IPS Corporation v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1105001390865
Complainant is IPS Corporation (“Complainant”), represented by David Grace of Loeb & Loeb LLP, California, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent & The Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <weldon.com>, registered with ANSWERABLE.COM (I) PVT. LTD.
The undersigned certifies that he 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 26, 2011; the National Arbitration Forum received payment on May 27, 2011.
On June 4, 2011, ANSWERABLE.COM (I) PVT. LTD. confirmed by e-mail to the National Arbitration Forum that the <weldon.com> domain name is registered with ANSWERABLE.COM (I) PVT. LTD. and that Respondent is the current registrant of the name. ANSWERABLE.COM (I) PVT. LTD. has verified that Respondent is bound by the ANSWERABLE.COM (I) PVT. LTD. 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 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@weldon.com. Also on June 6, 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 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
On July 2, 2011, the Registrar sent correspondence to the Forum stating that the Disputed Domain Name was deleted on June 22, 2011 while also supplying the Forum with the new registrant of the domain name. On July 5, 2011 the Forum notified the new registrant of the case commencement in this matter.
On July 7, 2011, the Panel issued a decision and upon learning of the new registrant, filed an Order to Vacate the Decision. Further, the Panel requested additional information from Complainant regarding this issue.
On July 18, 2011, the Forum received correspondence from the new registrant that requested dismissal of the current action and asserting that it was an innocent purchaser of the domain name.
On August 2, 2011, the Panel filed an Order Extending Time for Decision until it received information from ICANN about the issue of domain name transfer during a UDRP proceeding.
On September 6, 2011, the Registrar sent correspondence to the Forum stating that it had moved the Disputed Domain Name to Complainant’s counsel, and that a computer program flaw had allowed the domain name to be auctioned and transferred inadvertently during the UDRP proceeding.
On September 12, 2011, the new Registrant requested to intervene in the matter, and filed a Response to points raised by Complainant. On September 13, 2011, Complainant filed an objection to such intervention with the Forum.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Motion to Intervene
On September 22, 2011, the Panel entered an Order Denying Motion to Intervene.
A. Complainant makes the following assertions:
1. Respondent’s <weldon.com> domain name is confusingly similar to Complainant’s WELD-ON mark.
2. Respondent does not have any rights or legitimate interests in the <weldon.com> domain name.
3. Respondent registered and used the <weldon.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, IPS Corporation, produces technology and inventions relating to the plastic piping industry, including cement and bonding materials for use with all types of plastic pipes. Complainant owns numerous trademark registrations worldwide for its WELD-ON marks including the following:
1. European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 4,405,511 issued June 7, 2006);
2. United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,836,886 issued August 24, 2010);
3. USPTO (e.g., Reg. No. 1,719,732 issued September 29, 1992) (design mark); and
4. Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA284610 issued November 4, 1983).
Respondent, Private Registrations Aktien Gesellschaft / Domain Admin, registered the <weldon.com> domain name on May 13, 2002. Respondent’s disputed domain name resolves to a website that features third-party links and a search engine.
Complainant presents evidence to show that Respondent has been the named respondent in many previous UDRP proceedings in which it was ordered to transfer the respective domain name to the respective complainants. See DatingDirect.com Ltd. v. Private Registrations Aktien Gesellschaft, FA 1227747 (Nat. Arb. Forum Nov. 24, 2008); see also AOL Inc. v. Private Registrations Aktien Gesellschaft, FA 1308653 Apr. 9, 2010); see also Ass’n Fin. Prof’l, Inc. v. Private Registrations Aktien Gesellschaft, FA 1382556 (Nat. Arb. Forum May 13, 2011).
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 has presented several copies of its trademark registrations for its WELD-ON mark with governmental trademark authorities, such as with the OHIM (Reg. No. 4,405,511 issued June 7, 2006); USPTO (e.g., Reg. No. 3,836,886 issued August 24, 2010); USPTO (e.g., Reg. No. 1,719,732 issued September 29, 1992); and CIPO (Reg. No. TMA284610 issued November 4, 1983). The Panel finds that such evidence establishes Complainant’s rights in its mark under Policy ¶ 4(a)(i). See 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); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant argues that Respondent’s <weldon.com> domain name is confusingly similar to Complainant’s WELD-ON mark. Complainant notes that the domain name contains its mark entirely while eliminating the hyphen and adding the generic top-level domain (“gTLD”) “.com.” The Panel agrees with Complainant and finds that the domain name at issue is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also 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 finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has contended that Respondent does not have any rights or legitimate interests in the <weldon.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that it has not granted Respondent permission to use its WELD-ON mark, and that Respondent is not commonly known as the <weldon.com> domain name. The WHOIS information for the disputed domain name lists the registrant as “Private Registrations Aktien Gesellschaft / Domain Admin,” which does not indicate that Respondent is commonly known as the disputed domain name. Respondent has not produced any evidence to show that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Complainant asserts that Respondent is using the disputed domain name to resolve to a website that features third-party links to various websites as well as a search engine. Complainant argues that some of the links on Respondent’s website resolve to potential competitors of Complainant. Further, Complainant alleges that such use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The Panel agrees and finds that Respondent’s use of the disputed domain name as a third-party links directory website 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)(iii). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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 Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent has engaged in a pattern of bad faith registrations of domain names containing the trademarks of others as evidenced from past UDRP decisions ordering Respondent to transfer the domain name to the respective complainants. See DatingDirect.com Ltd. v. Private Registrations Aktien Gesellschaft, FA 1227747 (Nat. Arb. Forum November 24, 2008); see also AOL Inc. v. Private Registrations Aktien Gesellschaft, FA 1308653 April 9, 2010); see also Ass'n Fin. Prof’l, Inc. v. Private Registrations Aktien Gesellschaft, FA 1382556 (Nat. Arb. Forum May 13, 2011). The Panel agrees with Complainant and finds that Respondent’s past registrations of domain names containing the trademarks of others is evidence that Respondent registered and is using the <weldon.com> domain name in bad faith under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Wildlife Fed’n v. Kang, FA 170519 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has a history of registering domain names that infringe on other trademark holders' rights; therefore, Respondent's registration and use of the <yourbigbackyard.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name is identical to Complainant's YOUR BIG BACKYARD mark and prevents Complainant from reflecting its mark on-line.”).
Complainant has presented arguments and evidence to show that Respondent is using the disputed domain name to resolve to a website featuring various third-party links. Complainant contends that some of the links contained on Respondent’s website resolve to potential competitors in the construction and piping industry, and that therefore Respondent registered and is using the domain name in bad faith under the Policy. The Panel agrees and finds that Respondent’s diversion of Internet users away from Complainant and to Complainant’s competitors is evidence of bad faith under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).
Complainant argues that Respondent is using the disputed domain name for a links directory that features third-party links to competing and unrelated companies as well as a search engine. Complainant contends that Respondent receives commercial benefit from its use of the domain name, and that as such has registered the domain name in bad faith. The Panel agrees and finds that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites 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 that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <weldon.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 23, 2011
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