Clipsal Australia Pty Ltd v. DIGITCOM Technology
Claim Number: FA1111001417710
Complainant is Clipsal Australia Pty Ltd (“Complainant”), represented by Margaret Shearer of Banki Haddock Fiora, Australia. Respondent is DIGITCOM Technology (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clipsal.us>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2011; the Forum received a hard copy of the Complaint on November 29, 2011.
On November 30, 2011, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <clipsal.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 December 2, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 22, 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 January 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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. 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 <clipsal.us> domain name is identical to Complainant’s CLIPSAL mark.
2. Respondent does not have any rights or legitimate interests in the <clipsal.us> domain name.
3. Respondent registered or used the <clipsal.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Clipsal Australia Pty Ltd, is the owner of the CLIPSAL mark. Complainant’s mark is used in connection with the manufacture, marketing, and sale of industrial and domestic electrical accessories including electrical switches, heating, safety apparatuses and lighting apparatuses. Complainant has registrations for the CLIPSAL mark (e.g., Reg. No. 83171 registered February 27, 1945) with IP Australia (“IPA”). Complainant also has registrations through the United Arab Emirates Ministry of the Economy (“UAEME”) for the CLIPSAL mark (e.g., Reg. No. 15191 registered May 12, 1998).
Respondent, DIGITCOM Technology, registered the disputed domain on August 22, 2008. The <clipsal.us> domain name redirects Internet traffic to Respondent’s website at <smarthomeuae.com/new3/index.php> which offers for sale a wide range of competing electrical, telecommunication, and home entertainment products as well as selling some of Complainant’s products. Additionally, Respondent refused to transfer the disputed domain name to Complainant without payment following Complainant’s request for the transfer.
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 argues that it has rights in the CLIPSAL mark. The CLIPSAL mark has been registered multiple times over in the countries in which Complainant and Respondent each reside. The CLIPSAL mark (e.g., Reg. No. 83171 registered February 27, 1945) has been registered with the IPA. Complainant also has registrations through the UAEME for the CLIPSAL mark (e.g., Reg. No. 15191 registered May 12, 1998). Therefore, the Panel finds that Complainant has rights in the CLIPSAL mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to UDRP ¶ 4(a)(i)).
Complainant also contends that the <clipsal.us> domain name is identical to the CLIPSAL mark. The panels in Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002), and Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4, 2008), held that the addition of a country-code top-level domain (“ccTLD”) fails to make the disputed domain name distinguishable from the allegedly infringed upon mark. The only change Respondent makes to the CLIPSAL mark in the disputed domain name is the addition of the ccTLD “.us.” Therefore, the Panel finds that Respondent’s <clipsal.us> domain name is identical to Complainant’s CLIPSAL mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant argues that Respondent does not have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case in support of this finding and thus that the burden shifts now to Respondent to dispute these claims. 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)). The Panel, however, is without the benefit of a Response from Respondent. Therefore, the Panel will make all inferences which are reasonable from the information available. 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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will still review the record for information suggesting that Respondent does have rights or legitimate interests in the disputed domain name.
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <clipsal.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to 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)).
Complainant alleges also that Respondent is not commonly known by the disputed domain name. Complainant argues that Respondent has not acquired any trademark or service marks which would suggest that Respondent may be commonly known by the disputed domain name and has never carried on any business reflecting the CLIPSAL mark. Additionally, Complainant claims that it has never licensed or otherwise permitted Respondent to use the CLIPSAL mark. Furthermore, the WHOIS record for the <clipsal.us> domain name lists “DIGITCOM Technology” as the domain name registrant. Therefore, the Panel finds that, pursuant to Policy ¶ 4(c)(iii), Respondent is not commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Respondent is a reseller of Complainant’s goods. The <clipsal.us> domain name resolves to the website associated with the <smarthomebrand.com> domain name. The <smarthomebrand.com> domain name is controlled by Respondent and sells Respondent’s products, Complainant’s products, and third-party competing products. According to Oki Data, to be bona fide an offering must meet a number of requirements. Respondent does not meet the requirement that it must sell on the website only the trademarked goods to prevent a Respondent from using the trademark goods to attract buys and then guiding them towards buying the products other than the trademarked goods. Additionally, Respondent does not meet the requirement that the website must accurately disclose the registrant’s relationship with the trademark owner and may not suggest that it is the trademark owner. The Panel finds that the identical nature of the disputed domain name seeks to have Internet users infer that Respondent either is Complainant or is an entity related to Complainant. The panels in Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), and Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003), found that the use of a disputed domain name to sell products of the complainant’s, respondent’s, or third-parties’ is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Therefore, the Panel finds that, pursuant to Policy ¶¶ 4(c)(ii) and 4(c)(iv), the <clipsal.us> domain name is not being used for either a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Complainant next contends that Respondent’s lack of rights and legitimate interests is illustrated by Respondent’s offer to sell the domain name to Complainant. After Complainant contacted Respondent requesting the transfer of the <clipsal.us> domain name Respondent refused any free transfer but instead offered to sell the disputed domain name to the Complainant. Panels have held that the offer to sell a disputed domain name is evidence of a respondent’s lack of rights or legitimate interests in the domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under UDRP ¶ 4(a)(ii)); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”). The Panel finds that Respondent’s willingness to sell the <clipsal.us> domain name is evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s offer to sell the domain name is evidence of its bad faith registration and use of the domain name. After contacting Respondent requesting the transfer of the <clipsal.us> domain name, Complainant was met with Respondent’s refusal to transfer the domain name without payment. Therefore, the Panel finds that Respondent’s offer for the sale of the disputed domain name is evidence that Respondent registered and is using the <clipsal.us> domain name in bad faith under Policy ¶ 4(b)(i). See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent’s requests for money as well as advice from professors at the complainant’s university in exchange for transferring the disputed domain name suggested bad faith registration and use under Policy ¶ 4(b)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under [UDRP] ¶ 4(b)(i).”).
Complainant argues that Respondent registered and used the <clipsal.us> domain name to prevent Complainant from reflecting its mark in the disputed domain name. The panels in Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005), and Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003), held that the registration and use of a disputed domain name to prevent the complainant from reflecting its mark in the domain names demonstrates the respondent’s bad faith. Complainant provides the Panel with evidence of a prior UDRP proceeding between Complainant and Respondent in which three disputed domain names, <clipsal.biz>, <clipsal.info>, and <clipsal.org>, incorporating the CLIPSAL mark were order to be transferred from Respondent to Complainant. See Clipsal Australia Pty. Ltd. v. DIGITCOM Technology, D2010-1800 (WIPO December 16, 2010). Respondent’s registration and use of multiple domain names which incorporate Complainant indicates to the Panel that Respondent’s intent is to hinder Complainant’s ability to reflect its registration and use of domain names which include its mark. Therefore, the Panel finds that Respondent’s bad faith registration and use of the <clipsal.us> domain name is evidenced by Respondent’s attempt to prevent Complainant from reflecting its mark in the <clipsal.us> domain name pursuant to Policy ¶ 4(b)(ii).
Complainant argues also that the disputed domain name’s bad faith registration and use is evidenced by the fact that the <clipsal.us> domain name is disruptive to Complainant’s business conducted under the CLIPSAL mark. The disputed domain name is identical to the CLIPSAL mark. Therefore, when Internet users search for Complainant there is a high likelihood that they will instead find Respondent, especially those Internet users who reside in the country the disputed domain name’s ccTLD is associated with, the United States of America. Given this redirection of Internet traffic, Complainant’s business is met with a lower threshold of Internet traffic. Thus, the Panel finds that Respondent’s registration and use of the <clipsal.us> domain name to sell its own products as well as Complainant’s products and third-party competing products is disruptive pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also 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 [UDRP] ¶ 4(b)(iii).”).
Complainant argues also that the bad faith registration and use of the <clipsal.us> domain name is demonstrated by Respondent’s intent to profit from the confusion created concerning the source, sponsorship, or affiliation of the disputed domain name. Panels have previously held that bad faith is clear where an identical or confusingly similar domain name is used to sell competing products from Respondent and third parties as well as those of Complainant’s. See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under UDRP ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods). The disputed domain name is identical to Complainant’s CLIPSAL mark. Upon entering the <clipsal.us> domain name’s resolving website Internet users are faced with products for sale that either appear to be genuine products of Complainant’s or similar products. The assumption will likely be that Complainant has expanded its product base rather than jumping to another entity infringing upon Complainant, which is the reality. Respondent will profit from the sale of the products it offers on the <clipsal.us> domain name’s resolving website. Given Internet users’ presumption that they are at Complainant’s actual website, many Internet users will likely purchase goods from Respondent. Therefore, the Panel finds that Respondent’s registration and use of the <clipsal.us> domain name is a result of the anticipated profitability of creating confusion as to the source, sponsorship, or affiliation of the <clipsal.us> domain name pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the CLIPSAL mark. Complainant argues that it is well known in the electrical industry and that Respondent, as a seller of competing goods, must have been aware of Complainant and Complainant’s rights in the CLIPSAL mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because the Panel finds Respondent had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clipsal.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 6, 2012
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