national arbitration forum

 

DECISION

 

Petersen Resources, LLC v. INVESTMENTS AMALGAMATED

Claim Number: FA1105001389371

 

PARTIES

Complainant is Petersen Resources, LLC (“Complainant”), represented by Katrina G. Hull of Michael Best & Friedrich LLP, Wisconsin, USA.  Respondent is INVESTMENTS AMALGAMATED (“Respondent”), represented by Rand Zuckerman of INVESTMENTS AMALGAMATED, Michigan, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <petersenproducts.co> and <petersensupply.co>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

Mark McCormick as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 18, 2011; the National Arbitration Forum received payment on May 19, 2011.

 

On May 21, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <petersenproducts.co> and <petersensupply.co> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  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 May 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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@petersenproducts.co, postmaster@petersensupply.co.  Also on May 24, 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 June 13, 2011.

 

Complainant filed an Additional Submission on June 17, 2011, which was timely.

 

On June 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant alleges that is has used PETERSEN PRODUCTS COMPANY as a name for its pipeline and wastewater treatment business since 1916.  In addition, Complainant has a trademark registration for the PETERSEN mark dated August 24, 2004.  Complainant contends that Respondent used the disputed domain names <petersenproducts.co> and <petersensupply.co> to attract Internet users in order to redirect them to the “Septic Professor” website at www.shop.septicbegone.com.  Complainant alleges that the website is used to market products that compete with those of Complainant.  Complainant contends that the disputed domain names are confusingly similar to its PETERSEN and PETERSEN PRODUCTS COMPANY marks.  Moreover, Complainant assets that Respondent has no rights or legitimate interests in the domain names and registered marks and is using them in bad faith.

 

B. Respondent

Respondent’s main contentions are that Complainant has not provided sufficient evidence to prove its allegations.  Respondent also contends that it does not sell pipeline products and that Complainant’s marks do not protect marks in wastewater products.  Moreover, Respondent alleges that the www.shop.septicbegone.com website does not list any product covered by Complainant’s PETERSEN trademark registration.  Respondent states that it chose the PETERSEN name because it “is widely used in web commerce.”  Respondent alleges that its arrangement with the “Septic Professor” is for test marketing prior to Respondent’s own website launch.  Respondent accuses Complainant of reverse domain name highjacking.

C. Additional Submissions

Complainant timely filed an additional submission in which it contends that it has common law trademark rights in the PETERSEN PRODUCTS COMPANY mark, which protects the mark in wastewater and sewage product applications, including septic systems.  Complainant contends that Respondent would have no rights or legitimate interests in the marks even if it wasn’t using the disputed domain names to direct Internet users to competitive products.  Complainant also contends that Respondent has admitted trying to sell the domain names through Go-Daddy Auctions.  Complainant accuses Respondent of attempting to conceal its true identity and relationship with “Septic Man.”

 

FINDINGS

Complainant has trademark rights in the PETERSEN name through its 2004 trademark registration and has common law rights in the PETERSEN name and PETERSEN PRODUCTS COMPANY name through use of those marks since approximately 1916.  Complainant has used the marks in the marketing of pipeline and wastewater products.  Respondent is not known by the PETERSEN mark in any combination of words.  Respondent uses the disputed domain names to attract Internet users to the website of a competitor of Complainant relating to wastewater products.  Respondent registers and uses the domain names in an effort to generate revenue from Internet users who search for Complainant’s products.  Moreover, Respondent seeks to sell the domain names to Complainant or someone else in order to earn a profit on the registrations.

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Complainant’s trademark registration of the PETERSEN mark was sufficient to establish its rights in the mark.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006).  Here, in addition, the record demonstrates that Complainant has common law rights both in the PETERSEN mark and in the PETERSEN PRODUCTS COMPANY name.  See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006).  Respondent’s domain names, <petersenproducts.co> and <petersensupply.co> incorporate Complainant’s PETERSEN mark.  The addition of generic words and the top-level domain does not adequately differentiate the disputed domain names from Complainant’s mark.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001).  Alternatively, the domain names cannot be meaningfully distinguished from Complainant’s PETERSEN PRODUCTS COMPANY mark.  See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000).  The disputed domain names are confusingfly similar to Complainant’s marks within the meaning of Policy ¶4(a)(i).

 

Rights or Legitimate Interests

Because Complainant has made a prima facie case that Respondent lacks rights and interests in the disputed domain names, the burden is on Respondent to demonstrate its rights and legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).  Respondent admits that it is not commonly known by the disputed names, and the record establishes without doubt that Complainant has never authorized Respondent to use them.  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006).  Complainant has proven that Respondent uses the disputed domain names to redirect Internet users to a third-party website that seeks to market products that compete with Complainant’s wastewater products.  This does not constitute a bona fide offering of goods and services.  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003).  Complainant has shown that Respondent has no rights or legitimate interests in the disputed domain names within the meaning of Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

Respondent registered and uses the disputed domain names in an effort to divert Internet users to a competing business with which Respondent has a connection.  This conduct is evidence of Respondent’s bad faith.  See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006).  The record also shows that Respondent had actual or constructive notice of Complainant’s trademark rights when it registered the disputed domain names.  No other reasonable explanation exists for Respondent’s prompting of an e-mail to Complainant suggesting the availability of the domain names for sale.  Complainant has demonstrated Respondent’s bad faith under Policy ¶4(a)(iii).  No evidence exists to support Respondent’s assertion of domain name highjacking.

 

DECISION

Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <petersenproducts.co> and <petersensupply.co> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Mark McCormick, Panelist

Dated:  June 29, 2011

 


 

 

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