Lowrance Electronics, Inc. v. Don Schnurr
Claim Number: FA0301000140652
PARTIES
Complainant is Lowrance Electronics, Inc., Tulsa, OK (“Complainant”) represented by Brian M. Davis, of Alston & Bird, LLP. Respondent is Don Schnurr, West Windsor, NJ (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <lowranceelectronic.biz>, <lowrancefishfinder.biz>, <lowrancegps.biz> and <eaglegps.biz>, registered with Tucows, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 9, 2003; the Forum received a hard copy of the Complaint on January 13, 2003.
On January 11, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <lowranceelectronic.biz>, <lowrancefishfinder.biz>, <lowrancegps.biz> and <eaglegps.biz> are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 13, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 3, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@lowranceelectronic.biz, postmaster@lowrancefishfinder.biz, postmaster@lowrancegps.biz and postmaster@eaglegps.biz by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On February 12, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.
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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lowranceelectronic.biz>, <lowrancefishfinder.biz>, <lowrancegps.biz> and <eaglegps.biz> domain names are confusingly similar to Complainant’s Lowrance and Eagle marks.
2. Respondent does not have any rights or legitimate interests in the <lowranceelectronic.biz>, <lowrancefishfinder.biz>, <lowrancegps.biz> and <eaglegps.biz> domain names.
3. Respondent registered and used the <lowranceelectronic.biz>, <lowrancefishfinder.biz>, <lowrancegps.biz> and <eaglegps.biz> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for LOWRANCE (Reg. No. 1,038,018, issued April 13, 1973).
Complainant also holds a trademark registration with the USPTO for EAGLE &
design (Reg. No. 1,909,877, issued August 8, 1995).
Complainant
uses the marks to sell various electronic products, including global
positioning systems (“GPS”) and sonar “fishfinder” products. Complainant has
sold these products in the United States and internationally under the LOWRANCE
mark since at least 1960 and under the EAGLE mark since at least 1988.
Complainant also uses the domain names <lowrance.com>,
<lowrance.biz> and <eaglegps.com> to direct Internet users to
websites registered to Complainant.
Respondent
registered the disputed domain names on November 7, 2001. Respondent has not
established a website at any of the disputed domain names. Respondent has also
registered domain names that incorporate the famous marks of Complainant’s
competitors.
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.
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 established rights in the LOWRANCE mark through registration with the USPTO
and continuous use of the mark in commerce since at least 1960. Complainant has
also established rights in the EAGLE family of marks through registration with
the USPTO and continuous use of the mark in commerce since at least 1988.
Respondent’s
<lowranceelectronic.biz>, <lowrancefishfinder.biz>, <lowrancegps.biz> and <eaglegps.biz> domain names are
confusingly similar to Complainant’s marks because each incorporates
Complainant’s entire mark and merely adds a generic term that is obviously
related to Complainant’s business. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Respondent has failed to come forward with a Response. Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); 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”).
Furthermore, based on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).
Respondent has made no use of the disputed domain names since their registration on November 7, 2001. In addition, Respondent has registered domain names that incorporate the famous marks of Complainant’s competitors. From these facts, the Panel infers that Respondent registered the disputed domain name to sell it and is therefore not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).
Respondent has not come forward with any proof and there is no evidence on record to establish that Respondent is commonly known as <lowranceelectronic.biz>, <lowrancefishfinder.biz>, <lowrancegps.biz>, <eaglegps.biz> or LOWRANCEELECTRIC, LOWRANCEFISHFINDER, LOWRANCEGPS or EAGLEGPS. Therefore, Respondent has failed to establish that it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
has registered numerous domain names that infringe upon Complainant’s marks. In
addition, Respondent has registered domain names that infringe upon
Complainant’s competitors’ marks. Therefore, Respondent has established a bad faith pattern of registering domain
names in order to prevent the owner of the trademarks from reflecting the mark
in a corresponding domain name pursuant to Policy ¶ 4(b)(ii). See
YAHOO! Inc. v. Syrynx, Inc.,
D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy
¶ 4(b)(ii) in Respondent's registration of two domain names incorporating
Complainant's YAHOO! mark); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000)
(finding that registering multiple domain names in a short time frame
indicates an intention to prevent the mark holder from using its mark and
provides evidence of a pattern of conduct).
Furthermore, given the fame of Complainant’s LOWRANCE and EAGLE marks the Panel infers that Respondent had actual knowledge of Complainant’s marks when it registered the disputed domain names. Registration of a domain name confusingly similar to Complainant’s mark, despite actual knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
Accordingly,
the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lowranceelectronic.biz>, <lowrancefishfinder.biz>, <lowrancegps.biz> and <eaglegps.biz> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: February 18, 2003
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