OMRON Corporation v. Rescued Domains
Claim Number: FA1106001395049
Complainant is OMRON Corporation (“Complainant”), represented by Paolo A. Strino, New York, USA. Respondent is Rescued Domains (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <omron.us>, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2011; the National Arbitration Forum received a hard copy of the Complaint on June 23, 2011.
On June 24, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <omron.us> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 23, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 13, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Respondent filed an e-mail with the Forum stating that it has no interest in keeping this domain name registered. Respondent has tried to deregister the domain but has been unable to do so. The Panel does not consider this e-mail as a response and will proceed this case as a case in default.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 <omron.us> domain name is identical to Complainant’s OMRON mark.
2. Respondent does not have any rights or legitimate interests in the <omron.us> domain name.
3. Respondent registered and used the <omron.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, OMRON Corporation, owns the OMRON mark which it uses in connection with the manufacture and sale of automation components, equipment and systems, medical equipment, and other goods. Complainant owns multiple trademarks for its OMRON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 863,793 registered January 21, 1969).
Respondent, Rescued Domains, registered the disputed domain name on August 21, 2007. The <omron.us> domain name resolves to a website which displays a directory of links to third-party websites which compete with Complainant’s business and products.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant contends that it has established rights in the OMRON mark through registration with federal trademark authorities. Panels have found that the registration of a mark is sufficient to establish rights in a mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); 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 has provided the Panel with evidence of trademark registrations with the USPTO (e.g., Reg. No. 863,793 registered January 21, 1969). The Panel finds that Complainant has established rights in the OMRON mark under Policy ¶ 4(a)(i).
Complainant next contends that the <omron.us> domain name is identical to Complainant’s mark. Panels have found that the affixation of a country-code top-level domain (“ccTLD”) does not adequately distinguish a domain name from the mark it is otherwise identical to. See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the Policy”); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). The Panel finds that, without more changes to Complainant’s fully-incorporated mark in the domain name, the disputed domain name is identical to Complainant’s OMRON mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Once a complainant has made a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”); see also 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 [UDRP] ¶ 4(c)). Where a respondent has failed to file a response to the Complaint, the panel may presume that the failure to do so is an admission of the claims complainant has lain against it. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). The Panel finds that Complainant has made a prima facie case, and it will review the record for information suggesting that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
There is no evidence in the record for the Panel to conclude that Respondent owns any trade or service marks reflecting the <omron.us> domain name. As such, the Panel finds that Respondent does not have rights of legitimate interests under Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Where a respondent is commonly known by a disputed domain name, the respondent may have rights or legitimate interests in a domain name. A determination of whether a respondent is commonly known by a disputed domain name can be made on the information provided in the record, including the WHOIS information. See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Complainant has not given Respondent permission to use its mark in the disputed domain name, and Respondent is in no way affiliated with Complainant. The WHOIS listing for the <omron.us> domain name does not suggest to the Panel that Respondent is commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the <omron.us> domain name under Policy ¶ 4(c)(iii).
The disputed domain name resolves to a website displaying links to third-party websites which compete with Complainant’s business and products. Panels have found this use of a website to demonstrate a respondent’s lack of rights and legitimate interests. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (holding that the respondent’s use of the contested domain name to maintain a commercial website with links to the products and services of the complainant’s competitors did not represent a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)). The Panel finds that Respondent’s use of the disputed domain name to display links to Complainant’s competitors is neither a bona fide offering of goods and services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).
The Panel finds Policy ¶ 4(a)(ii) to be satisfied.
Complainant contends that the <omron.us> domain name is being used to disrupt Complainant’s business. Panels have found that where a respondent uses a website to display links to a complainant’s competitors, there is evidence of bad faith. 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 UDRP ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). Respondent displays links to Complainant’s competitors’ websites on the <omron.us> domain name’s resolving website. As such, many of the Internet users seeking Complainant’s site may reach Respondents due to the identical domain name and then purchase goods through Complainant’s competitors instead of Complainant. The Panel finds that Respondent’s use of the disputed domain name is a disruption to Complainant’s business, which is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant last contends that Respondent’s registration and use of the disputed domain name both demonstrate bad faith because they were done so that Respondent could profit by creating confusion among Internet users. The use of a website for a commercially gainful purpose that seeks to cause confusion for Internet users demonstrates bad faith. See 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 [UDRP] ¶ 4(b)(iv).”); see also 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). Respondent clearly intends to confuse Internet users into thinking that Respondent was associated with Complainant when it registered a domain name identical to Complainant’s mark. Respondent likely receives compensation for the display of the third-party links and the redirection of Internet users through the links. Therefore, the Panel finds that Respondent registered and subsequently uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
The Panel finds that the required elements of Policy ¶ 4(a)(iii) have been fulfilled.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <omron.us> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 3, 2011
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