Altec Industries, Inc. v. Skyco Equipment Inc / Tim Lamb
Claim Number: FA1203001436792
Complainant is Altec Industries, Inc. (“Complainant”), represented by Morris W. Richardson of Richardson Clement PC, Alabama, USA. Respondent is Skyco Equipment Inc / Tim Lamb (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <altecdiggerderrick.com> and <altecdiggerderricks.com>, registered with GKG.NET, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2012; the National Arbitration Forum received payment on March 30, 2012.
On March 28, 2012, GKG.NET, Inc. confirmed by e-mail to the National Arbitration Forum that the <altecdiggerderrick.com> and <altecdiggerderricks.com> domain names are registered with GKG.NET, Inc. and that Respondent is the current registrant of the names. GKG.NET, Inc. has verified that Respondent is bound by the GKG.NET, 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 April 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 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@altecdiggerderrick.com, postmaster@altecdiggerderricks.com. Also on April 5, 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 May 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant owns trademark registrations for its ALTEC mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 849,304 registered May 21, 1968).
“ALTEC” is a strong, fanciful mark, which was developed as an acrostic from “Alabama Truck Equipment Company,” which has no meaning in-and-of-itself. The disputed domain names contain the “ALTEC” mark in its entirety, merely adding the generic terms “digger derrick” and “digger derricks” and the generic top-level domain (“gTLD”) “.com.”
Complainant uses the ALTEC mark in connection with service truck bodies combined with aerial buckets, derricks, winches, hydraulic auger units, diggers, jacks, and components thereof that are used in the construction, telecommunications, and utility industries.
The disputed domain names do not resolve to an active website.
Respondent’s disputed domain names are confusingly similar to Complainant’s ALTEC mark.
Respondent is not commonly known by the disputed domain name and is not making a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name.
Respondent registered the disputed domain names for the purpose of selling, renting, or otherwise transferring the domain name to Complainant or a competitor of Complainant’s.
Respondent’s failure to make active use of the disputed domain names constitutes bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant had, and has, trademark rights in its ALTEC mark at all times relevant to this proceeding.
The at-issue domain name is confusingly similar to Complainant’s ALTEC trademark.
Respondent has no rights or interests in respect of the domain name.
The domain name was registered to impermissibly capitalize on the ALTEC trademark.
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.
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.”).
Each of the at-issue domain names is confusingly similar to a trademark in which the Complainant has rights.
Complainant establishes trademark rights in its ALTEC mark by evidencing several relevant trademark registrations with the USPTO (e.g., Reg. No.: 849,304 registered May 21, 1968). Thereby Complainant establishes rights in its ALTEC mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The at-issue domain names differs from Complainant’s mark only by the addition of the generic term “digger” and “derrick” or “derricks,” and the generic top-level domain (“gTLD”) “.com” to the ALTEC trademark. It is well settled that the addition of a descriptive term to a trademark is generally insufficient to materially distinguish a domain name for the purposes of Policy 4(a)(i). See i.e. Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000), and Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001). This is especially true here where the added term describes Complainant’s products. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum, June 7, 2004) (finding respondent’s “amextravel.com” domain name confusingly similar to a complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Likewise, the addition of the gTLD ,here “.com,” necessary to properly form a domain name is likewise immaterial for the purposes of 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.”)
Therefore, the Panel concludes that Respondent’s <altecdiggerderrick.com> and <altecdiggerderricks.com> domain names are each confusingly similar to Complainant’s ALTEC mark under Policy ¶ 4(a)(i).
Respondent lacks rights and interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of his rights and legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent has failed to submit a response, if Complainant makes out a prima facie case it will conclusively show that Respondent lacks rights and interests under Policy ¶4(a)(ii).
Respondent is not commonly known by either <altecdiggerderrick.com> or <altecdiggerderricks.com> . WHOIS information identifies “Skyco Equipment Inc.” as the registrant of the disputed domain names. The nominal registrant is thus not similar to either disputed domain name and there is no evidence in support of a “commonly-known-by” finding. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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). Therefore, Respondent is not commonly known by either of the at-issue domain names under Policy ¶ 4(c)(ii).
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Respondent has made no demonstrable preparation to use the at-issue domain names. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Here, Respondent has not established an active website at either of the disputed domain names. Respondent thus fails to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the dispute domain names under Policy ¶ 4(c)(iii).
The evidence presented by Complainant is well sufficient to make out a prima facie case under Policy ¶4(a)(ii). Since there is no evidence tending to prove that Respondent has rights and legitimate interest in respect of the at-issue domain name, Complainant’s prima facie case is conclusive.
Respondent’s intent to sell its at-issue domain names may be inferred from Respondent’s failure to actively use the domain name. See Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere failure to make an active use of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale). Since Respondent is not making an active use of the disputed domain names there is an implication that Respondent registered the at-issue domain names for the purpose of selling them thereby indicating bad faith pursuant to Policy ¶ 4(b)(i).
Policy ¶ 4(b) is not an exclusive list of examples of bad faith registration and use of a contested domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Independent of the implication discussed above inactivity may in and of itself indicate bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). Respondent registered the disputed domain names in April of 2008 and to date has yet to make active use of the disputed domain names. While this Panel is not convinced that the inactivity of a confusingly similar domain name, without more, suggests bad faith, where, as here, there is no explanation by Respondent suggesting a good faith use of the at-issue domain names, and no response whatsoever to Complainant’s claims of bad faith, Respondent admits by its silence to Complainant’s claims. Thus, under the particular circumstances of the instant case Respondent’s failure to make active use of the disputed domain names without explanation evidences bad faith under 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 <altecdiggerderrick.com>, <altecdiggerderricks.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 4, 2012
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