Dayton Electric Manufacturing Co. v. benjamin tan
Claim Number: FA1204001439242
Complainant is Dayton Electric Manufacturing Co. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is benjamin tan (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <speedairevolution.com> and <speedaircompressor.com>, registered with GoDaddy.com, Inc..
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2012; the National Arbitration Forum received payment on April 18, 2012.
On April 13, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <speedairevolution.com> and <speedaircompressor.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 April 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 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@speedairevolution.com and postmaster@speedaircompressor.com. Also on April 19, 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 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <<speedairevolution.com> and <speedaircompressor.com> domain names, the domain names at issue, are confusingly similar to Complainant’s SPEEDAIRE mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding although he did submit correspondence to the Forum including email exchanges with counsel for Complainant. The Panel finds that such correspondence does not rise to the level of a Response, and this case proceeds on the basis that Respondent has defaulted.
Complainant is the owner of the distinctive and well known SPEEDAIRE trademark for its air compressors and pressure regulators which was first used in commerce in 1949 (the “Mark”). Complainant owns trademark registrations for its SPEEDAIRE mark with trademark authorities around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 562,271 registered July 29, 1952), the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA228,044 registered May 26, 1978), and Egypt’s Trademark and Industrial Designs Office (“TIDO”) (Reg. No. 155,013 registered May 7, 2009).
Complainant has not licensed or otherwise authorized Respondent to use its trademark and Respondent is not commonly known by the domain names at issue. The domain names at issue were both registered by Respondent on February 29, 2012. Respondent’s intention in such registrations was to earn money from click-through fees by persons mistaking his site for the genuine article.
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.”).
Complainant owns USPTO trademark registrations for its SPEEDAIRE mark (e.g., Reg. No. 562,271 registered July 29, 1952) and registrations with the CIPO (Reg. No. TMA228,044 registered May 26, 1978) and TIDO (Reg. No. 155,013 registered May 7, 2009). In Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), and Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005), the panels determined that a complainant’s holdings of numerous trademark registrations around the world established the complainant’s rights in a mark. In Williams-Sonoma, Inc. v. Fees, FA937704 (Nat. Arb. Forum Apr. 25, 2007), and Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), the panels determined that a complainant does not need to have registered its mark in the country where a respondent resides in order to hold rights in the mark. The Panel therefore finds that Complainant’s numerous trademark registrations throughout the world establish Complainant’s rights in the SPEEDAIRE mark under Policy ¶ 4(a)(i).
The <speedairevolution.com> and <speedaircompressor.com> domain names are confusingly similar to Complainant’s SPEEDAIRE mark. The disputed domain names contain Complainant’s entire mark, omitting the letter “e” and adding the generic term “evolution” or the descriptive term “compressor.” In Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), the panel found that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive. Similarly, the panel in Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000), found that misspelling words or adding letters to words does not create a distinct mark but instead renders the domain name confusingly similar to the complainant’s mark. In addition, in Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), the panel found confusing similarity where the domain name contained the identical mark of the complainant combined with a generic word or term. Likewise, the panel in Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) found that the mere addition of a generic or descriptive word to a registered mark does not negate a finding of confusing similarity. The disputed domain names contain the generic top-level domain (“gTLD”) “.com.” The addition of the gTLD “.com” does not adequately distinguish a disputed domain name from a mark, as established in Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002). Accordingly, Respondent’s <speedairevolution.com> and <speedaircompressor.com> domain names are confusingly similar to Complainant’s SPEEDAIRE mark.
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the disputed domain names. The WHOIS information identifies “benjamin tan” as the registrant of the disputed domain names. Respondent does not operate a legitimate business or other organization in connection with the disputed domain names. Respondent failed to submit a Response to the argument that it is not commonly known by the disputed domain names. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), concluded that a respondent is not commonly known by the disputed domain names where the WHOIS information and all other information in the record gave no indication that the respondent is commonly known by the disputed domain names. Furthermore, the panel in Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007), found that a respondent was not commonly known by the disputed domain name based on all the evidence in the record and the fact that the respondent did not counter the argument in its response.
Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s <speedairevolution.com> and <speedaircompressor.com> domain names resolve to a site displaying pay-per-click links that divert Internet users to sites that are associated with Complainant’s competitors or that are unrelated to Complainant. The panel in Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), held 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). Similarly, in Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), the panel found 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). The Panel therefore finds that Respondent is not using the <speedairevolution.com> and <speedaircompressor.com> domain names for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has demonstrated a pattern of bad faith registration with Complainant’s SPEEDAIRE mark. In Dayton Electric Manufacturing Co v. benjamin tan, FA 1425083 (Nat. Arb. Forum Feb. 24, 2012), Respondent was ordered to transfer the domain name <speedaireaircompressor.com> to Complainant. The panel in Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006), found bad faith registration where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants. Furthermore, the panel in Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000), found that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks. From the results of a reverse WHOIS search, it appears that Respondent is the registrant of a number of other third-party domain names (e.g., <nikewomensshoes.com>, <mensbulovawatches.com>, <menstimexwatch.com>, etc.). These domain names provide further evidence of a pattern of bad faith registrations.
Respondent is using the disputed domain names to attract Internet users for commercial gain by using a confusingly similar domain name. Respondent receives compensation when Internet users click on one of the links at the resolving websites because the links redirect Internet users to Complainant’s competitors or to websites unrelated to Complainant. Respondent commercially gains from Internet users’ confusion and therefore registered the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel found evidence of bad faith because the disputed domain name provided links to the complainant’s competitors and the respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’ In addition, the panel in Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), found bad faith when the respondent used the disputed domain name to operate a website featuring links to competing and non-competing commercial websites from which the respondent presumably received a referral fee.
Respondent had actual and/or constructive knowledge of Complainant's rights in the SPEEDAIRE mark because Respondent was recently subject to a UDRP proceeding regarding the same mark and because Respondent has the SPEEDAIRE mark spelled correctly throughout the disputed domain names. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, Respondent had actual knowledge of Complainant's mark and rights and registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <speedairevolution.com> and <speedaircompressor.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 21, 2012
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