FLIR Systems, Inc. v. GNO, Inc. c/o Gregg Ostrick
Claim Number: FA1103001380358
Complainant is FLIR Systems, Inc. (“Complainant”), represented by Kelu L. Sullivan of Baker & Hostetler LLP, Washington, D.C., USA. Respondent is GNO, Inc. c/o Gregg Ostrick (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <inframation.com>, registered with Moniker Online Services, 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.
James A. Carmody, Houston Putnam Lowry, Chartered Arbitrator, and Mark McCormick, chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 25, 2011; the National Arbitration Forum received payment on March 28, 2011.
On April 5, 2011, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <inframation.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 April 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 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@inframation.com. Also on April 7, 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 28, 2011.
An Additional Submission by Complainant was received on May 3, 2011. An Additional Submission by Respondent was received on May 2, 2011.
Complainant’s Additional Submission was timely but violated supplemental Rule 7(a) because it was not accompanied by timely payment of the additional submission fee. Because payment was received and the delay was short, the Panel will consider Complainant’s Additional Submission. Respondent’s Additional Submission was filed in compliance with Supplemental Rule 7.
On May 4, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed James A. Carmody, Houston Putnam Lowry, Chartered Arbitrator, and Mark McCormick, chair, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends it is the world’s largest manufacturer of commercial infrared cameras, thermal imagers and thermal imaging camera systems. It started sponsoring an educational conference in 2000 for thermographers that it called an INFRAMATION conference. It filed an intent to use application with the United States Patent and Trademark Office (USPTO) on July 1, 1999 for registration of the INFRAMATION mark and contends it first used the mark in commerce in February 2000. Complainant’s registration was issued by the USPTO on March 26, 2002. Complainant contends the intent to use registration established its rights in the mark retrospectively to the filing date and alleges Respondent’s domain name <inframation.com> is identical to its mark, Respondent lacks rights and legitimate interests in the disputed domain name, and Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent contends it has rights and legitimate interests in the disputed domain name because it registered the <inframation.com> domain name on August 23, 1999, before it had any notice of Complainant’s alleged rights in the INFRAMATION mark. Respondent alleges it has used the domain name in connection with a variety of search systems by using the words “infra-red” and “information” to find word strings that will produce search results as a result of those strings. Respondent obtains “click-through” revenue from those searches. Respondent asserts it does not use the disputed name in competition with Complainant. It also contends Complainant cannot establish its bad faith because the chronology shows it had no notice of Complainant’s application for registration of the INFRAMATION mark when it registered its domain name approximately one month later. Respondent also asserts it had an independent interest, unrelated to Complainant, in doing so because of the generic nature of the word.
C. Additional Submissions
In its Additional Submission, Complainant alleges Respondent’s argument based on chronology fails because its intent to use application and subsequent registration with the USPTO gave Respondent constructive notice of its rights and the registration of the mark relates back and is effective as of the date of the intent to use application. Complainant also alleges Respondent’s evidence does not demonstrate it uses the disputed domain name for “search systems” and instead merely showed nothing other than parked pages that often belong to squatters. Moreover, Complainant contends Respondent’s bad faith registration and use is demonstrated by Respondent’s offer to sell the disputed domain name to Complainant for $95,000. Complainant also contends Respondent’s constructive notice of the Complainant’s ownership of the mark defeats Respondent’s claim of good faith adoption of the mark in its domain name registration.
In its Additional Submission, Respondent contends no basis exists for Complainant’s contention that its application for trademark registration gave Respondent constructive notice Complainant had rights in the INFRAMATION mark. Respondent also reiterates its contention Complainant has not shown Respondent lacks rights and legitimate interests in the disputed domain name and Respondent registered and is using the domain name in bad faith.
Complainant is in the business of manufacturing commercial infrared cameras and thermal systems. In planning to start offering an informational conference in the year 2000, Complainant played on the phonetic similarity between the words “inframation” and “information” in filing an intent to use application with the USPTO registration of the INFRAMATION mark for use in connection with its conference and distribution of educational materials. A trademark registration was subsequently issued upon proving Complainant’s actual use. In registering its domain name <inframation.com> approximately one month after Complainant’s intent to use application was filed, Respondent used the mark Complainant was seeking to register. Respondent was not known by the name and had no particular reason for its registration other than a hope of exploiting it in some general, unspecified sense. In fact, Respondent parked the name, linked it to sites that might be accessed by individuals using similar or related words in searches in order to derive click-through revenue, and at some point offered the domain name for sale for $95,000.
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 Complainant to 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’s USPTO registration of its INFRAMATION mark conclusively established Complainant’s rights in the mark, dating back to the filing of Complainant’s intent to use application on July 1, 1999. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005); Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002). Respondent’s domain name <inframation.com> incorporates Complainant’s mark and merely adds the generic top-level domain (“gTLD”) “.com.” Because the top-level domain does not alter or affect the mark, Respondent’s domain name is identical to Complainant’s mark within the meaning of Policy ¶4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429) (WIPO June 25, 2000).
Respondent is not commonly known by the INFRAMATION mark and has not been authorized by Complainant to use it. Moreover, Respondent has not made preparations to use or actually used the disputed domain name as part of a bona fide offering of goods or services. Complainant has thus established a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name <inframation.com>. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006). Respondent therefore has the burden to show that it has rights and legitimate interests in the domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent seeks to meet its burden mainly by arguing it registered the domain name before it had any notice of Complainant’s alleged rights in the mark and has used the disputed domain name for a bona fide offering of search services that lead individuals to sites relating to “infra-red” and “information” services and products. Because Complainant’s trade mark registration relates back to the date of Complainant’s intent to use application, Complainant’s exclusive rights in the mark run from that initial filing date. Respondent’s use of the disputed domain name for profit to link individuals to sponsored advertisements for products like those marketed by Complainant is not a bona fide offering of goods or services or fair use of the domain name. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007). Furthermore, Respondent’s offer to sell the domain name for $95,000, an amount far greater than his likely out-of-pocket costs in registering it, is further evidence of its lack of rights and legitimate interests. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007).
In accusing Respondent of bad faith, Complainant contends Respondent had actual or constructive notice of Complainant’s rights in the INFRAMATION mark at the time it registered it. The temporal relationship between Complainant’s application for registration of its INFRAMATION mark and Respondent’s almost immediate registration of the disputed domain name, when combined with other circumstantial evidence, establishes by a preponderance of evidence that Respondent had actual knowledge of Complainant’s intent to use trademark application. Respondent was not known or associated in any way with the mark. After registering the domain name, Respondent parked it and used it for more than ten years to generate pay-for-click revenue from links to sites advertising products including infrared and thermal products like those marketed by Complainant. Finally, Respondent’s offer to sell the domain name for $95,000 is evidence Respondent registered and used the domain name with an intention to trade on Complainant’s goodwill to earn pay-per-click revenue from related products, and with no intention to use the domain name for a bona fide offering of goods and services. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002).
Complainant has established Respondent’s bad faith registration and use of the domain name within the meaning of Policy ¶4(a)(iii).
All three elements required under the ICANN Policy having been established, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <inframation.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Houston
Putnam Lowry, Chartered Arbitrator,
and Mark McCormick, Panelists
Dated: May 18, 2011
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