroninstaller.com> domain name registration.
Further, Respondent has registered and is using the <lutroninstaller.com> domain name commercially and solely for financial gain. It continues to sell – without Complainant’s authorization – Complainant’s LUTRON® goods, for profit. There can be no question that the site is commercial, since it offers “Lutron Shop” pages and encourages visitors to “Shop”, and “Add [items] to basket”. Consumers can purchase and order a wide variety of products from the site.
Respondent is profiting from the commercial use of Complainant’s trademark and the continued unauthorized sale of Complainants’ goods from a site that improperly uses Complainant’s trademark. This is not within the purview of “legitimate non-commercial or fair use”.
Finally, Complainant contends that Respondent registered the domain name with constructive and actual knowledge of Complainant’s trademark rights in the LUTRON® mark by virtue of the Complainant’s trademark registrations.
The Whois records for this domain name show that it was registered to Respondent on May 15, 2006, long after Lutron had filed numerous applications, and obtained numerous registrations, for the LUTRON® mark. Respondent’s registration of the domain name <lutroninstaller.com> therefore could not have been in good faith.
Further, Respondent, as a previous customer account of Complainant’s, has maintained the <lutroninstaller.com> domain name in stark violation of Complainant’s customer policies. Among other restrictions, it is Complainant’s policy not to allow customers to use LUTRON brand names in their URLs. On October 15, 2010, Complainant contacted Respondent by e-mail to remind Respondent of this policy, and to ask that Respondent amend its domain name (so that it would not include the LUTRON® trade mark). Complainant said in its e-mail that it was “eager to work collaboratively” with Respondent to ensure a smooth correction, and asked to discuss the corrections with Respondent on the phone. Respondent did not respond substantively, but informed Complainant that “the matter has been passed to [Respondent’s counsel].”
Respondent’s counsel sent a letter to Complainant on October 26, 2010, refusing to change or relinquish the <lutroninstaller.com> website and domain name, asserting that the registration of the domain name was legitimate where Respondent’s “installation services” are not specifically covered by Lutron’s “restrictive” trademark registrations, and where Respondent is “a customer…who has built up a business that also refers work back to Lutron”. Even if true, Respondent’s infringing use of Lutron’s trademark is not justified simply because “some revenue flows to the owner of the marks”.
Complainant, on January 20, 2011, made another attempt to resolve the matter amicably, and formally requested that Respondent transfer the <lutroninstaller.com> domain name to Complainant on or before February 4, 2011, and that Respondent remove or amend its infringing marketing and advertising pages. Respondent’s counsel replied in a letter dated January 24, 2011. This reply letter refused to comply with Complainant’s requests, saying that Respondent would not transfer the domain name, and “[Respondent] sees no need to amend any of the content or layout of their web site to satisfy any request of [Lutron].” This was the last communication between Respondent and Complainant, and to date, Respondent remains the registrant of record for the <lutroninstaller.com> domain name, and the content of the website is unchanged.
The <lutroninstaller.com> domain name is designed to imply that there is an affiliation between Complainant and Respondent or that Lutron endorses Respondent’s activities even though no such affiliation or endorsement exists. “ICANN panels have addressed such situations in several instances and have consistently held that it is bad faith to misrepresent an affiliation with a third party where none exists”.
The circumstances of Paragraph 4(b)(iv) of the Policy are pertinent in the instant case: by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location of a product or services on Respondent’s website or location.
Visitors looking for Complainant on the Internet are likely to find the <lutroninstaller.com> site and believe it is Complainant’s site or a site sponsored by Complainant. The <lutroninstaller.com> site has been set up to look like Complainant’s <www.lutron.com> website, with images of Complainant’s products and Complainant’s LUTRON® (and stylized and design variants of the mark) trademark, and other proprietary trademarks, unlawfully displayed all over the pages.
Respondent has gone to extremes to make its site look like a legitimate Complainant site to visitors. In addition to using Complainant’s LUTRON® and other trademarks unlawfully all over the site, Respondent has used the identical photographic images taken from Complainant and posted them on the <lutroninstaller.com> site. An Internet consumer looking for Complainant online could easily find himself on Respondent’s site, and would have no reason to believe it is not Complainant’s site. Aside from the obvious copyright infringement by Respondent, Respondent is clearly and deliberately attempting to confuse consumers.
As a result Respondent has registered and used, in bad faith, a domain name that incorporates Complainant’s LUTRON name and trademark in its entirety, and is using the domain name with no rights or legitimate interests in the registration. Respondent’s actions violate the Policy, and pursuant to the Policy, Complainant requests that the <lutroninstaller.com> domain name registration be ordered transferred to it.
B. Respondent
Respondent denies that Complainant’s mark LUTRON is famous. There is no proof for this contention. Complainant operates in a niche area relating to electrical switches, devices and apparatus so if they could show any notoriety will only be for such goods. Complainant is not the only proprietor of the trademark LUTRON. BASF of Germany is also the owner of the trademark LUTRON in relation to certain goods.
Respondent does not deny the existence of the trademark rights identified by Complainant, but it makes no admission as to their validity. Those registrations cover only International Classes 9 & 11, China refers to class 15, but Respondent feels that this was a national class. At no point does Complainant have registered rights in International Class 37 which would cover ‘installation services’.
Respondent contends that there are marked differences between the Nominet decision of 2006 and the disputed domain name.
In terms of trademark law it would be wrong to ‘dissect’ a mark into its constituent parts. The word Lutron is clearly the first five letters of the domain name, but it would be wrong to make an assumption that this is Lutron installer as opposed to the Lutronin.staller; for example. To automatically conclude that this is the word Lutron with ‘merely generic and/or descriptive word installer added onto the end’, could lead to a misconception. Complainant suggests that the addition of the word ‘installer’ is not sufficient to distinguish the subject domain name from Complainant’s Lutron trademark, referring to the WIPO decision in this case <www.buy-valium-resources.info>. In this instance the trademark VALIUM is clearly identified as a separate element. The separation with a hyphen is not apparent in this instance and so it would be wrong to draw a parallel with that domain name.
Since Panels have held that the fact that a domain name wholly incorporates a Complainant's registered mark is sufficient to establish identity or confusing similarity, for example in various parts type disputes--eautoparts.com, carparts.com, and komatsu-parts.com--Respondent accepts that the disputed domain name is similar to the trademark Lutron.
Respondent disagrees with the assertion that that the inclusion of the word ‘installer’ creates a ‘false impression’. Complainant makes no attempt to define such a statement simply saying see japan-ge.com. The name simply and effectively does what it says on the tin: an installer of Lutron and as we will see later that is the business of Respondent; it is used by Respondent and by others in a descriptive fashion. Complainant states that Respondent is using a domain name which is identical to the claimant's ‘famous’ Lutron trademark. Whilst Respondent is willing to concede the domain name is similar, it is not famous nor is it identical and Respondent denies that its use creates a false impression.
The domain was registered as an apt description of Respondent’s business; installing Lutron products. The disputed domain name is therefore nothing more than a clear description of a business ‘we install Lutron electrical apparatus’ that use does not indicate or imply that its site is owned or controlled by Complainant. Respondent is able to tell consumers that it installs those products. As we will show Complainant has for several years provided access to sales, marketing and supporting technical material containing the Lutron mark for use on Respondent's web site, since by Complainant’s own admission Respondent ‘was’ an account holder. Moreover the registration of this domain name has not hindered Complainant’s business because, by its own admission, it has ‘at least 70 Lutron domain names’.
Complainant refers to <japan-ge.com.> and <phillipsdealer.com> and <phillipsdealer.net>, since in each instance the domains were transferred, the inference being that this disputed domain should be treated in the same fashion. Complainant refers to these to imply that the word ‘dealer’ or ‘japan’ can be substituted for the word ‘installer’. We can draw a distinction between the matters. In Phillips, the Registrant purchased the domain names with the purpose of selling them. In <japan-ge.com> Respondent was using the domain name in connection with sale of GE turbines, as well as in connection with the sale of equipment manufactured by GE’s competitors. ‘A reseller of trademarked goods that is unaffiliated with or unauthorized by a trademark holder may well have certain fair use rights regarding the mark, depending upon the specific context of the use’. The Panel stressed that independent resellers under appropriate circumstances have rights to make use of trademarks to properly identify resale goods.
Complainant claims that because of ‘the manner’ in which Respondent has attached the word installer, under trademark principles it would be understood to be a variation. The manner was to identify that they installed Lutron products. Complainant goes on to suggest that because of this manner it is likely to be understood as providing a link or being sponsored. There is no evidence to this effect. Customers on the internet are far more savvy than Complainant would suggest. In 2011 Internet users don’t believe that all domain names containing a brand must be owned by the registered proprietor. Complaint claims that the web site is likely to be understood as being of an ‘authorized dealer’ of Complainant, a fact that they are pains to highlight Respondent is not; they say:- ‘Respondent has never been authorized to use the Lutron mark’. We disagree. It is therefore denied that Respondent is creating a false impression. In fact the opposite is true: the domain name creates the correct impression, because Respondent has continued to offer and supplies for installation genuine Lutron products.
In the UK and common law countries like the US, rights can accrue to a party on the basis of use. As we will show, ‘use’ of the disputed domain name is extensive and as such affords the Registrant a legitimate interest. It cannot be denied that a finding in favour of Complainant will have a serious and adverse effect on Respondent’s business. Since the UDRP is an equitable relief and was intended to remove cybersquatters and this is not such a case, we say it would be difficult to conclude that Respondent has no legitimate interest in this domain name. The Rules state that Complainant has to show that Respondent: has no rights or legitimate interest.
Since there has been use since November 2007 on a web site creating traffic to the benefit of both parties, we say that there cannot be a finding that there are no rights, since in common law countries rights can accrue from use. Furthermore or in the alternative Complainant argues, with which we disagree, that there is no legitimate interest, but again we say that the use over a period of time has developed an interest. We say that this is legitimate based on the actions of Respondent.
As said in The Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001), ‘It is important to keep in mind that the Policy [UDRP] was designed to prevent the extortionate behavior commonly known as cybersquatting. It cannot be used to litigate all disputes involving domain names. If trademark owners wish to prevent the use of their marks by authorized sales and repair agents in domain names, they should negotiate such protections through appropriate contractual language or, when permitted under the relevant law, seek recovery in classic trademark infringement or dilution litigations. In the absence, however, of some element of illegitimacy, they should not use the Policy to prevent uses that ICANN deemed to be legitimate, including the use of domain names in connection with the bona fide offering of goods and services’.
Since the inception of the website under the disputed domain name the Respondent has offered a legitimate business fitting and installing genuine Lutron products within the UK and elsewhere. The goods which are fitted and supplied by Respondent are obtained via the commercial channels of Complainant.
Respondent has been for a number of years a customer and partner of Lutron in the UK, obtaining genuine goods, communicating over job quotes in the commercial sector, referring work back to Lutron; communicating almost on a weekly basis. They hold and continue to hold a customer account with Lutron: Complaint says ‘that he was [an account holder] at one time, but is no longer’ and nothing more. At the date of the Complaint the customer account for Respondent was not we believe terminated, as suggested, but was on hold. It was on hold as of November 2010.
More recently Respondent has been in communication with Complainant with regard to accounts and was told, being an email exchange over potential new orders; ‘we can not release any new orders until the overdue bills are paid’. This does not suggest that the account is terminated. This also shows the email signature/signoff of Respondent from which the disputed domain name can be clearly seen and would have been seen by the Complainant on every email over the last few years.
Since the initial contact by Complainant’s representative Stockwell, Complainant has done nothing more that attempt, in Respondent’s view, to ‘bully’ Respondent into transferring the domain name. Since Respondent did not accept Complainant’s position, Complainant suspended Respondent’s account so it is technically right to say that Respondent was at one time [read here the last 4 and half years], but is no longer [read here since the late autumn/winter of 2010] an account holder. Complainant is being economical with the facts. To support Complainant's contention that the domain name is not used in connection with a bona fide offering of goods or services, Complainant makes a statement that ‘the right to resell products does not create the right to use a domain more extensively than required to advertise or sell the product’ and refers to the WIPO cases of Nikon and Motorola. What is meant by more extensively than necessary? The disputed domain name is successful. Respondent has put in considerable effort over many years, working days and nights building up and creating an effective, well sourced, well run, operational
website from which a person can then place their business. More extensively than is necessary is a matter for the Panel, but it clearly identifies the fact that Respondent is able to fit or install Lutron products.
Complainant refers to the use of these marks on Respondent’s website ‘so prominently and prevalently as to suggest to consumers that Respondent is Lutron’. This is completely without foundation. Respondent has for several years been provided with direct access to the very logos and designs to which Complainant refers. Respondent is provided with access to four non-public web sites run by Lutron. These are referred to as Lutron approved dealers only sites which are not available to the general public as they require passwords.
On web site number 3 the Username is the disputed domain name. On 16 March 2011, after the Complaint was filed, Mr. Michael Lightowler, a duly appointed Notary Public in the UK, was able to confirm that he was able to login into these websites. Thus Respondent was given direct access to the very logos and designs of Complainant to ensure that the logos and designs used on its website were the correct resolution and images to ensure consistency. Complainant cannot say that the logos and designs are used more extensively than necessary when it was Complainant who provided Respondent with access to these items.
Complainant states that the activities and correspondence of Respondent ‘suggest’ that it is presently an authorized reseller, but that is not the case. At one time Respondent had a customer account. As we have shown Respondent still has an account and is able to access and has been given access to non-public material of Complainant. Respondent has attended and successfully passed training courses, which Respondent would pay for, offered by Complainant which gives it access and which in a fashion equating to authorization.
Respondent’s web site does not falsely and misleadingly suggest that Respondent is Lutron. As for legitimate relationship, one has existed and perhaps still does exist. Just because Complainant might have withdrawn its support very recently does not remove the historical events and the reliance Respondent has placed upon those events in the development of its business.
Respondent contends the disclaimer sufficiently identifies that the Lutron trademarks are owned by Complainant and that its official website can be accessed with a link. In this regard we refer to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Original Edition which states, under 3.5 that the consensus view is as follows: ‘The existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. Respondent agrees with the consensus view, a disclaimer is not sufficient [in itself] to avoid a finding of bad faith, but if there is no bad faith then the disclaimer on the website ensures that no internet user could possibly be confused that the site is a genuine site; it just serves to merely reinforce that view.
There is no suggestion of multiple domain names being recorded by Respondent and so we say that the Gorstew case is not relevant to these proceedings. Respondent has not precluded Complainant from using its mark in a corresponding domain name [it has over 70 by its own admission] and there is no allegation of a pattern of such behaviour, which is required by the Policy.
Complainant makes the assertion that Respondent is not commonly known by the disputed domain name. This is untrue. It is known by the disputed domain name as its website is active and that is how people will refer to it. Under English law and British law legal systems a company name does not have to be related to the domain name. Respondent is known by its company name and by its active website and that is how some of its business is obtained. Complainant makes an incorrect assertion that the public only knows the disputed domain name to the extent that they are dealing with Complainant. A customer entering that website is looking for someone to fit i.e. install genuine Lutron products and that is what they are able to obtain through that website. As such we say that there is legitimate use over a period time and the domain name is a descriptor of the services offered. It is also clear that Welch Group Services Limited is the company name and the disputed domain name is a trading/as style.
It is a contention of Complainant that Respondent has registered this and is using the domain name commercially and solely for financial gain; yes Respondent does have a business installing Complainant's goods, we cannot deny this which is why we say that the Complainant fails to show that Respondent has no rights or legitimate interest since that use will create a right even if that is small.
Respondent disagrees with Complainant’s assertion that the domain name was registered in bad faith and/or that is used in bad faith.
It is well established that a complainant must establish that there was ‘bad faith’ at the time the disputed domain name was registered. There is no real ‘evidence’ of any description in the Complaint!
Complainant states that the use of the domain name has intentionally attempted to attract for commercial gain internet users by creating a likelihood of confusion with Complainant’s mark. It bases this assertion on the fact that visitors are likely to find the disputed domain name and in a circular argument believe that is Complainant's site. The products Respondent obtains are from Complainant, the images and marks are lawfully displayed and supplied by Complainant.
Complainant has not proven that Respondent is ‘creating a likelihood of confusion with Complainant’s trademark LUTRON’. In fact it is the exact opposite of what Respondent is doing. Respondent makes no attempt to suggest that ‘Lutron’ products are its own, Respondent is only the installer of them c.f. the word ‘installer’ in the domain name. Furthermore there is a disclaimer on the site.
Respondent was and is an account holder with access to password protected non-public web sites which a Notary has been able to access after the Complaint was filed. Those sites provide access to images, logos and insignia for use on marketing and publicity material. It also had access to technical data and support. We have also shown that this dispute has arisen because in Complainant’s view Respondent had violated a customer policy; a policy that was requested, but has not been provided as it doesn’t/didn’t exist; Respondent is certainly not a signatory to a policy. We have also shown that none of the cited authorities cover a similar set of circumstances. As is correct the individual facts of this specific matter have to be considered in determination of the UDRP. We further say that Complainant has not proven its case. Whilst we accept the similarity of the mark, Complainant has not discharged the onus to show that Respondent has no rights or legitimate interest and moreover that the domain name had been registered and used in bad faith. Furthermore or in the alternative even if Complainant succeeds in the assertion that the disputed domain name was registered in bad faith there is absolutely no evidence that it is also being used in bad faith. Indeed all the evidence goes towards showing use in fact is in good faith. Moreover Complainant has not shown any evidence of bad faith or wrong doing in any of the material included in or attached to the Complaint.
C. Additional Submissions
In their Additional Submissions Complainant and Respondent basically reiterate their arguments laid down in the Complaint and Response. The Panel is of the view that the present arguments are sufficient to decide the dispute. As a result there is no need to go into more details and to reflect the Complainant’s and Respondent’s contentions in their Additional Submissions.
The Panel finds that:
1. the Domain Name <lutroninstaller.com> is confusingly similar to Complainant’s marks,
2. the Respondent has a legitimate interest in the Domain Name <lutroninstaller.com> and
3. the Respondent has not registered the Domain Name <lutroninstaller.com> 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."
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 alleges that it has rights in the LUTRON mark by virtue of its trademark registrations with the United Kingdom Intellectual Property Office (“UKIPO”), the United States Patent and Trademark Office (“USPTO”), the Canadian Intellectual Property Office (“CIPO”), and the European Union Office of Harmonization for the Internal Market (“OHIM”):
UKIPO
Reg. No. 970,715 issued September 10, 1970;
USPTO
Reg. No. 948,849 issued December 19, 1972;
CIPO
Reg. No. 184,151 issued September 21, 1973; and
OHIM
Reg. No. 1,894,716 issued March 11, 2002.
The Panel finds that these trademark registrations sufficiently demonstrate Complainant’s rights in the LUTRON mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Respondent’s <lutroninstaller.com> domain name is confusingly similar to Complainant’s LUTRON mark because the disputed domain name consists solely of the LUTRON mark, combined with the generic term “installer” and the generic top-level domain (“gTLD”) “.com.”, neither of which detracts from the confusing similarity.
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) it has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) it is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) it intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel finds that Respondent has a legitimate interest in the <lutroninstaller.com> domain name because it has been using the disputed domain name since 2007 to maintain a website offering a legitimate business fitting and installing Complainant’s genuine products obtained through the commercial channels of Complainant.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel is satisfied that Respondent was a customer of Complainant at the time of the registration of the domain name and that the registration was for the purpose of promoting Respondent’s business of installing Complainant’s products. Accordingly, the Panel finds that Complainant has failed to establish bad faith registration. In light of this finding, it is unnecessary for the Panel to determine whether Respondent is using the domain name in bad faith.
Complainant having failed to established all three elements required under the ICANN Policy, the Panel concludes unanimously that relief shall be DENIED.
Accordingly, it is Ordered that the <lutroninstaller.com> domain name REMAIN WITH Respondent.
Honorable Nelson A. Diaz, Alan L. Limbury, Dr. Reinhard Schanda, Chair, Panelists
Dated: May 2, 2011
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