national arbitration forum

 

DECISION

 

The Timken Company v. Direct Privacy ID 25682

Claim Number: FA1202001431873

 

PARTIES

Complainant is The Timken Company (“Complainant”), represented by Hansal N Patel of The Timken Company, Ohio, USA.  Respondent is Direct Privacy ID 25682 (“Respondent”), Louisiana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <timkenindia.com>, registered with directNIC, Ltd.

 

PANEL

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.

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2012; the National Arbitration Forum received payment on February 28, 2012.

 

On February 28, 2012, directNIC, Ltd. confirmed by e-mail to the National Arbitration Forum that the <timkenindia.com> domain name is registered with directNIC, Ltd. and that Respondent is the current registrant of the name.  directNIC, Ltd. has verified that Respondent is bound by the directNIC, Ltd. 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 March 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 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@timkenindia.com.  Also on March 2, 2012, 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 April 4, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant makes the following contentions:

a)    Complainant has rights in the TIMKEN mark which it uses in connection with the manufacture and sale of bearings, steel, and a variety of vehicle parts and additional goods and services;

b)    Complainant has registered the TIMKEN mark (e.g., Reg. No. 517,520 registered November 8, 1949) multiple times through the United States Patent and Trademark Office (“USPTO”);

c)    Complainant has registered the TIMKEN mark (e.g., Reg. No. 164,079 registered May 8, 1954) multiple times through the India Controller General of Patent Designs and Trademarks (“CGPDTM”);

d)    Respondent registered the <timkenindia.com> domain name on February 5, 2006;

e)    Respondent is not commonly known by the <timkenindia.com> domain name;

f)     The <timkenindia.com> domain name resolves to a website which displays links to competing and non-competing goods and services;

g)    Respondent registered and is using the <timkenindia.com> domain name in order to take commercial advantage of Internet users’ mistakes regarding the source of the disputed domain name.

 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

 

1.    Complainant is a well-known United States company engaged in the manufacture and sale of bearings, steel and ancillary products and has been doing so under the name TIMKEN since 1899.

2.    Complainant has registered the TIMKEN mark (e.g., Reg. No. 517,520 registered November 8, 1949) multiple times through the United States Patent and Trademark Office (“USPTO”);

3.    Complainant has  registered the TIMKEN mark (e.g., Reg. No. 164,079 registered May 8, 1954) multiple times through the India Controller General of Patent Designs and Trademarks (“CGPDTM”);

4.    Respondent registered the <timkenindia.com> domain name on February 5, 2006 and it resolves to a website which displays a series of advertisements for competing brands of bearings and other non-competing goods. Respondent by inference receives click-through fees for each such use of that site by an Internet user.

 

 

DISCUSSION

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.

 

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant alleges that it has rights in the TIMKEN mark. Complainant provides evidence that the Panel accepts that it has multiple registrations for the TIMKEN mark (e.g., Reg. No. 517,520 registered November 8, 1949) through the USPTO. Complainant further asserts that it has registered the TIMKEN mark (e.g., Reg. No. 164,079 registered May 8, 1954) multiple times through the India CGPDTM. The latter fact is, of course, important as the terms of the disputed domain name suggests that it will be used in India or that it will be specifically directed to Indian commercial and industrial interests. Panels have found that the registration of a mark with a trademark authority is evidence of rights in the mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Therefore, the Panel finds that Complainant has rights in the TIMKEN mark pursuant to Policy ¶ 4(a)(i).

 

Complainant  then argues that Respondent’s <timkenindia.com> domain name is confusingly similar to Complainant’s mark. The Panel finds that Respondent’s addition of the geographic term “india” fails to distinguish the disputed domain name from the TIMKEN mark and, indeed, may have the effect of enhancing its confusing similarity, as internet users would be more likely than not to assume that it was an official domain name of Complainant directed at Indian interests. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part). The Panel also finds that Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to a Policy ¶ 4(a) (i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a) (i) analysis.”). As the Panel finds that Respondent’s addition of a geographic term and gTLD is insufficient to render the domain name distinct from Complainant’s mark, the Panel also finds that the <timkenindia.com> domain name is confusingly similar to Complainant’s TIMKEN mark.

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

 

It is now well established that 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.”).

 

Applying that principle, the Panel finds that Complainant has made out a prima        facie case as required. The prima facie case is based on the following           considerations:

 

(a)  Respondent has chosen as its domain name Complainant’s well-known and established TIMKEN mark and embodied the whole of the mark into the domain name, adding only the geographic term “india” , which may well make the domain  name more confusingly similar to Complainant’s mark than it would have been without the addition and also the  generic Top Level Domain “.com”;

 

(b) Respondent has then used the domain name to resolve to a website which displays a series of advertisements for competing brands of bearings, the products for which Complainant has been famous for so many years and also non-competing goods. Respondent presumably receives click-through fees for each such use by an Internet user. Respondent’s unauthorized use of Complainant’s TIMKEN mark in the disputed domain name is clearly an attempt to benefit commercially from this unauthorized use of Complainant’s trademark.

 

(c) The use of Complainant’s trademark by Respondent in the manner just described was entirely without the knowledge or approval of Complainant.

 

(d) Complainant also argues that Respondent is not commonly known by the <timkenindia.com> domain name. Complainant provides evidence that the Panel accepts that the WHOIS record for the <timkenindia.com> domain name lists “Direct Privacy ID 25682” as the domain name registrant. Additionally, Complainant asserts that Respondent does not own any trademark registrations reflecting the <timkenindia.com> domain name and has not acquired licensing or permission from Complainant to use the <timkenindia.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the <timkenindia.com> domain name pursuant to Policy ¶ 4(c) (ii). 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 Policy ¶ 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).

 

(e) Complainant also argues that Respondent’s use of the disputed domain name does not confer upon Respondent rights or legitimate interests in the <timkenindia.com> domain name. Complainant argues that the <timkenindia.com> domain name resolves to a website which displays links to competing and non-competing goods and services under heading such as “Last Minute Cruise Deals” and “Roller Bearings.” Panels have found that the display of links on a disputed domain name’s resolving website is not a Policy ¶¶ 4(c) (i) and 4(c) (iii) protected use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). As such, the Panel finds that Respondent’s use of the <timkenindia.com> domain name to display competing and non-competing links is neither a Policy ¶ 4(c) (i) bona fide offering of goods or services nor a Policy ¶ 4(c) (iii) legitimate noncommercial or fair use.

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

 

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has also been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant relies on Policy ¶ 4(b) (iv) and the Panel finds that the domain name has been registered and used in bad faith within the meaning of that provision. Complainant argues that Respondent registered and is using the disputed domain name in bad faith. Complainant asserts that Respondent intended to take commercial advantage of Internet users’ mistakes as to the source of the disputed domain name due to confusion created by Respondent regarding whether Complainant is affiliated with the <timkenindia.com> domain name.  Complainant contends that Respondent is using the TIMKEN mark in its domain name to attract Internet users to its own website and then uses the competing links on its website to profit from Internet traffic clicking through the links instead of attempting to find Complainant.  Complainant contends that because the confusion caused creates an implication that Complainant is affiliated with the <timkenindia.com> domain name that the domain name was registered and is being used in bad faith. The Panel agrees with this submission and finds bad faith on the basis that Respondent registered and is using the disputed domain name in order to take commercial advantage of Internet users’ mistakes regarding confusion Respondent created over the source of the <timkenindia.com> domain name under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b) (iv).”).

 

Secondly, having regard to the totality of the evidence, the submissions of Complainant and the fact that Respondent has not given any explanation for using Complainant’s trademark in its domain name without permission and setting up a patently false website under Complainant’s TIMKEN mark, the Panel finds that Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <timkenindia.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  April 9, 2012

 

 

 

 

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