Textron Innovations Inc. v. Apple International Inc Ltd / Richard Harper
Claim Number: FA1202001431584
Complainant is Textron Innovations Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, P.L.C., Virginia, USA. Respondent is Apple International Inc Ltd / Richard Harper (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <206bell.com>, registered with Advantage Interactive Ltd.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 27, 2012; the National Arbitration Forum received payment February 27, 2012.
On March 12, 2012, Advantage Interactive Ltd confirmed by e-mail to the National Arbitration Forum that the <206bell.com> domain name is registered with Advantage Interactive Ltd and that Respondent is the current registrant of the name. Advantage Interactive Ltd verified that Respondent is bound by the Advantage Interactive Ltd registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 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@206bell.com. Also on March 14, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 alleges the following in this proceeding:
1. Complainant owns rights in the BELL mark via its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 937,437 registered July 11, 1972).
2. Complainant owns rights in the 206 mark via its registration with the USPTO (Reg. No. 1,598,482 registered May 29, 1990).
3. Complainant’s business involves designing and constructing commercial helicopters under the Bell Helicopter name, including the BELL 206 helicopter.
4. Respondent registered the <206bell.com> domain name March 2, 2006.
5. Respondent’s domain name resolves to a website that purports to sell parts and services for the BELL 206 helicopter but instead sells competitors’ equipment.
6. Respondent’s is not licensed or permitted to use the BELL mark in relation to goods, services, or domain names incorporating the mark.
7. Respondent was fully aware of Complainant’s rights in the BELL and 206 marks before it registered the <206bell.com> domain name.
Complainant established rights by virtue of legal registration in the two marks that are contained within the disputed domain name that Respondent registered.
The disputed domain name is confusingly similar to the Complainant’s two marks that are contained within it.
Respondent has no rights to or legitimate interests in the disputed domain name or the marks contained within it.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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 two trademarks 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.
Given 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 will draw such inferences as the Panel 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.”).
Complainant claims rights in the BELL mark through its registration of the mark with the USPTO (Reg. No. 937,437 registered July 11, 1972). Complainant also claims rights in the 206 mark by its registration of the mark with the USPTO (Reg. No. 1,598,482 registered May 29, 1990). A complainant’s registration of its mark with the USPTO demonstrates Complainant’s rights in the mark. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006), and Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006). Further, it is immaterial whether the complainant has its mark registered in the country where the respondent resides and operates. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), and Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007). The Panel finds that Complainant has rights and legitimate interests pursuant to Policy ¶ 4(a)(i) in both the BELL and the 206 marks by registration of the marks with the USPTO and Respondent’s location outside the U.S. has no effect on those rights. Complainant is not required to register its marks in Respondent’s jurisdiction.
Complainant asserts that the <206bell.com> domain name is confusingly similar to its BELL and 206 marks. Complainant contends that by combining the two marks into one domain name, the combination of the marks does not amount to a distinguishably different domain name. The Panel finds that confusing similarity exists where the respondent combined two of complainant’s marks in one domain name. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000); Combining Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007). Combining “industry-specific” words into one domain name renders the domain name confusingly similar. See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002). The Panel notes that by combining two of Complainant’s marks, as well as adding the generic top-level domain (“gTLD”) “.com,” Respondent’s disputed domain name is confusingly similar to the BELL and 206 marks under Policy ¶ 4(a)(i). 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.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to two marks in which Complainant has rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
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 of proof shifts to Respondent to show that it does have such 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 urges that no evidence indicates that Respondent is commonly known by the <206bell.com> domain name. Complainant also asserts that Respondent does not operate a business under the domain name. A respondent fails to demonstrate rights and legitimate interests in a domain name when it does not submit any evidence to show that it is commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006). The Panel finds that because no evidence supports any inference that Respondent is commonly known by the <206bell.com> domain name, Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent’s use of the <206bell.com> domain name is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use. Complainant also notes that Complainant has not given Respondent a license or permission to use the BELL or 206 marks in any way and has not authorized Respondent to distribute or resell Complainant’s goods or services. Complainant contends that Respondent’s resolving website does not contain a disclosure that accurately and prominently discloses its affiliation or lack of affiliation with Complainant and that the website uses the BELL logo to promote competitors’ goods. The Panel finds that Respondent’s use of the disputed domain name to sell products similar to but in competition with Complainant’s products 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant urges that Respondent uses the <206bell.com> domain name to attract users to its website, which results in commercial gain for Respondent. Complainant alleges that the domain name confuses Internet users as to the sponsorship and affiliation with Complainant’s business, which amounts to bad faith registration and use. Using the complainant’s mark to divert customers to its own competing business, the respondent is diverting Internet traffic in bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), Further, in Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006), the panel found bad faith where the respondent registered and used a domain name in bad faith by diverting Internet users to the respondent’s competing website. The Panel finds that by using a confusingly similar domain name to attract Complainant’s consumers to its own site to sell competing products, Respondent registered and used the <206bell.com> domain name in bad faith, pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that Respondent was “fully aware of the existence of Complainant and its BELL and 206 marks” when it registered the disputed domain name. Given the name chosen and the use, the Panel finds that Respondent had actual notice of Complainant’s rights in the marks based on the evidence provided and finds that Respondent’s registration and use of the domain name amounts to bad faith under Policy ¶ 4(a)(iii). See 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); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <206bell.com> domain name BE TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Date: April 30, 2012.
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