Sensormatic Electronics, LLC v. Pymesdirect
Claim Number: FA1206001448829
Complainant is Sensormatic Electronics, LLC (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Pymesdirect (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sensormatichook.com>, registered with GoDaddy.com, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2012; the National Arbitration Forum received payment on June 20, 2012.
On June 18, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <sensormatichook.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 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@sensormatichook.com. Also on June 22, 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 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
a) Complainant has rights in the SENSORMATIC mark, which it uses in connection with electronic article surveillance equipment such as security tags and removers;
b) Complainant is the owner of registrations with the United States Patent and Trademark Office (“USPTO”) for the SENSORMATIC mark (e.g., Reg. No. 978,557 registered February 12, 1974);
c) The <sensormatichook.com> domain name is confusingly similar to the SENSORMATIC mark;
d) Respondent is not commonly known by the <sensormatichook.com> domain name;
e) The <sensormatichook.com> domain name resolves to a website which sells counterfeit versions of Complainant’s products;
f) Respondent registered and is using the <sensormatichook.com> domain name to attract Internet users to the disputed domain name for commercial gain by creating confusion as to the source of the disputed domain name;
g) Respondent registered the <sensormatichook.com> domain name with constructive and/or actual knowledge of Complainant’s rights in the SENSORMATIC mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its SENSORMATIC mark.
2. Respondent’s <sensormatichook.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the 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 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 contends that Complainant is the owner of USPTO trademark registrations for the SENSORMATIC mark (e.g., Reg. No. 978,557 registered February 12, 1974), which it uses in connection with electronic article surveillance equipment, including security tags and removers. Panels have found that the registration of a mark with a trademark authority is evidence of the complainant’s rights in that 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)). Additionally, panels have held that these rights satisfy the requirements of Policy ¶ 4(a)(i) regardless of the location of the parties to a dispute. See 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). Therefore, the Panel finds that Complainant has rights in the SENSORMATIC mark pursuant to Policy ¶ 4(a)(i).
Complainant next alleges that the <sensormatichook.com> domain name is confusingly similar to the SENSORMATIC mark. The Panel finds that Respondent’s addition of the generic term “hook” to Complainant’s mark does not make the <sensormatichook.com> domain name distinctive from the SENSORMATIC mark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark). The Panel also finds that the addition of the generic top-level domain (“gTLD”) fails to make any substantive differentiation between the disputed domain name and Complainant’s mark. 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). Therefore, the Panel finds that Respondent’s <sensormatichook.com> domain name is confusingly similar to the SENSORMATIC mark pursuant to 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 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 contends that Respondent is not commonly known by the <sensormatichook.com> domain name. Complainant argues that Respondent is not affiliated with or authorized by Complainant to use the SENSORMATIC mark in any way and does not have any trademark or service mark rights in the <sensormatichook.com> domain name. Additionally, Complainant provides the Panel with the WHOIS record for the <sensormatichook.com> domain name which lists “Pymesdirect” as the domain name registrant. Previously, the panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), held that the WHOIS information and lack of authorization by the complainant were illustrative of whether a respondent is commonly known by a disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <sensormatichook.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent is actively using the <sensormatichook.com> domain name but not in a way which provides Respondent with rights or legitimate interests. Complainant states that Respondent’s <sensormatichook.com> domain name is used to sell counterfeit versions of Complainant’s products. Panels have found that the sale of counterfeit goods on a disputed domain name is not a use which is protected under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Max Mara Fashion Grp. S.r.l. v. Lee, FA 1391129 (Nat. Arb. Forum July 7, 2011)(“Respondent’s sale of counterfeit versions of Complainant’s merchandise via the disputed domain name 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.”). Therefore, the Panel finds that Respondent’s use of the <sensormatichook.com> domain name to sell counterfeit goods 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.
Complainant contends that Respondent registered and is using the <sensormatichook.com> domain name in bad faith. Complainant asserts that Respondent registered and is using the disputed domain name intentionally to attract Internet users by creating a likelihood of confusion with Complainant’s affiliation to the website so that Respondent may commercially gain. Complainant notes that the <sensormatichook.com> domain name is confusingly similar to the SENSORMATIC mark and resolves to a website selling counterfeit versions of Complainant’s products. Additionally, Complainant notes that Respondent uses the SENSORMATIC mark throughout the <sensormatichook.com> domain name’s resolving website. Therefore, the Panel finds that Respondent registered and is using the <sensormatichook.com> domain name in order to take commercial advantage of Internet users, thus acting in bad faith under Policy ¶ 4(b)(iv). See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding the respondent to have registered and used the disputed domain name in bad faith by selling counterfeit products and capitalizing on the likelihood that Internet users may find a respondent’s website whilst searching for the complainant’s website, become confused as to the affiliation with or sponsorship of the disputed domain name to the complainant, and purchase goods through the disputed domain name rather than through the complainant).
Complainant argues that Respondent’s bad faith is further demonstrated by the fact that Respondent registered and began using the <sensormatichook.com> domain name with constructive and/or actual knowledge of Complainant’s rights in the SENSORMATIC mark. Complainant alleges that its trademark registrations for the SENSORMATIC mark put Respondent on constructive notice of Complainant’s rights. Additionally, Complainant argues that Respondent’s actual knowledge of Complainant’s rights is indicated by the following: the fame of the SENSORMATIC mark, the use by nearly every large retail business of the SENSORMATIC branded security tags at some point, and Respondent’s display of the SENSORMATIC mark and sale of related products. The Panel chooses to disregard Complainant’s arguments regarding constructive knowledge as panels have found that constructive knowledge is insufficient for a finding of bad faith. See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith). However, the Panel finds that Respondent did have actual knowledge of Complainant’s rights in the SENSORMATIC mark at the time the <sensormatichook.com> domain name was registered and thus that Respondent acted in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sensormatichook.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 2, 2012
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