national arbitration forum

 

DECISION

 

Micro Motion, Inc. v. Pactron LLC

Claim Number: FA1206001449659

 

PARTIES

Complainant is Micro Motion, Inc. (“Complainant”), represented by Jennifer D. Collins of The Ollila Law Group LLC, Colorado, USA.  Respondent is Pactron LLC (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <micromotioncorp.com> and <micromotionllc.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2012; the National Arbitration Forum received payment on June 20, 2012.

 

On June 20, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <micromotioncorp.com> and <micromotionllc.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 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@micromotioncorp.com, and postmaster@micromotionllc.com.  Also on June 20, 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 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant made the following contentions.

1.    Complainant operates in the liquid and gas flow density measurement industry, manufacturing and selling flow meters under the MICRO MOTION mark.

2.    Complainant owns trademark registrations with the United States Patent and Trademark and Office (“USPTO”) for the MICRO MOTION mark (e.g., Reg. No. 1,151,542 registered April 21, 1981).

3.    The <micromotioncorp.com> and <micromotionllc.com> domain names are confusingly similar to Complainant’s MICRO MOTION mark.

4.    Respondent has no rights or legitimate interests in the disputed domain names.

5.    The disputed domain names were registered and used in bad faith.

6.    Respondent is not commonly known by the disputed domain names.

7.    The disputed domain names resolve to a parked page displaying sponsored links to Complainant’s competitors.

8.    Respondent commercially benefits from these links through the collection of click-through fees.

9.    Respondent was aware of Complainant’s rights in the MICRO MOTION marks at the time the <micromotioncorp.com> and <micromotionllc.com> domain names were registered.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1. Complainant is a United States company operating in the liquid and gas flow density measurement industry, manufacturing and selling flow meters under the MICRO MOTION mark.

2. Complainant owns trademark registrations with the United States Patent and Trademark and Office (“USPTO”) for the MICRO MOTION mark (e.g., Reg. No. 1,151,542 registered April 21, 1981).

3. Respondent registered the disputed domain names on February 24, 2012 and caused them to resolve to a parked page displaying sponsored links to Complainant’s competitors.

 

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

 

The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims rights in the MICRO MOTION mark pursuant to Policy ¶ 4(a) (i) based on its registrations of the mark with the USPTO (e.g., Reg. No. 1,151,542 registered April 21, 1981). The Panel notes that past panels have found that a complainant’s registration of a mark with the USPTO establishes rights in the mark under Policy ¶ 4(a) (i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel holds that Complainant’s registration of the MICRO MOTION mark with the USPTO confers rights in the mark under Policy ¶ 4(a) (i).

 

The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s MICRO MOTION mark. Complainant contends that the <micromotioncorp.com> and <micromotionllc.com> domain names are confusingly similar to Complainant’s MICRO MOTION mark within the meaning of Policy ¶ 4(a) (i). The Panel finds that the disputed domain names each include Complainant’s mark and omit the space, while adding the generic terms and affixing the generic top-level domain (“gTLD”) “.com.” The Panel notes that the <micromotioncorp.com> domain name adds the generic term “corp,” and <micromotionllc.com> domain name adds the generic term “llc.” The Panel also notes that previous panels have found that neither the addition of a generic term nor the affixation of a gTLD is sufficient to create non-infringing domain names under Policy ¶ 4(a) (i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under 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)). The Panel therefore finds that the <micromotioncorp.com> and <micromotionllc.com> domain names are confusingly similar to Complainant’s MICRO MOTION mark under Policy ¶ 4(a) (i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

 

It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a) Respondent has chosen to take Complainant’s MICRO MOTION trademark and to use it in its domain names, adding a generic term in each case indicating that the respective domain name relates to a company, which emphasizes the confusing similarity between each domain name and the trademark;

(b) Respondent has then caused the disputed domain names to resolve to a parked page displaying sponsored links to Complainant’s competitors;

(c)  Respondent has engaged in these activities without the consent or approval

of Complainant;

(d)  Complainant contends that Respondent is not commonly known by the <micromotioncorp.com> and <micromotionllc.com> domain names for the purposes of Policy ¶ 4(c) (ii). Complainant also contends that Respondent is not and has never been a licensee of Complainant. The Panel notes that the WHOIS information for the disputed domain names identifies Respondent as “Pactron LLC.” The Panel notes the lack of similarity between “Pactron LLC” and the <micromotioncorp.com> and <micromotionllc.com> domain names. The Panel also notes that, because Respondent has failed to satisfy its burden of producing a Response in this matter, there is no evidence tending to show that Respondent is in fact commonly known by the disputed domain names. The Panel therefore concludes that Respondent is not commonly known by the <micromotioncorp.com> and <micromotionllc.com> domain names for the purposes of 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);

 

(e)  Complainant further contends that Respondent’s use of the disputed domain

names does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant claims that the <micromotioncorp.com> and <micromotionllc.com> domain names resolve to websites featuring pay-per-click links promoting Complainant’s competitors. The Panel finds that the resolution of a disputed domain name to a site featuring competing hyperlinks does not satisfy either Policy ¶ 4(c) (i) or Policy ¶ 4(c) (iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel therefore holds that Respondent’s use of the <micromotioncorp.com> and <micromotionllc.com> domain names does not constitute 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).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

 

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.

 

First, Complainant alleges that Respondent’s use of linking the <micromotioncorp.com> and <micromotionllc.com> domain names to Respondent’s websites, which feature hyperlinks to products and services in competition with Complainant evidences disruption of Complainant’s business in bad faith under Policy ¶ 4(b)(iii). The Panel notes that UDRP precedent indicates that bad faith registration and use may be found where a respondent takes advantage of a confusingly similar domain name to advertise products or services which compete with the complainant’s business. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). The Panel concludes that Respondent’s registration and use of the disputed domain names is in bad faith under Policy ¶ 4(b) (iii).

 

Secondly, Complainant also alleges that Respondent registered and is using the <micromotioncorp.com> and <micromotionllc.com> domain names to attract intentionally, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. The Panel infers that Respondent realizes a commercial gain through the operation of its website, likely through the collection of click-through fees. The Panel finds, therefore, that Respondent’s primary motivation for the registration and use of the confusingly similar domain names was wrongfully to associate itself with Complainant, allowing Respondent to use this confusion for commercial gain. The Panel finds that Respondent’s operation demonstrates attraction for commercial gain, evidencing bad faith registration and use under Policy ¶ 4(b) (iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).

 

Thirdly, Complainant also contends that, given the fact that Respondent’s websites provide links to Complainant’s competitors, it is clear that Respondent was aware of the Complainant's rights in the MICRO MOTION mark at the time Respondent registered the <micromotioncorp.com> and <micromotionllc.com> domain names. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, 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."). The Panel finds, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and further 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).

 

Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the MICRO MOTION mark and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

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 <micromotioncorp.com> and <micromotionllc.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  July 19, 2012

 

 

 

 

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