Panduit Corp. v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1111001417221
Complainant is Panduit Corp. (“Complainant”), represented by Sydney R. Kokjohn of McDonnell Boehnen Hulbert & Berghoff LLP, Illinois, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <panduitncg.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Flip Jan Claude Petillion has been appointed as the Chair of the three-member Panel along with Debrett Gordon Lyons and G. Gervaise Davis, III as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2011; the National Arbitration Forum received payment on November 24, 2011.
On November 29, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <panduitncg.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 November 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 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@panduitncg.com. Also on November 29, 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 December 28, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Flip Jan Claude Petillion as the Chair of the three-member Panel along with Debrett Gordon Lyons and G. Gervaise Davis, III as Panelists.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <panduitncg.com> domain name is confusingly similar to Complainant’s PANDUIT mark.
2. Respondent does not have any rights or legitimate interests in the <panduitncg.com> domain name.
3. Respondent registered and used the <panduitncg.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the holder of the following trademark registrations with the United States Patent and Trademark Office (“USPTO”) in the PANDUIT mark:
Reg. No. 851,811 registered July 2, 1968;
Reg. No. 967,414 registered September 4, 1973; &
Reg. No. 1,008,332 registered April 8, 1975.
Complainant first used the PANDUIT trademark in commerce in connection with wiring components and tools in 1962.
Respondent, Private Registrations Aktien Gesellschaft / Domain Admin registered the domain name <panduitncg.com> on October 12, 1999.
Respondent uses the disputed domain name in connection with a website offering a collection of links to third-party websites. Many of these links relate to and compete with Complainant and its electrical and cabling 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 and is being used in bad faith.
Complainant alleges that it has rights in the PANDUIT mark by virtue of its trademark registrations with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 851,811 registered July 2, 1968;
Reg. No. 967,414 registered September 4, 1973; &
Reg. No. 1,008,332 registered April 8, 1975.
The Panel finds that these USPTO trademark registrations are sufficient to prove that Complainant has rights in the mark for the purposes of Policy ¶ 4(a)(i), even though Respondent does not live or operate in the United States. 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that Respondent’s <panduitncg.com> domain name is confusingly similar to Complainant’s PANDUIT mark because the disputed domain name is comprised solely of the mark, the generic top-level domain (“gTLD”) “.com,” and the letters “ncg,” which refer to “network connectivity group” and describe Complainant. The Panel finds that adding a series of letters or an abbreviation of a term to Complainant’s mark does not differentiate it for the purposes of Policy ¶ 4(a)(i). See L.F.P., Inc. v. Yarbrough, FA 114420 (Nat. Arb. Forum July 9, 2002) (finding that <xxxbarelylegal.com> domain name to be confusingly similar to the complainant’s BARELY LEGAL mark because the addition of “xxx” was not a distinguishing addition); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON). The Panel also holds that the addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Under Policy ¶ 4(a)(ii) of the Policy, the Complainant has the burden of establishing that respondent has no rights or legitimate interests in respect of the domain names.
It is established case law that the Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden 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 contends that Respondent is not commonly known by the <panduitncg.com> domain name and has not been licensed to use Complainant’s mark in any way. Complainant further argues that Respondent is not connected with Complainant in any way. The WHOIS record for the disputed domain name lists the registrant as “Private Registrations Aktien Gesellschaft / Domain Admin,” which suggests no affiliation with the disputed domain name. The Panel thus concludes that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant asserts that Respondent uses the <panduitncg.com> domain name to resolve to a website offering a collection of links to third-party websites. Based on the screenshot provided by Complainant, the Panel determines that many of these links relate to and compete with Complainant and its products. Complainant argues that Respondent diverts Internet users to this resolving website for its own commercial gain. The Panel therefore holds that Respondent’s hosting of a pay-per-click link directory at the disputed domain name does not demonstrate 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). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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).”).
Complainant argues that Respondent has been the respondent in various prior UDRP proceedings in which the disputed domain names were transferred to their respective complainants. See, e.g., DatingDirect.com Ltd. v. Private Registrations Aktien Gesellschaft, FA 1227747 (Nat. Arb. Forum Nov. 24, 2008); United Health Group Inc. v. Private Registrations Aktien Gesellschaft, FA 1277666 (Nat. Arb. Forum Sept. 24, 2009); Immaculata Univ. v. Private Registrations Aktien Gesellschaft, FA 1278462 (Nat. Arb. Forum Sept. 21, 2009). The Panel holds that this history of adverse UDRP decisions against Respondent indicates that Respondent has a pattern of bad faith registrations of domain names infringing on others’ marks under Policy ¶ 4(b)(ii). According to the Panel, this history in combination with the lack of rights or legitimate interest in the disputed domain name indicates Respondent’s bad faith in the present proceedings. 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 Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Complainant further contends that Respondent diverts Internet users through the <panduitncg.com> domain name to a website filled with pay-per-click third-party links. The Panel may find, according to the screenshot of the resolving website provided by Complainant, that these links advertise topics such as “Data Cabling,” “Cabling Contractor,” “Fiber Optic Connectors,” etc. that are relevant to and competitive with Complainant’s business. Based on this evidence, the Panel has determined that Respondent’s actions place it in the position of a competitor by advertising for companies providing similar services and products. The Panel therefore concludes that Respondent’s actions disrupt Complainant’s business, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant also alleges that Respondent registered the <panduitncg.com> domain name, which is a confusingly similar variation of Complainant’s mark, to intentionally attract Internet users to the disputed domain name and create a likelihood of confusion as to the affiliation or sponsorship of Respondent’s resolving website. Complainant further argues that Respondent diverts Internet users in this way for its own commercial gain. The Panel holds that Respondent’s efforts to attract and mislead consumers for its own profit indicates bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that the relief requested shall be GRANTED.
Accordingly, it is Ordered that the <panduitncg.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett Gordon Lyons and G. Gervaise Davis, III, Flip Jan Claude Petillion (Chair) Panelists
Dated: January 11, 2012
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