national arbitration forum

 

DECISION

 

dB Special Instruments Inc. v. AIM Technologies Inc.

Claim Number: FA1107001397026

 

 

PARTIES

Complainant is dB Special Instruments Inc. (“Complainant”), represented by Timothy P. Lo and Jeffrey D. Morton of Smart & Biggar, Vancouver, British Columbia, Canada.  Respondent is AIM Technologies Inc. (“Respondent”), represented by Vikki MacKay of AIM Technologies Inc., Burnaby, British Columbia, Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <dbspecialinstrument.com>, <dbspecialinstruments.com>, <db-specialinstrument.com>, <db-specialinstruments.com>, <db-special-instruments.com>, and <dbspecialinst.com>, (collectively, the “Domain Names”) 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.

Robert A. Fashler, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 5, 2011; the National Arbitration Forum received payment on July 5, 2011.

On July 8, 2011, Godaddy.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <dbspecialinstrument.com>, <dbspecialinstruments.com>, <db-specialinstrument.com>, <db-specialinstruments.com>, <db-special-instruments.com>, and <dbspecialinst.com> (the “Domain Names”) are registered with Godaddy.Com, Inc. and that Respondent is the current registrant of the Domain 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 July 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@dbspecialinstrument.com, postmaster@dbspecialinstruments.com, postmaster@db-specialinstrument.com, postmaster@db-specialinstruments.com, postmaster@db-special-instruments.com, and postmaster@dbspecialinst.com.  

Also on July 18, 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 August 8, 2011.

On August 12, 2011, an Additional Submission was timely received from Complainant (“Complainant’s Additional Submission”).

On August 16, 2011, an Additional Submission was timely received from Respondent (“Respondent’s Additional Submission”).

On August 10, 201, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert A. Fashler as Panelist.

On August 23, 2011, pursuant to Paragraph 15 (c) of the Rules for Domain Name Domain Name Resolution Policy (the “Rules”), the Panel issued an order extending the time period within which the Panel is required to render its decision until September 6, 2011.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS
            A. Complainant

In addition to its Submissions, Complainant submitted an affidavit of Complainant’s sole director, Mr. Daniel E. Black, plus thorough documentary evidence. Complainant’s principal Submissions and evidence are:

(a)    Complainant and Respondent are direct competitors in the audiology and hearing services industry in the Greater Vancouver region of British Columbia, Canada.

(b)    Complainant uses its corporate name, dB Special Instruments Inc., as an unregistered trademark (“Complainant’s Trademark”) in association with devices for testing human hearing (“Devices”) and services comprising the retail sale of Devices and the repair and calibration of Devices (“Complainant’s Services”).   

(b)    There are six Domain Names, all in the .com gTLD. One Domain Name was registered January 1, 2011. The other Domain Names were all registered January 5, 2011.

(c)    All the Domain Names contain three components, namely: (i) the letters “db”, (ii) the word “special”, and (iii) the word “instruments” or a minor variation of that word, namely “instrument” (singular) or “inst” (abbreviation of “instrument”). The Domain Names all depict those components in the same order in which they are introduced above. In three of the Domain Names, those components run together without interruption. In the other three Domain Names, hyphens appear between “db” and “special”. In one Domain Name, hyphens appear twice, first  between “db” and “special” and then between “special” and “instruments”.

(d)    Complainant has rights in Complainant’s Trademark, and the Domain Names are identical or confusingly similar to Complainant’s Trademark, for the following reasons:

 

(i)    Unregistered, common law trademark rights are appropriate subject matter of Paragraph 4 (a) (i) of the Policy. It is not necessary that a trademark be registered in order to be enforced under Paragraph 4 (a) (i).

(ii)    Complainant holds common law rights in Complainant’s Trademark in Canada as a consequence of Complainant’s extensive and continuous use of the trademark in Canada in association with Complainant’s Services since July of 2003.

 

(iii)    Complainant’s submissions provide thorough evidence of its use of Complainant’s Trademark in Canada during every year since 2003, including samples showing how the trademark has appeared in relation to the sale and promotion of Complainant’s services.

(iv)    Complainant provides revenue figures for Canadian transactions involving the sale of Complainant’s Services in Canada in association with Complainant’s Trademark during every year beginning in 2003, when its Revenues were approximately $359,124.47, and continuing to 2010, when its revenues were approximately $2,112,000.00.

(v)    As a consequence of that usage, Complainant’s Trademark has acquired secondary meaning in Canada and is, in fact, distinctive of Complainant’s Services.

(vi)    As a consequence of that usage, Complainant’s Trademark has acquired secondary meaning in Canada and is, in fact, distinctive of Complainant’s Services.

(vii)    Minor differences between the Domain Names and Complainant’s Trademark, namely, the omission of “Inc.”, the addition of “.com”, the addition of hyphens, the depiction of the singular form of “instrument”, and the abbreviation of “instrument to “inst”, do not reduce the fact that each of the Domain Names is identical or confusingly similar to Complainant’s Trademark.

(e)    Respondent has no rights or legitimate interests in the Domain Names because:

 

(i)    Respondent is a direct competitor of Complainant;

 

(ii)    Respondent has received formal notice of Complainant’s Trademark as a consequence of direct business dealings between them - in the Spring of 2007, Respondent issued a purchase order to Complainant, and Complainant issued two invoices to Respondent, all of which identified Complainant as “dB Special Instruments Inc.”;

 

(iii)   Until some time after receiving notice of the dispute, Respondent actively used the Domain Names in a website that advertised Respondent and provided a link to Respondent’s main website;

 

(iv)    Since June 15, 2011, which is after Respondent received a cease and desist letter from Complainant’s lawyers in relation to the Domain Names, Respondent has been using five of the Domain Names for a pay-per-click website that provides links to websites of third party businesses that do not compete directly with Complainant;

(v)    the manner in which Respondent has been using the Domain Names is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use because Respondent is a competitor of Complainant and has used the Domain Names to derive advantage from confusion between the Domain Names and Complainant’s Trademark;

(vi)       Respondent’s use of the Domain Names to promote, and attract Internet traffic to, its own competing website is not legitimate;

(vii)      Respondent’s use of the Domain Names at pay-per-click websites is not legitimate.

 

(viii)    Respondent is not associated with Complainant and has neither sought nor received Complainant’s authorization to use Complainant’s Trademark;

(f)    Respondent registered and is using the Domain Names in bad faith because:

 

(i)    In reference to Paragraph 4. b. (ii) of the Policy, Respondent registered the Domain Names in order to prevent Complainant from reflecting Complainant’s Trademark in a corresponding domain name, and Respondent has engaged in a pattern of such conduct;

(ii)     Respondent registered the domain name <genieaudio.ca>, which is identical to the trademark of another direct competitor of Respondent, Genie Audio Inc., as evidenced by a cease and desist letter to Respondent from the lawyers for that company.

 

(iii)    In reference to Paragraph 4. b. (iii) of the Policy, Respondent registered the Domain Names primarily for the purpose of disrupting the business of Complainant, which is a direct competitor of Respondent;

(iv)       Respondent’s use of the Domain Names has disrupted Complainant’s business by diverting Internet traffic away from Complainant’s website;

 

(v)    In reference to Paragraph 4. b. (iv) of the Policy, Respondent has actively used the Domain Names in an intentional attempt  to attract, for commercial gain, Internet users to Respondent’s website, by creating likelihood of confusion with Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.

B. Respondent

Respondent provided extensive documentary evidence but no sworn evidence. Significant portions of Respondent’s submissions and evidence were irrelevant for the purpose of this Proceeding. This decision does not address submissions and evidence that the Panel considered to have no bearing on the matters at issue. Respondent’s principal submissions and evidence are:

(a)    Respondent is one of three distinct corporations, all of which are controlled by Mr. James Renshaw, The three corporations form a single corporate group (the “Aim Group”). The first company in the Aim Group was incorporated in 1974. The second company in the Aim Group was incorporated in 1995. The Respondent itself was incorporated in 2005. The Response treats the corporate group - that is, all three corporations - as a single entity.

(b)    The term “special instruments” is commonly used and well-understood as referring to medical and audiological equipment.

(c)    The term “dB” is the standard scientific symbol used to denote “decibels”, which are the units by which sound is measured. Decibels are a central focus of the audiology industry.

(c)    Members of the Aim Group have been selling special instruments to the audiology industry since 1974.

(d)    Complainant is owned by Mr. Daniel Black. Mr. Black was an employee of one or more companies in the Aim Group continuously between 1983 and June 30, 2003. While employed by a company in the Aim Group, Mr. Black was a highly trusted employee and a close personal friend of Mr. Renshaw and his family.

(e)    One of more members of the Aim Group  have been using the corporate slogan “Special Instruments for Hearing Testing” (“Respondent’s Slogan”) for at least 35 years. Respondent consistently refers to this slogan as  “Special Instruments for Hearing Testing” throughout its submissions except for one inconsistent paragraph of the Response in which Respondent asserts that the slogan is actually “Products for decibels (dB) Special Instruments for Hearing Testing”. Respondent also provides one screen shot of a web page that reproduces this second slogan, but Respondent provides no date for such use.  The vast bulk of Respondent’s submissions and evidence refer to Respondent’s Slogan as “Special Instruments for Hearing Testing”. The Panel rejects Respondent’s single inconsistent assertion that its corporate slogan is not “Special Instruments for Hearing Testing”.

(f)    Complainant’s Trademark is entirely generic, consisting of two generic terms,  namely, “dB” and “special instruments”, plus the standard corporate ending “Inc.”

(g)    Complainant’s Trademark (“dB Special Instruments Inc.”) is a truncated version of Respondent’s Slogan (“Special Instruments for Hearing Testing”) prefaced by a generic industry term  (“dB”).

(h)    Respondent’s Slogan enjoys reputation and is recognized among Respondent’s customers.

(i)    Complainant adopted Complainant’s Trademark for the purpose of causing confusion between Complainant’s Trademark and Respondent’s Slogan among Respondent’s customers. That confusion would be increased because Mr. Black previously dealt with the customers as a representative of Respondent.

(j)    Respondent is entitled to use the words contained in the Domain Names because of its historic use of Respondent’s Slogan and generic terms commonly used in the audiology industry.

(k)    Respondent admits that it intentionally registered and used the Domain Names as “referral sites” for the purpose of increasing Internet traffic to its website by causing those referral sites to rank high in GOOGLE searches.

(l)    Respondent says that it further optimized those referral sites by causing the referral sites to contain “...invisible text that reflects the site address and serves to strengthen the search engine retrieval process.” Respondent elaborates on its use of invisible text on the referral sites as follows: “Note that if the site address is www.audiologyinstruments.com, then the invisible text will read Audiology Instruments...”.

(m)    Complainant first communicated its concerns about the Domain Names directly to Respondent by an email dated March 2, 2011, but Respondent had earlier learned from third parties that Complainant was concerned about the Domain Names. In the first direct communication from Complainant on the subject, Complainant offered to buy the Domain Names for $500.

(n)    Complainant and Respondent communicated on the subject for a few months culminating in Complainant offering $3,000 to buy the Domain Names. Respondent rejected that offer by an email dated May 2, 2011. Respondent submits that Respondent rejected the offer because “... the domains represented a significant part of Respondent’s Corporate Identity...”.

(o)    Complainant does not own Complainant’s Trademark because it is not registered.

(p)    Complainant’s Trademark cannot be a trademark because it consists of nothing more than generic terms.

(q)    The Domain Names are not confusingly similar to Complainant’s Trademark because the Aim Group has been using  Respondent’s Slogan for over 35 years.

(r)    Ownership of trademarks in Canada is determined by the Canadian Intellectual Property Office (“CIPO”). Complainant has filed an application with CIPO to register Complainant’s Trademark and Respondent is considering opposing that application.

(s)    Respondent admits that it “impulsively” registered a domain name in the .ca ccTLD, namely <genieaudio.ca>, “...that reflected the .com domain name of Genie Audio”. Respondent intends not to renew that registration when it expires in January 2012. Respondent says that “This is a single isolated incident and does not constitute a ‘pattern of behaviour.’ “

(t)    The corporate ending “Inc.” is “the only thing that differentiates” Complainant’s Trademark, (“dB Special Instruments Inc.”), from Respondent’s Slogan, (“Special Instruments for Hearing Testing”).

(u)    Respondent registered the Domain Names “...as a reflection of its historical use of the terms and has not demonstrated any patterns of bad faith.”

(v)    It is Complainant, not Respondent, who is engaging in bad faith conduct and reverse domain name hijacking.

C. Complainant’s Additional Submissions

Complainant’s principal additional submissions are:

(a)    Complainant admits that Mr. Black was an employee of Respondent between 1983 and 2007, but says that this fact is not relevant.

(b)    Complainant’s Trademark is not a truncated version of Respondent’s Slogan. For example Respondent’s Slogan does not include the letters “dB”.

(c)    References by Respondent to the CIPO are irrelevant.

(d)    Taken as a whole, Complainant’s Trademark is not merely generic and Complainant’s Trademark has acquired distinctiveness through use.

(e)    Respondent’s Slogan is merely descriptive phrase and should not be given any legal protection.

(f)    There is no evidence that Respondent used the words contained in Complainant’s Trademark before it registered the Domain Names.

D.  Respondent’s Additional Submissions

Respondents additional submissions do not add an substantive arguments or evidence beyond what appears in the Response. However, the additional submissions do shed light on Respondent’s state of mind. IN that context, Respondent’s principal additional submissions are:

(a)    Mr. Black has engaged in a breach of trust and  “The fact that he was not prosecuted does not negate this”.

(b)    “Respondent observes that a man who steals a car and does not get caught is nonetheless a car thief. And a man who steals his best friends car, then brags that his old friend is slow and stupid for not giving chase and calling the police, is a man who does not recognize the forgiving generosity of his old friend.”

(c)    Complainant’s communications with Respondent with a view toward settlement, including the offer to buy the Domain Names, “...was an attempt at coercion.

(d)    “Although the Complainant has been happy to sign affidavits, he does appear to be a little forgetful about some facts. He forgot to mention that he had a prior relationship with the Respondent. He has apparently forgotten the position of responsibility that he held with the Respondent and the level of signing authority and corporate trust that he enjoyed. He also apparently forgotten that virtually all of the customers that he cites as his own are in fact long-standing customers of the Respondent.”

FINDINGS

For the reasons set forth below, the Panel finds that Complainant has proven the presence of all three of the elements identified in Paragraph 4  (a) of the Policy.

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 the Domain Names should be cancelled or transferred:

 

(1)  the Domain Names are 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 Names; and

(3)  the Domain Names have been registered and are being used in bad faith.

 

A.      Identical and/or Confusingly Similar

Under Paragraph 4 (a) (i) of the Policy, Complainant is required to establish rights in the trademark that it is asserting. Complainant claims common law rights in Complainant’s Trademark “dB Special Instruments Inc.” Complainant has no registration for that trademark. Complainant says that its common law rights arise from use of the trademark in Canada. Respondent appears to be asserting that Paragraph 4 (a) (i) of the Policy does not recognize common law rights in unregistered trademarks.

Paragraph 4 (a) (i) of the Policy allows complainants to rely on “rights”, but does not spell out precisely what kind of legal rights are intended. That is not surprising as there is some variation in the laws that protect trademarks from one country to another. If the applicable law - in this case the law of Canada - recognizes legal rights, then the Complainant must prove that it has rights under that law.

Rights derived from a trademark registration system are fairly easy to prove, but, such rights are not the exclusive kind of trademark rights recognized by Canadian law or the Policy. it is well established under numerous UDRP decisions that if the law of the relevant jurisdiction recognizes rights in unregistered trademarks, then such rights come within the ambit of Paragraph 4 (a) (i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
  
As already noted, Canadian law applies to these circumstances. Canadian law does recognize and enforce rights in unregistered trademarks both at common law and under section 7 of the Canadian Trade-Marks Act. Such rights are derived from use and acquired distinctiveness:

 

Trade mark rights are and were acquired by adoption and use, not only at common law but under three successive Canadian statutes dealing with trade marks. A trade mark becomes the exclusive property of the user at common law as soon as it denotes his goods in the market, and under the various trade mark statutes, as soon as it was or is validly registered.

 

Harold G. Fox, Canadian Law of Trade Marks and Unfair Competition 48 (3rd ed. 1972).

In this case, Complainant’s Trademark is not an ordinary trademark. Its first and primary function is as a corporate name. So, the natural question is: can a corporate name also function as a trademark? That question was answered in the affirmative in Opus Building Corp. v. Opus Corp. [1994] 60 C.P.R. 103-104 (Can.):

 

Trade mark and trade name usage are not necessarily mutually exclusive, and using a trade mark that is part of a corporate name does not constitute a bar to proving “use”.

The Court in that case found that the corporate name “Opus Building Corporation” was, in fact, used as a trademark and was enforceable.

Respondent asserts that Complainant’s Trademark consists entirely of generic terms that are used extensively in the audiology industry (that is, “dB”, which means decibels, and “special instruments”, which means audiology equipment). Respondent also appears to be taking the position that because of that generic/descriptive content, Complainant’s Trademark cannot be a trademark in which Complainant, or anyone else, can have rights.

The Panel rejects that position for two reasons. First, Complainant’s Trademark should be assessed in its entirety and not dissected into its individual components. The relevant question is whether the trademark as a whole – that is, the combination of all its elements - is inherently distinctive. If so, then the trademark is not merely generic or descriptive and can perform a trademark function. Second, under Canadian law, even a descriptive trademark can acquire secondary meaning, and become distinctive, as a consequence of active use in commerce. A mark that has some inherent distinctiveness when adopted can acquire additional distinctiveness through use.

In this case the Panel finds that the combination of “dB” with “special instruments” is not merely generic or descriptive. There is no doubt that the mark as a whole is suggestive of audiology equipment, but there is no evidence that the combination “dB special instruments” is used by anyone to denote a specific product, service, or other relevant item. Further, the combination is not grammatical. It has no obvious plain meaning.

Hence, if Complainant can demonstrate that it has used Complainant’s Mark as a trademark, and that the trademark is actually distinctive of Complainant’s Services, then it will satisfy its burden of proving that it has rights in Complainant’s Trademark under Paragraph 4 (a) (i) of the Policy.  

Complainant has provided abundant evidence of continuous use of “dB Special Instruments Inc.” since 2003, including the dollar value of sales made in association with the trademark. Respondent has not challenged that evidence and has not asserted that such use does not constitute use as a trademark.

 

The Panel finds that  Complainant has satisfied its burden of demonstrating rights in Complainant’s Mark under Paragraph 4 (a) (i) of the Policy.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership); see also Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark).

Complainant submits that the Domain Names are identical or confusingly similar to Complainant’s Mark.  All of the Domain Names include the TLD “.com”, exclude the “Inc.”. portion of the trademark, and exclude the spaces in the mark.  Additional minor changes appear in the Domain Names, as follows:

 

(a)    <dbspecialinstrument.com>  singularizes the word “instrument”;

(b)    <db-specialinstrument.com> also removes the “s” and adds a hyphen between “dB” and “special instruments”;

(c)    <db-specialinstruments.com> and dB-special-instruments.com>  merely add punctuation to the mark in the form of hyphens;

(d)    <dbspecialinst.com> replaces the word “instrument” with the common abbreviation for that word “inst.

 

The Panel has no doubt that the Domain Names are calculated to copy Complainant’s Trademark. None of the minor differences contrived by Respondent are capable of distinguishing the Domain Names from Complainant’s Trademark. The Panel finds that the Domain Names are virtually identical, and, in any event, are confusingly similar, to Complainant’s Trademark. 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.”);  see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Paragraph 4 (a) (i)); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK); see also Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <victoriasecret.com> to be confusingly similar to the complainant’s trademark, VICTORIA’S SECRET); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated).

For reasons that will be discussed later in this decision, the Panel is satisfied that this copying was entirely intentional.

The Panel finds that Complainant has satisfied its burden under Paragraph 4 (a) (i) of the Policy.

B.      Rights or Legitimate Interests

In connection with Paragraph 4 (a) (ii), Complainant  bears the burden of making a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names. If Complainant satisfies that relatively light burden, the onus then shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

Complainant asserts that Respondent is not commonly known by the Domain Names.  To support this assertion, Complainant offers the WHOIS information as evidence that Respondent has no relationship beyond ownership to the disputed domain names as the registrant of the disputed domain names is identified as “AIM Technologies Inc.”  

Respondent asserts that Complainant’s Trademark - “dB Special Instruments Inc.” - is nothing more than a truncated version of Respondent’s Slogan - “Special Instruments for Hearing Testing”. Respondent also asserts that the Domain Names are nothing more than a variation of Respondent’s Slogan and that this slogan is associated with Respondent’s identity.

The Panel rejects those assertions. Respondent may use the phrase “Special Instruments for Hearing Testing” as a slogan, but that slogan is a very far cry from “dB Special Instruments Inc.” The only common element is “special instruments”, a generic term for audiological equipment, which is what both disputants sell. The Panel finds that: (i) use of the Domain Names does not constitute use of Respondent’s Slogan; and (ii) even if Respondent could show that Respondent’s Slogan was identified with Respondent such that Respondent is commonly known by Respondent’s Slogan, that does not equate with being known by the Domain Names or the combination of the three primary components of all of the Domain Names - “dB” and “Special” and  “Instruments”. The addition of “dB” and the subtraction of “for Hearing testing” are more than enough to distinguish Complainant’s Trademark and the Domain Names, on the one hand, from Respondent’s Slogan, on the other hand. There is no meaningful resemblance.

Further, Respondent has intentionally muddied the evidentiary waters.  Respondent has chosen not to distinguish between Respondent and the two other members of the Aim Group. Virtually all evidence of use of Respondent’s Slogan provided by Respondent shows use not by Respondent but by another member of the Aim Group, Aim Instrumentation Ltd. Respondent itself was not incorporated until 2005, approximately two years after Complainant was incorporated and began using Complainant’s Trademark. It is not clear at all that Respondent itself has ever used Respondent’s Slogan, or, if it has, when that use began. Hence, Respondent has not established that it, rather than Aim Instrumentation Lt., has ever used Respondent’s Slogan or become associated with it. For this reason alone, Respondent’s assertions must be  rejected.

 

Accordingly, the Panel finds that there is no evidence that Respondent is commonly known by the Domain Names under Paragraph 4 (c) (ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).

Respondent admits that it used the Domain Names in referral sites before having any notice of the dispute. It asserts that such use is normal and bona fide. However, Respondent readily concedes that the purpose of that activity was to increase Internet traffic to its own website by causing the referral sites to rank high in GOOGLE searches. Respondent also admits that it optimized those referral sites by causing them to contain “. . . invisible text that reflects the site address and serves to strengthen the search engine retrieval process.” Respondent elaborates on its use of invisible text on the referral sites as follows: “Note that if the site address is www.audiologyinstruments.com, then the invisible text will read Audiology Instruments. . . .” Hence, it is reasonable to infer that the invisible text on the referral sites accessed via the Domain Names must have been “dB special instruments” or the singular version thereof.

Complainant submits that Respondent’s use of the Domain Names at the referral sites was neither bona fide under Paragraph 4 (c) (i) of the Policy nor a legitimate noncommercial or fair use under Paragraph 4 (c) (iii) of the Policy. Respondent had direct business dealings with Complainant and had express notice of Complainant’s Trademark as far back as March of 2007. It knew the trademark and selected it intentionally. The Panel agrees with Complainant. The Panel also notes that Respondent’s true intention is further revealed by its use of invisible text on the referral sites, which would copy Complainant’s Trademark even more accurately and would serve to increase the likelihood of attracting Internet users who are seeking Complainant’s website.

The Panel finds that Respondent’s use of the Domain Names at the referral sites does not qualify as a bona fide offering of goods or services under Paragraph 4 (c) (i) or a legitimate noncommercial or fair use under Paragraph 4 (c) (iii) of the Policy.  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”);  see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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 evidence of both disputants is clear that Respondent used the Domain Names for the referral sites until some time after Respondent received notice of the dispute. The Panel is satisfied that it is not necessary to consider Respondent’s use of the Domain Names after receiving such notice. Its conduct after that time is merely a function of Respondent’s reaction to the dispute and the related discussion about possible settlement.

Respondent, unintentionally, provides additional evidence of its own bad faith that is relevant to Paragraphs 4 (a) (ii) and (iii) of the Policy. Respondent makes it abundantly clear that it and the owner of Complainant, Mr. Black, are hardly strangers to each other. They worked together for years. They compete within the same relatively small market. They share many of the same customers. They are acutely aware of what the other is doing. They are engaged in a “zero sum game” of sales to the same market.

It is very clear that Respondent feels betrayed by Complainant and is angry. Respondent’s Additional Submissions demonstrate the personal animosity that Respondent feels toward Complainant. A few particularly revealing statements from Respondent’s Additional Submissions are quoted above. This is not merely business. It is personal.

Those facts are the context of this dispute. It is evident that Respondent is not acting inadvertently. Rather, it is acting in a very calculated manner that is motivated by animosity toward Complainant as competitor and Mr. Black as a former friend and associate. That is not consistent with good faith or legitimate noncommercial or fair use.

 

The Panel finds that Complainant has satisfied its burden under Paragraph 4 (a) (ii) of the Policy, and that Respondent has failed to demonstrate rights to or legitimate interests in the Domain Names under Paragraph 4 (c) of the Policy.

C.      Registration and Use in Bad Faith

 

For the reasons discussed in the preceding section of this Decision, the Panel is of the view that Respondent registered and used the Domain Names in bad faith without the need to analyze the specifically-identified categories of bad faith set out in Paragraph 4 (b) of the Policy, which are not exhaustive. However, for the sake of completeness, The Panel will extend the analysis to Paragraph 4 (b).

In reference to Paragraph 4 (b) (ii) of the Policy, Complainant states that Respondent has engaged in a pattern of conduct of registering domain names in order to prevent Complainant from reflecting Complainant’s Trademark in a corresponding domain name. The Complaint cites just one instance of such conduct - the registration of <genieaudio.ca> - and says that a single instance is sufficient to establish the necessary pattern of conduct. In the Response, Respondent expressly admits that it “impulsively” registered a domain name in the .ca TLD “. . . that reflected the .com domain name of Genie Audio”, but Respondent contends that “[t]his is a single isolated incident and does not constitute a ‘pattern of behaviour.”

This case itself involves six different, but related, Domain Names. Given all of the facts discussed earlier, the Panel finds that Respondent registered each Domain Name for the purpose, inter alia, of preventing Complainant from reflecting its trademark in a corresponding domain name within the meaning of Paragraph 4 (b) (ii) of the Policy. The Panel is of the opinion that it is appropriate to consider all six Domain Names that are the subject of this case when assessing whether Respondent has engaged in a pattern of such conduct. It is worth noting that each of the six Domain Names could have been made the subject of a different UDRP proceeding, in which case the analysis would be a little more obvious.

The Panel finds that Respondents actions in relation to <genieaudio.ca> and the six Domain Names demonstrate that Respondent has engaged in a pattern of conduct within the meaning of Paragraph 4 (b) (ii) of the Policy. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”).

The Panel finds that Complainant has satisfied its burden in relation to Paragraph 4 (b) (ii) of the Policy. However, the Panel also finds that this conduct went hand in hand with conduct that violates Paragraphs 4 (b) (iii) and (iv). In essence, the Panel finds that Respondent sought to cause harm to this particular competitor for business and personal reasons, and to benefit commercially from those activities. That general intent manifested in actions that simultaneously fall into all three categories of bad faith conduct.

The evidence of both Disputants demonstrates that, prior to June 15, 2011, the Domain Names resolved to referral sites used by Respondent to obtain high search engine rankings and thereby increase Internet traffic to its main website. Respondent enhanced that functionality through the use of invisible text that repeated the key words of the Domain Names but left out the TLD.

  

The disputants are direct competitors in a relatively small market. Respondent knows Complainant well and bears personal animosity toward Complainant because of their past relationship and Complainant having left Respondent’s employ to go into competition with Respondent. The Panel finds that Respondent acquired the Domain Names primarily for the purpose of disrupting Respondent’s business and that Respondent’s use of the Domain Names did, in fact, disrupt Respondent’s business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”);  see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).

Complainant’s use of the Domain Names at the referral sites was not merely for the purpose of depriving Complainant of domain names that reflect Complainant’s Trademark or to disrupt Complainant’s business. Respondent admits that it set up the referral sites to achieve high search engine rankings. There is only one purpose for which one seeks to improve search engine rankings, namely, to increase Internet traffic.

There is nothing wrong in doing that as long as one does not achieve that effect by using the proprietary assets of another. Respondent may use ‘Special Instruments for Hearing Testing”, but it has not established that it has any prior rights to “dB Special Instruments”. Respondent is simply not credible when it asserts that the two phrases are the same thing or that when it used the Domain Names it was merely using the slogan.  Respondent knew that “dB Special Instruments” was Complainant’s business name and trademark. It chose the Domain Names for that reason, knowing that using those domain names at the referral sites would be likely to cause confusion and disrupt Complainant’s business. The disputants are direct competitors in the same geographic region. As Respondent wanted to enhance search engine rankings, and thereby attract more Internet traffic, it intended to profit from the confusion.

The Panel finds that Respondent has registered and used the Domain Names in bad faith under Paragraph 4 (b) (iv) of the Policy. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 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).

For all of the foregoing reasons, the Panel finds that Complainant has satisfied its burden in relation to Paragraph 4 (a) (iii).

D.        Reverse Domain Name Hijacking

As Complainant has succeeded in this proceeding, the allegation of reverse domain name hijacking does not arise for consideration. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).

DECISION

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

Accordingly, it is Ordered that the <dbspecialinstrument.com>, <dbspecialinstruments.com>, <db-specialinstrument.com>, <db-specialinstruments.com>, <db-special-instruments.com>, and <dbspecialinst.com> domain names be TRANSFERRED from Respondent to Complainant.

 

Robert A. Fashler,  Panelist

Dated: September 6, 2011