C&D Technologies, Inc. v. NA / Domain Admin
Claim Number: FA1201001426975
Complainant is C&D Technologies, Inc. (“Complainant”), represented by Kevin R. Casey of Stradley, Ronon, Stevens & Young, LLP, Pennsylvania, USA. Respondent is NA / Domain Admin (“Respondent”), represented by Josh Klein, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cdtechnologies.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Héctor Ariel Manoff as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2012; the National Arbitration Forum received payment on February 2, 2012.
On January 30, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <cdtechnologies.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2012 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@cdtechnologies.com. Also on February 7, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 28, 2012.
On March 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Héctor Ariel Manoff as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns C&D TECHNOLOGIES, US Trademark, Registration No. 2,204,400. It was filed on January 13, 1997 and registered in 1998.
2. Complainant argues that it uses the trademark C&D TECHNOLOGIES in connection with commercialization of industrial batteries, battery chargers, electrical power supplies, power converters, and components parts thereof as early as February of 1998.
3. Complainant asserts that Respondent registered the domain name <cdtechnologies.com> on December 23, 2009.
4. Complainant argues that Respondent does not have any rights or legitimate interests in the domain name as it is not a holder of a trademark for CD TECHNOLOGIES and is not an authorized dealer, distributor, or licensee of Complainant’s trademark.
5. Complainant asserts that the web site operated under the domain name in dispute provided a series of advertisements directed to batteries and related products.
6. Complainant argues that Respondent does not appear to use the domain name in dispute for any legitimate web site or other marketing that would not be considered confusing with the Complainant’s business.
7. Complainant asserts that Respondent does not appear to use the domain name in dispute for any bona fide offering of any goods or services that would not be considered confusing with the Complainant’s business.
8. Complainant argues that on December 2, 2011, Respondent deactivated the website operated under the domain in dispute.
9. Complainant asserts that Respondent has registered the domain name to mislead or divert consumers or to otherwise tarnish the goodwill and trademarks of Complainant, and to prevent it from using and reflecting its trademark in legitimate domain name form.
10. Complainant argues that Respondent has registered the domain name to attract consumers, potentially for commercial gain, to Respondent’s website, by creating a likelihood of confusion with Complainant’s trademark.
B. Respondent
1. Respondent argues that the domain name in dispute is not identical or confusingly similar to Complainant’s trademark.
2. Respondent asserts that there is not a registered trademark CD TECHNOLOGIES in USPTO.
3. Respondent argues that CD is the symbol and the widely used abbreviation for the chemical element “Cadmium”, which is an important material used for battery manufacture.
4. Respondent asserts that CD TECHNOLOGIES is a generic term for battery related products and that it is unlikely that the Complainant could have acquired trademark rights on it.
5. Respondent argues that it has rights and legitimate interests in the domain name.
6. Respondent argues that the first to register a domain name (on which no other party can claim exclusive rights) has a legitimate interest in it.
7. Respondent asserts that it uses the domain name to provide general information about “Cadmium (CD) Technologies” and that the battery-related links posted on its website are merely related to the descriptive meaning of the generic term “Cadmium”.
8. Respondent argues that the domain name has been registered and used in good faith since it had no knowledge of Complainant’s business or trademark and did not register it to sell it to the Complainant.
9. Respondent asserts that it did not prevent Complainant from using and reflecting its trademark in legitimate domain name form since Complainant could use “CandDTechnologies.com”, which is the exact trademark.
10. Respondent argues that there is no likelihood of confusion resulting from the Respondent’s use of the domain in dispute.
Complainant owns and uses the trademark C&D TECHNOLOGIES in connection with the commercialization of industrial batteries, battery chargers, electrical power supplies, power converters, and components parts thereof as early as February of 1998 and has registered that mark in the United States.
Respondent registered the <cdtechnologies.com> domain name on December 23, 2009. Furthermore, by October 26, 2011, the disputed domain name resolved to a website which provided a series of advertisements directed to batteries and related products in direct competition with Complainant.
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 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.
This Panel finds that Complainant has submitted sufficient evidence to establish rights in the C&D TECHNOLOGIES mark under Policy ¶ 4(a)(i), based on the Trademark Certificate attesting the registration with the United States Patent and Trademark Office ("USPTO") for the C&D TECHNOLOGIES mark (Reg. No. 2,204,400 registered November 17, 1998). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
This Panel finds that the disputed domain name <cdtechnologies.com> is almost identical to the Complainant’s trademark C&D TECHNOLOGIES since the Respondent has only removed the ampersand symbol and the space between the terms of the mark, while adding the generic top-level domain (“gTLD”) “.com”. This Panel agrees with prior decisions which have determined that such changes are not sufficient to render a domain name distinct from an asserted trademark under Policy ¶ 4(a)(i) and especially pointing out that the ampersand symbol cannot be included in a domain name. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name); 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 Policy ¶ 4(a)(i)).
Before the burden shifts to Respondent to show it does have rights or legitimate interests in the disputed domain name, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in such domain name. 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.”). The Panel finds that Complainant has produced a prima facie case because it provided evidence of its trademark rights in a mark which is confusingly similar to the disputed domain name and it has also contended that Respondent is not known by such name.
Complainant asserts that Respondent is not an authorized dealer, distributor, or licensee of Complainant’s trademark. In addition, the domain name in dispute was registered by “NA Domain Admin.” This Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant submitted evidence to prove that by October 26, 2011, the Respondent used the disputed domain name to host a website featuring third-party links to competing battery manufacturers. This Panel finds that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(i) and ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
On the contrary, this Panel finds that Respondent has not submitted any evidence to show that that it is making a bona fide offering of goods. Thus, the Panel determines that Respondent has failed to furnish sufficient evidence to rebut Complainant’s prima facie case.
As reasoned above, the Panel finds that Complainant has proven that Respondent has no rights or legitimate interests in the disputed domain name.
This Panel finds that Complainant submitted sufficient evidence to prove that Respondent used the <cdtechnologies.com> domain name to resolve to a website hosting pay-per-click links to competing battery providers and products, and that it leads to a bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
This Panel also finds that Respondent’s use of the disputed domain name to host a links directory full of pay-per-click links to competing companies shows an attempt to attract consumers and confuse them into believing an association exists between Complainant and Respondent with the hopes of profiting via the click-through fees resulting from the pay-per-click links and that it shows bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Moreover this Panel also points out the fact that the WHOIS information identifies the domain name registrant as “NA Domain Admin”. It means that Respondent did not reveal its real name when registering the domain name, which is not consistent with a legitimate use and registration, especially in combination with the use of a website hosting pay-per-click links to competing and products.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cdtechnologies.com> domain name be TRANSFERRED from Respondent to Complainant.
Héctor Ariel Manoff, Panelist
Dated: March 16, 2012
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