Flexible Steel Lacing Company v. COBRA America
Claim Number: FA1106001393768
Complainant is Flexible Steel Lacing Company (“Complainant”), represented by Kourtney A. Mulcahy of Hinshaw & Culbertson LLP, Illinois, USA. Respondent is COBRA America (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <flexcoaligator.com>, <flexcoclipper.com>, and <flexcofasteners.com>, registered with GoDaddy.com, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2011; the National Arbitration Forum received payment on June 16, 2011.
On June 17, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <flexcoaligator.com>, <flexcoclipper.com>, and <flexcofasteners.com> 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 June 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 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@flexcoaligator.com, postmaster@flexcoclipper.com, and postmaster@flexcofasteners.com. Also on June 22, 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 July 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <flexcoaligator.com>, <flexcoclipper.com>, and <flexcofasteners.com> domain names are confusingly similar to Complainant’s FLEXCO mark.
2. Respondent does not have any rights or legitimate interests in the <flexcoaligator.com>, <flexcoclipper.com>, and <flexcofasteners.com> domain names.
3. Respondent registered and used the <flexcoaligator.com>, <flexcoclipper.com>, and <flexcofasteners.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Flexible Steel Lacing Company, makes products that enhance belt conveyor productivity, including mechanical belt fastening systems, belt cleaners and plows, pulley lagging, belt cleats, transfer-point systems, and belt maintenance and installation tools. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the FLEXCO mark:
Reg. No. 388,218 issued June 17, 1941 and
Reg. No. 2,842,885 issued May 18, 2004.
Complainant also owns USPTO trademark registrations for the ALLIGATOR mark:
Reg. No. 84,225 issued November 11, 1911
Reg. No. 1,711,762 issued September 1, 1992.
Complainant owns USPTO trademark registrations for the CLIPPER mark, as well:
Reg. No. 1,218,065 issued November 30, 1982.
Respondent, COBRA America, registered the <flexcoaligator.com>, <flexcoclipper.com>, and <flexcofasteners.com> domain names on March 23, 2009. The disputed domain names all resolve to websites hosting directories of pay-per-click links advertising companies and products in 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 owns trademark registrations with the USPTO for the FLEXCO mark:
Reg. No. 388,218 issued June 17, 1941 and
Reg. No. 2,842,885 issued May 18, 2004.
Complainant also owns USPTO trademark registrations for the ALLIGATOR mark:
Reg. No. 84,225 issued November 11, 1911
Reg. No. 1,711,762 issued September 1, 1992.
Complainant owns USPTO trademark registrations for the CLIPPER mark, as well:
Reg. No. 1,218,065 issued November 30, 1982.
The Panel holds that Complainant’s evidence of its USPTO trademark registrations is sufficient to prove its rights in the FLEXCO, ALLIGATOR and CLIPPER marks for the purposes of Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s <flexcoaligator.com>, <flexcoclipper.com>, and <flexcofasteners.com> domain names are confusingly similar to Complainant’s FLEXCO mark. Each disputed domain name combines Complainant’s FLEXCO mark with either the descriptive term “fasteners” or one of Complainant’s other marks (ALLIGATOR or CLIPPER) and the generic top-level domain (“gTLD”) “.com.” The <flexcoaligator.com> domain name also misspells the ALLIGATOR mark. The Panel finds that combining Complainant’s FLEXCO mark with another of Complainant’s mark does not remove the disputed domain name from the realm of confusing similarity and may even increase the confusing similarity. See Yahoo! Inc. v. Domain Contact 3, FA 1222420 (Nat. Arb. Forum Oct. 13, 2008) (holding that the <hotjobsyahoo.com> domain name is confusingly similar to Complainant’s HOTJOBS mark because the disputed domain name merely combined Complainant’s HOTJOBS mark with Complainant’s YAHOO! mark); see also Fitness Anywhere, Inc. v. Mode Athletics, FA 1320667 (Nat. Arb. Forum May 20, 2010) (“Respondent’s <trxsuspensiontraining.com> disputed domain name is confusingly similar to Complainant’s TRX and SUSPENSION marks because it combines Complainant’s marks and merely adds the generic top-level domain “.com.”). The Panel likewise holds that the addition of the descriptive term “fasteners” to Complainant’s mark does not dispel confusing similarity as it describes one of the products offered by Complainant. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark). The Panel also finds that misspelling Complainant’s mark in the disputed domain name by removing a letter also does not distinguish the disputed domain name. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Finally, the Panel determines that a gTLD is irrelevant to a finding of confusing similarity. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel therefore concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s FLEXCO mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain names. As Complainant has presented the prima facie case required by Policy ¶ 4(a)(ii), Respondent now has the burden of demonstrating rights or legitimate interests in the disputed domain names. Respondent, however, failed to respond to the complaint and thus has not met the burden of demonstrating rights and legitimate interests. The Panel accordingly finds that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int’l, D2002-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also 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.”).
Complainant alleges that there is no evidence showing that Respondent is commonly known by the disputed domain names. The WHOIS information for all three disputed domain names identifies the registrant as “COBRA America.” The Panel finds that, as this name does not appear connected with the disputed domain names in any way, Respondent is not commonly known by the disputed domain names and subsequently lacks rights and legitimate interests according to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Saunders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant contends that Respondent’s resolving websites at the disputed domain names provide links, presumably pay-per-click, to various competitors of Complainant, with titles like “Baler Belts – Best Prices,” “Air Conveyor,” and “The Flex Belt.” Complainant asserts that this use intentionally infringes on Complainant’s mark and therefore does not constitute a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel agrees with Complainant. See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post inks to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent uses the disputed domain names to redirect Internet users to directory webpages featuring many third-party links, such as “Steel Conveyor Belt,” “Conveyor Belt Miami,” and “The Flex Belt,” offering products in competition with Complainant. These directory websites substantially disrupt Complainant’s business because unsuspecting Internet users are directed away from Complainant’s actual site and may subsequently follow one of the featured links to arrive at a competitor’s site. The Panel finds that such efforts to disrupt Complainant’s business show bad faith registration and use according to 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 contends that Respondent’s operation of pay-per-click link directories at the websites resolving from the disputed domain names presumably financially benefits Respondent. By displaying links that are related to Complainant’s business and products, there is a greater likelihood that the links will be of interest to Internet users arriving at the site and that the Internet users will subsequently click on one of them. Each click results in profit to Respondent by way of click-through fees. The Panel finds that Respondent’s efforts to increase traffic to its site and consequently profit by attracting Complainant’s customers are evidence of bad faith registration and use according to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 31, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); 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 Policy ¶ 4(b)(iv) 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 <flexcoaligator.com>, <flexcoclipper.com>, and <flexcofasteners.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 26, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page