Micro Motion, Inc. v. Manfred Schneider / Pactron LLC
Claim Number: FA1206001449641
Complainant is Micro Motion, Inc. (“Complainant”), represented by Jennifer D. Collins of The Ollila Law Group LLC, Colorado, USA. Respondent is Manfred Schneider / Pactron LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <micromotioncorp.us> and <micromotionllc.us>, registered with GoDaddy.com, LLC.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2012; the National Arbitration Forum received a hard copy on June 27, 2012.
On June 20, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <micromotioncorp.us> and <micromotionllc.us> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 3, 2012, Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules, for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 manufactures and distributes flow meters in the United States and around the world and has established a reputation within the “liquid and gas flow and density measurement” industry. Complainant began using its MICRO MOTION mark in relation with its products as early as 1977. Complainant owns rights in its MICRO MOTION mark through registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,151,542 registered April 21, 1981), as well as registrations with numerous other countries around the world.
Respondent’s <micromotioncorp.us> and <micromotionllc.us> domain names are confusingly similar to the MICRO MOTION mark.
The disputed domain names resolve to parked websites containing click-through hyperlinks to third-party competing websites in the liquid and gas flow and density measurement industry. Respondent is not commonly known by either the <micromotioncorp.us> or the <micromotionllc.us> domain names. Respondent is not making a legitimate noncommercial or fair use of the domain names and does not have demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services.
Respondent registered the <micromotioncorp.us> and <micromotionllc.us> domain names to disrupt Complainant’s business, and to divert customers seeking Complainant’s business to Respondent’s website. Respondent registered the disputed domain names in bad faith by posting links for competing businesses at its resolving website, and Respondent earns fees from such use. Respondent was aware of Complainant’s rights in the MICRO MOTION mark when Respondent registered the disputed domain names.
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 or 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(f), 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.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant claims to own rights in its MICRO MOTION mark through its various trademark registrations with the USPTO (e.g., Reg. No. 1,151,542 registered April 21, 1981) and its many registrations with international government agencies, such as the IP Australia Department of Innovation, Industry, Science, Research and Tertiary Education (“DIISRTE”) (Reg. No. 401,681 registered July 30, 1987), and France’s National Institute of Industrial Property (“NIIP”) (Reg. No. 1,260,051 registered February 8, 1994). In SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007), the panel held that the complainant’s trademark registrations with the USPTO establishes rights in the mark under UDRP ¶ 4(a)(i). The panel in Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005), stated that the complainant’s numerous registrations throughout the world for its mark established the complainant’s rights in the mark. The Panel concludes that by registering its MICRO MOTION mark with numerous government authorities globally, including with the USPTO, Complainant secured rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that the <micromotioncorp.us> and <micromotionllc.us> domain names are confusingly similar to its MICRO MOTION mark. Complainant argues that incorporating the entire MICRO MOTION mark and adding the abbreviated generic terms “corp” and “llc” do not distinguish the domain names from the mark. Further, Complainant points out that the addition of the country-code top-level domain (“ccTLD”) “.us” does not change the domain names’ confusing similarity to Complainant’s mark. Both disputed domain names omit the space between the words of the MICRO MOTION mark. The Panel finds that adding generic terms and a ccTLD, as well as removing the space between the mark’s words, does not change the confusing similarity of the <micromotioncorp.us> and <micromotionllc.us> domain names to Complainant’s mark under Policy ¶ 4(a)(i). See Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Nat. Arb. Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under UDRP ¶ 4(a)(i)); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to [UDRP] ¶ 4(a)(i).”).
Complainant has proven this element.
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.”).
No evidence is presented on the record to draw a conclusion that Respondent owns any marks that reflect either the <micromotioncorp.us> or the <micromotionllc.us> domain names. The Panel concludes that Respondent does not have rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name).
Complainant alleges that Respondent is not commonly known by the <micromotioncorp.us> and <micromotionllc.us> domain names because the WHOIS information relating to both domain names identifies “Pactron LLC” as the registrant. Complainant claims that there is “no relationship between the Complainant and the Respondent” that would entitle Respondent to use Complainant’s MICRO MOTION mark. The panel in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), held that the respondent was not commonly known by the disputed domain name because the WHOIS information did not support such a finding and the complainant claimed that it did not consent to the respondent’s use of the mark in a domain name. The Panel concludes that based on the WHOIS information associated with the disputed domain names, as well as Complainant’s assertion that Respondent has no relationship with Complainant’s business, Respondent is not commonly known by the <micromotioncorp.us> and <micromotionllc.us> domain names and therefore has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(iii).
Complainant argues that Respondent does not make any legitimate noncommercial or fair use of the <micromotioncorp.us> and <micromotionllc.us> domain names, nor does it use the domain names in connection with a bona fide offering of goods or services because the resolving websites feature hyperlinks to third-party websites whose businesses compete with Complainant. The Panel concludes that using the disputed domain names to host websites offering competing hyperlinks does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant has proven this element.
Complainant contends that Respondent registered and uses the <micromotioncorp.us> and <micromotionllc.us> domain names to disrupt Complainant’s business because the resolving webpages display hyperlinks whose sponsors offer products in competition with Complainant. The Panel concludes that posting hyperlinks to competitors demonstrates Respondent’s registration and use in bad faith to disrupt Complainant’s business under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”).
Complainant alleges that Respondent receives financial gain as a result of its use of the disputed domain names. Complainant argues that Respondent provides links to Complainant’s competitors, and, due to the domain names’ confusing similarity, consumers are likely to be attracted to Respondent’s website. The Panel finds that Respondent registered and uses the <micromotioncorp.us> and <micromotionllc.us> domain names in bad faith because Respondent uses the disputed domain names to confuse and attract Internet consumers, resulting in Respondent’s financial gain. 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 [UDRP] ¶ 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.’”).
Complainant argues that providing links to products of its competitors clearly demonstrates Respondent’s awareness of Complainant’s MICRO MOTION marks at the time Respondent registered the disputed domain names. Complainant further asserts that Respondent chose the domain names based on the goodwill Complainant has built in its marks. The Panel determines that constructive knowledge alone is insufficient to warrant a finding of bad faith under Policy ¶ 4(a)(iii) but concludes that Respondent’s use of the <micromotioncorp.us> and <micromotionllc.us> domain names to post competing hyperlinks demonstrates Respondent’s actual knowledge of Complainant’s mark. The Panel therefore concludes that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii). 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); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <micromotioncorp.us> and <micromotionllc.us> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 2, 2012
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