Power Integrations, Inc. v. Sergey Petrov and pakdom.com
Claim Number: FA1203001437453
Complainant is Power Integrations, Inc. (“Complainant”), represented by Lisa Greenwald-Swire of Fish & Richardson P.C., California, USA. Respondent is Sergey Petrov and pakdom.com (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <powerintegrations.com>, registered with Paknic (Private) Limited.
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 March 30, 2012; the National Arbitration Forum received payment April 2, 2012.
On April 5, 2012, Paknic (Private) Limited confirmed by e-mail to the National Arbitration Forum that the <powerintegrations.com> domain name is registered with Paknic (Private) Limited and that Respondent is the current registrant of the name. Paknic (Private) Limited verified that Respondent is bound by the Paknic (Private) Limited 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 April 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 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@powerintegrations.com. Also on April 11, 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 May 3, 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.
Respondent did not submit a Response in this proceeding.
Complainant established rights and interests in its mark that is contained in its entirety within the disputed domain name that Respondent registered.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interest in the disputed domain name containing Complainant’s mark.
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 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.
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 contends that it owns rights in its POWER INTEGRATION mark. Complainant claims that Complainant began using the POWER INTEGRATION mark in 1988 in connection with its high-voltage analog integrated circuits. Complainant provides the Panel with evidence that Complainant owns trademark registrations with the USPTO for its POWER INTEGRATION mark (e.g., Reg. No. 1,857,507 registered October 11, 1994). Based on these trademark registrations, the Panel finds that Complainant owns rights in its POWER INTEGRATION mark under Policy ¶ 4(a)(i), irrespective of the fact that Respondent resides or operates in Russia. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant alleges that Respondent’s <powerintegrations.com> domain name is identical to Complainant’s POWER INTEGRATION mark. The Panel finds, however, that the correct analysis is confusing similarity. Complainant correctly claims, however, that the addition of a generic top-level domain (“gTLD”) “.com” is not relevant to this analysis and does not serve to distinguish the disputed domain name from Complainant’s mark. The Panel additionally notes that the disputed domain name does not contain the space found in Complainant’s mark and adds the letter “s.” The Panel finds that the removal of a space and the addition of a gTLD and the letter “s” are irrelevant to a Policy ¶ 4(a)(i) analysis because spaces are impermissible in domain names and top-level domains are required. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)); 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)).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent’s <powerintegrations.com> domain name is confusingly similar to Complainant’s POWER INTEGRATION mark; 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 made such a showing here.
Complainant alleges that Respondent is not commonly known by the <powerintegrations.com> domain name. Complainant claims that it never licensed or permitted Respondent to use Complainant’s mark and that Respondent has not contracted with and is not related to Complainant. Complainant argues that the WHOIS information, which lists the registrant of the disputed domain name as “Sergey Petrov and pakdom.com,” indicates that Respondent is not nominally or commonly known by the disputed domain name. The Panel finds that Respondent lacks rights and legitimate interests in the <powerintegrations.com> 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 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 asserts that Respondent’s <powerintegrations.com> domain name resolves to a commercial website that contains sponsored hyperlinks relating to Complainant’s industry, such as “Electronic Component Search,” “High Voltage Power Supply,” and “A Power Supply.” Complainant claims that some of these hyperlinks resolve to Complainant’s competitors. Complainant further argues that Respondent commercially benefits from the resolving websites by receiving click-through fees. Based on these allegations, the Panel finds that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services and it is not making a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <powerintegrations.com> domain name. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. …”).
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 that is confusingly similar to Complainant’s protected mark. Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <powerintegrations.com> domain name in bad faith. The record supports an inference that Respondent uses the domain name to host a commercial website for the purpose of commercially benefiting from a likelihood of confusion as to Complainant’s affiliation with the disputed domain name. Complainant alleges that Respondent’s <powerintegrations.com> domain name creates this confusion. Moreover, Complainant claims that Respondent commercially benefits from this confusion by receiving click-through fees. The Panel finds that Respondent registered and uses the <powerintegrations.com> domain name in bad faith pursuant to 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).”).
Complainant also contends that, given the fame and notoriety of Complainant's POWER INTEGRATION mark, it is inconceivable that Respondent could have registered the <powerintegrations.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel notes that any argument of bad faith based on constructive notice is irrelevant, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Complainant further alleges that Respondent had actual knowledge of Complainant’s mark because Respondent provided competing hyperlinks on the resolving website. The Panel agrees with Complainant that Respondent’s use permits the inference under the evidence that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and, therefor, the Panel finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed 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 <powerintegrations.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 15, 2012.
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