Harrington Industrial Plastics, LLC v. Gloria Asido
Claim Number: FA1207001453651
Complainant is Harrington Industrial Plastics, LLC (“Complainant”), represented by Reid Dammann of Musick Peeler, LLP, California, USA. Respondent is Gloria Asido (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harringtonflowsolutions.com>, 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.
Mr. Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2012; the National Arbitration Forum received payment on July 17, 2012.
On July 20, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <harringtonflowsolutions.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 July 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 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@harringtonflowsolutions.com. Also on July 23, 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.
A timely Response was received and determined to be complete on August 13, 2012.
On August 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Hugues G. Richard 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it has rights in the HARRINGTON INDUSTRIAL PLASTICS LLC mark, which it uses in connection with a variety of goods and services including industrial plastics and flow monitors, meters, and sensors. Further, they are the owner of the United States Patent and Trademark Office (“USPTO”) registration for the HARRINGTON INDUSTRIAL PLASTICS LLC and Design mark (Reg. No. 3,135,299 registered August 29, 2006). Therefore, Complainant contends that Respondent’s <harringtonflowsolutions.com> Domain Name is confusingly similar to the Complainant’s HARRINGTON INDUSTRIAL PLASTICS LLC mark. Complainant contends that Respondent is not commonly known by the <harringtonflowsolutions.com> domain name, which resolves to an inactive website. Therefore, Complainant contends the <harringtonflowsolutions.com> domain name’s registration and non-use are evidence of Respondent’s bad faith.
B. Respondent
The <harringtonflowsolutions.com> domain name was registered for and on behalf of a third-party corporation, Harrington Flow Solutions, Inc. by Respondent on March 29, 2012. Respondent requests that all information regarding the <harringtonflowsolutions.com> domain name be sent to the address of the corporation, at:
Harrington Flow Solutions, Inc.
320 Amadeo Rd., Brgy. Biclatan,
General Trias Cavite Philippines
Phone No. (046) 509-xxxx
E-mail: xxxxxxxxx@yahoo.com
Given that Respondent makes no other contentions and provides no evidence to support the contention that she is indeed acting on behalf of a third party corporation, this Panel finds that the person (Gloria Asido) listed as the registrant of the disputed domain name is the Respondent in this case and is responsible for the actions associated with the domain name.
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.
Complainant’s mark is used in connection with a variety of goods and services, including industrial plastics and flow monitors, meters, and sensors. Furthermore, Complainant is the owner of the USPTO registration for the HARRINGTON INDUSTRIAL PLASTICS LLC and Design mark (Reg. No. 3,135,299 registered August 29, 2006). Therefore, the Panel finds that Complainant has rights in the HARRINGTON INDUSTRIAL PLASTICS LLC mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
The Panel finds that the deletion of words from a mark does not remove a disputed domain name from the realm of confusing similarity. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”). Additionally, the Panel finds that the addition of the descriptive term “flow” and the generic term “solutions” fails to distinguish the disputed domain name from Complainant’s mark. 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)). Finally, the Panel finds that Respondent’s addition of the generic top-level domain (“gTLD”) is irrelevant to a Policy ¶ 4(a)(i) analysis. 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).
As such, the Panel finds that Respondent’s <harringtonflowsolutions.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel acknowledges that 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 submitted by Respondent to demonstrate they are commonly known by the <harringtonflowsolutions.com> domain name. Further, no evidence demonstrates Respondent is known by a name consisting in whole or in part of the word “Harrington” or a substantial equivalent, and Respondent does not have authorization to use Complainant’s mark. The Panel notes that the WHOIS record for the <harringtonflowsolutions.com> domain name lists “gloria asido” as the domain name registrant. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel held that the information on the record, including the WHOIS listing, was illustrative of whether the respondent was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <harringtonflowsolutions.com> domain name pursuant to Policy ¶ 4(c)(ii).
The <harringtonflowsolutions.com> domain name currently resolves to an inactive website. In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the panel held that the holding of an inactive website is not a protected use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Therefore, the Panel finds that Respondent’s non-use of the <harringtonflowsolutions.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). As such, Respondent does not show it has any rights or legitimate interests in the <harringtonflowsolutions.com> domain name.
Respondent’s registration and non-use of the disputed domain name are a result of bad faith. While Policy ¶ 4(b) sets out a list of factors which are often considered when determining bad faith, panels have held that the list was not meant to be exhaustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). The Panel considers the totality of the circumstances in its bad faith analysis.
Firstly, Respondent’s future ability to convert the disputed domain name into a website that makes a profit off of diverting Internet users away from Complainant may be an indication of bad faith, but it must be noted however that the <harringtonflowsolutions.com> domain name resolves to an inactive website and so far Complainant offers no evidence of any indication that the disputed domain name may eventually be put to an active use. More concretely, it is the registration and non-use of the <harringtonflowsolutions.com> domain name by Respondent that provides clear evidence of bad faith. Panels have previously found that registering and holding an inactive website is evidence of bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Therefore, the Panel finds that Respondent registered the <harringtonflowsolutions.com> domain name in bad faith under Policy ¶ 4(a)(iii)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harringtonflowsolutions.com> domain name be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: August 28, 2012
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