national arbitration forum

 

DECISION

 

Pacific Performance Engineering v. Tim Mullit

Claim Number: FA1206001447987

 

PARTIES

Complainant is Pacific Performance Engineering (“Complainant”), represented by Eric Menhart of Lexero Law, Washington, D.C., USA.  Respondent is Tim Mullit (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ppediesel.org>, registered with Internet.bs Corp.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2012; the National Arbitration Forum received payment on June 8, 2012.

 

On June 14, 2012, Internet.bs Corp confirmed by e-mail to the National Arbitration Forum that the <ppediesel.org> domain name is registered with Internet.bs Corp and that Respondent is the current registrant of the name.  Internet.bs Corp has verified that Respondent is bound by the Internet.bs Corp 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 June 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@ppediesel.org.  Also on June 15, 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 July 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 makes the following assertions:

 

1.    Respondent’s <ppediesel.org> domain name is confusingly similar to Complainant’s PPEDIESEL mark.

 

2.    Respondent does not have any rights or legitimate interests in the <ppediesel.org> domain name.

 

3.    Respondent registered and used the <ppediesel.org> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has common law rights in the PPEDIESEL mark, which has used in connection with diesel products for six years. 

 

Respondent registered the <ppediesel.org> domain name on March 28, 2012, and uses it to resolve to a website marketing diesel products identical to those Complainant offers.

 

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.

 

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

 

Past panels have held that the registration of a trademark is unnecessary for a finding of rights in a mark.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).  The Panel will consider all other evidence of rights that Complainant presents to determine whether Complainant has common law rights in the PPEDIESEL mark under Policy ¶ 4(a)(i).

 

Complainant contends that it has common law rights in the PPEDIESEL mark.  Complainant argues that it registered and has been operating the <ppediesel.com> domain name for over six years, during which Complainant claims it acquired a good reputation as a source for the goods and services provided in the diesel products industry.  Complainant contends that it has heavily advertised its services to the public, including through Facebook and Twitter, and by posting videos about products and services on Complainant’s YouTube channel, and in advertisements in print media.  Complainant provides evidence of its uses of the mark on brochures, business cards, calendars, holiday cards, gift certificates, post cards, and Complainant’s products.  Complainant states that its goods and services are promoted by authorized retailers, and that it regularly issues press releases about its products and services.  Based on Complainant’s supporting evidence, the Panel finds that Complainant’s continuous and ongoing use of the PPEDIESEL mark gives Complainant rights in the mark under Policy ¶ 4(a)(i).  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

 

Respondent’s <ppediesel.org> domain name is identical to Complainant’s PPEDIESEL mark, but for the addition of the generic top-level domain (“gTLD”) “.org,” which fails to differentiate the disputed domain name from the mark.  See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark).  Therefore, the Panel finds that Respondent’s <ppediesel.org> domain name is identical to Complainant’s PPEDIESEL mark under Policy ¶ 4(a)(i).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).

 

Complainant argues that Respondent is not commonly known by the <ppediesel.org> domain name.  The WHOIS record for the <ppediesel.org> domain name lists the domain name registrant as “Tim Mullit,” which the Panel finds is not similar to the disputed domain name.  Complainant states that it is unaware of any use of the PPEDIESEL mark that references Respondent. Therefore, the Panel finds that Respondent is not commonly known by the <ppediesel.org> 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).

 

Complainant contends that the <ppediesel.org> domain name resolves to a website that offers Internet users diesel products in competition with the diesel products that Complainant provides.  Previous panels have found that the use of a disputed domain name to offer goods or services in competition with the complainant does not establish rights or legitimate interests under Policy ¶¶ 4(c)(i) and 4(c)(iii).  See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Therefore, the Panel finds that Respondent’s use of the <ppediesel.org> domain name to sell competing diesel products 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.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s <ppediesel.org> domain name resolves to a website that markets diesel products in direct competition with Complainant.  Respondent attempts to trade on the PPEDIESEL mark by using an identical domain name and offering identical products for sale.  The Panel finds that Respondent is intentionally attempting to take commercial advantage of Internet user’s confusion which amounts to bad faith registration and use of the <ppediesel.org> domain name pursuant to Policy ¶ 4(b)(iv).  See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).

 

Complainant argues that Respondent's registration of an identical domain name and offering of products identical to Complainant's own products at the resolving website indicate that Respondent had actual knowledge of Complainant's mark and rights.  The Panel agrees and finds that Respondent had actual knowledge of Complainant's mark and registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  See 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 Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <ppediesel.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  July 18, 2012

 

 

 

 

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