Diversey, Inc. v. Trade Out Investments Ltd / Tech Support
Claim Number: FA1105001390471
Complainant is Diversey, Inc. (“Complainant”), represented by Lori S. Meddings of Michael Best & Friedrich LLP, Wisconsin, USA. Respondent is Trade Out Investments Ltd / Tech Support (“Respondent”), Venezuela.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jonsondiversey.com>, registered with POWER BRAND CENTER CORP.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 24, 2011; the National Arbitration Forum received payment on May 26, 2011.
On May 25, 2011, POWER BRAND CENTER CORP. confirmed by e-mail to the National Arbitration Forum that the <jonsondiversey.com> domain name is registered with POWER BRAND CENTER CORP. and that Respondent is the current registrant of the name. POWER BRAND CENTER CORP. has verified that Respondent is bound by the POWER BRAND CENTER CORP. 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 June 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@jonsondiversey.com. Also on June 2, 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 June 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <jonsondiversey.com> domain name is confusingly similar to Complainant’s DIVERSEY mark.
2. Respondent does not have any rights or legitimate interests in the <jonsondiversey.com> domain name.
3. Respondent registered and used the <jonsondiversey.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diversey, Inc., creates products used for cleaning, disinfecting, sanitizing, polishing, and finishing. Complainant holds trademark registrations through the United States Patent and Trademark Office (“USPTO”) for its DIVERSEY mark (e.g., Reg. No. 500,531 issued June 1, 1948). Complainant also has an exclusive license, granted by S.C. Johnson & Son, Inc., to use the mark JOHNSONDIVERSEY, also registered with the USPTO (Reg. No. 3,009,342 issued October 25, 2005).
Respondent, Trade Out Investments Ltd / Tech Support, registered the <jonsondiversey.com> domain name on October 21, 2006. The disputed domain name resolves to a website featuring a number of third-party links offering various goods and services, some of which are unrelated to Complainant and others of which are in direct competition with Complainant.
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 holds trademark registrations for its DIVERSEY mark through the USPTO (e.g., Reg. No. 500,531 issued June 1, 1948). Past panels have determined that this is sufficient to establish rights in the mark for the purposes of Policy ¶ 4(a)(i). 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 Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The Panel agrees and holds that Complainant has established rights in its DIVERSEY mark under Policy ¶ 4(a)(i).
The disputed domain name fully contains Complainant’s DIVERSEY mark, as well as a misspelling of the term “Johnson,” which is commonly associated with Complainant based on its licensing arrangement with S.C. Johnson & Son, Inc. Respondent’s coupling of Complainant’s mark with the related, albeit misspelled, term “Jonson” is insufficient to distinguish the disputed domain name from Complainant’s 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).”)). Finally, the addition of the generic top-level domain “.com” to the disputed domain name should be disregarded when considering whether the disputed domain name is confusingly similar to Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel concludes that Respondent’s <jonsondiversey.com> domain name is confusingly similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Initially, Complainant carries the burden of making a prima facie case that Respondent lacks rights or legitimate interests in the domain name for the purposes of Policy ¶ 4(c). Once this has been established, as is the case here, the burden shifts to the Respondent to refute Complainant’s claims. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Past panels have construed Respondent’s failure to respond as strong evidence of lacking rights or legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). For the sake of fairness, however, the Panel will still examine the record to determine whether such rights or legitimate interests do in fact exist pursuant to Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <jonsondiversey.com> domain name. The WHOIS information identifies the domain name registrant as “Trade Out Investments Ltd / Tech Support,” which bears no similarity to the disputed domain name. Moreover, there is no evidence in the record that would indicate that Respondent has any authorization from Complainant to use the disputed domain name. On the basis of this evidence, the Panel concludes that Respondent is not commonly known by the disputed <jonsondiversey.com> domain name for the purposes of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The disputed domain name resolves to a website featuring a number of third-party links offering various goods and services, some of which are unrelated to Complainant and others of which are in direct competition with Complainant. Absent any contrary evidence in the record, the Panel infers that Respondent receives click-through fees when visitors follow these links to third-party sites. The Panel concludes that Respondent’s use of a confusingly similar domain name for these purposes neither constitutes a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
By operating a domain name confusingly similar to Complainant’s mark which directs visitors to a parked website featuring various links, some of which compete with Complainant’s business, Respondent has effectively disrupted Complainant’s business for the purposes of Policy ¶ 4(b)(iii). Visitors that had originally intended to view and potentially purchase Complainant’s products may end up buying a competitor’s products after mistakenly visiting Respondent’s website. Thus, the Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use for the purposes of Policy ¶ 4(b)(iii). See 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).”).
As mentioned above, the Panel infers that Respondent receives click-through fees for the links featured on its website, thereby realizing a commercial gain as envisioned by Policy ¶ 4(b)(iv). Respondent is able to generate web traffic, and in turn realize a commercial gain, through the use of a domain name which is confusingly similar to Complainant’s mark. Respondent capitalizes on visitors’ mistaken belief that they are accessing information endorsed by Complainant. The Panel holds that this type of strategy constitutes registration and use of a domain name in bad faith pursuant to Policy ¶ 4(b)(vi). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jonsondiversey.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 30, 2011
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