Norgren, Inc. v. OpenEarth Scott Knell
Claim Number: FA1303001491503
Complainant is Norgren, Inc. (“Complainant”), represented by Jennifer D. Collins of The Ollila Law Group LLC, Colorado, USA. Respondent is OpenEarth Scott Knell (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <norgen.com>, registered with eNom, Inc.
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.
David S. Safran, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 25, 2013; the National Arbitration Forum received payment on March 25, 2013.
On March 26, 2013, eNom, Inc confirmed by e-mail to the National Arbitration Forum that the <norgen.com> domain name is registered with eNom, Inc and that Respondent is the current registrant of the name. eNom, Inc has verified that Respondent is bound by the eNom, Inc 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 March 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 2013 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@norgen.com. Also on March 26, 2013, 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 April 15, 2013.
Complainant submitted an Additional Submission, which was determined to be compliant on April 22, 2013.
On April 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran, 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 the Domain Name <norgen.com> is confusingly similar to the NORGREN trademark in which Complainant has rights through continuous and exclusive use of the mark in commerce. Complainant alleges that the confusing similarity is a result of a misspelling of Complainant’s NORGREN mark by deleting the letter “r”. Complainant also contends that Respondent has no trademark or intellectual property rights in the Domain Name. Respondent is not and has never been a licensee of Complainant, is not commonly known by the Domain Name, and Respondent has never made any use of, or demonstrable preparation to use, the Domain Name in connection with a bona fide offering of goods or services. Additionally, Complainant asserts that
Respondent registered the Domain Name in bad faith to disrupt Complainant’s business, because Respondent’s Domain Name directs Internet users to Respondent’s website that offers products in competition with Complainant; Respondent’s website being used to intentionally attract, for commercial gain; and the content at the resolving website provided by a domain parking service is legally and practically attributable back to Respondent. Still further, Complainant contends that Respondent’s typosquatting behavior is evidence of bad faith in and of itself.
B. Respondent
Respondent asserts that Complainant has not met its burden of establishing confusing similarity and that it has determined that more times than not, visitors to the parking site are not seeking Complainant’s website. Furthermore, Respondent contends that the domain was registered for the legitimate purpose of serving as a potential URL for a social advocacy site relating to genetic engineering. Still further, Respondent contends that it was unaware of the nature of the parking site established by Enom and had no reason to visit it since Respondent receives no compensation from Enom for the parked site.
C. Additional Submissions
In its additional submission, Complainant has cited cases in support of the position that altering a domain name by a single letter increases confusion, and that proof of actual confusion is not required to show a domain name is confusingly similar to a complainant’s mark. Furthermore, Complainant contends that Respondent’s attempt to show that the domain was not diverting persons looking for Complainant’s website used methodology that was flawed in a way that decreased the evidence of actual confusion. Complainant also provides cases in support of the position that Respondent’s unfounded assertions as to the purpose for obtaining the domain is insufficient to establish that Respondent has made demonstrable preparations to use the disputed domain name and
demonstrates a lack of legitimate interest in the domain name. Still further, Complainant provides case citations in support of its contention that Respondent’s passive holding of the domain name for “later use” is evidence of bad faith, and that Respondent is responsible for the actions of the domain parking service provider it used. Still further, Complainant’s claims of innocent adoption and lack of knowledge of the nature of the parking site activity are not believable given Respondent’s position as an IT Strategist & Architect at a major international law firm, and Respondent’s experience in registering domain names and using parking sites.
The Panel finds that the domain <norgen.com> is confusingly similar to a trademark in which Complainant holds rights; that Respondent has no rights or legitimate interests in domain; and that the domain was registered and used 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.
Complainant contends that it owns the trademark rights in its NORGREN mark, and provides evidence of its trademark registrations throughout the world, including registrations with the USPTO (e.g., Reg. no. 950,639 registered January 16, 1973), the Swiss Federal Institute of Intellectual Property (Reg. No. 285,785), the SAIC (Reg. No. 292,354), and the OHIM (Reg. No. 995,908). Previous panels have concluded that holding trademark registrations with several international agencies serves to demonstrate rights in a mark in satisfaction of the Policy. See Hewlett-Packard Dev. Co., L.P. v. Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office . . .”). The Panel finds that Complainant’s numerous international trademark registrations establish Complainant’s rights in the NORGREN mark under Policy ¶ 4(a)(i).
Complainant alleges in its Complaint and in its Additional Submission that by deleting the letter “r” in the NORGREN mark and adding the generic top-level domain (“gTLD”), the <norgen.com> domain name is confusingly similar to Complainant’s mark. The Panel finds that omitting a single letter from a mark and adding a gTLD results in confusing similarity between Complainant’s NORGREN mark and the <norgen.com> domain name, pursuant to Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also 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).
While Respondent contends that the <norgen.com> domain name is comprised of common and descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel is aware 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.”).
Complainant makes the allegation that Respondent presents no evidence that it is commonly known by the <norgen.com> domain name, as a business or as a personal name. Complainant contends that the WHOIS report associated with the domain name, attached as Complainant’s Annex D, identifies the registrant as “OpenEarth Scott Knell.” The panel in Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), held that the respondent was not commonly known by the disputed domain name, as the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t” as the registrant, and no other evidence demonstrated that the respondent was known by the disputed domain name. The Panel thus finds that Respondent is not commonly known by the <norgen.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts in its Complaint and in its Additional Submission that Respondent uses the website resolving from the <norgen.com> domain name to deliberately increase Internet traffic to its website, which has no relation to Complainant, by featuring “related searches” with hyperlinks to websites displaying advertisements for third party retailers who are in competition with Complainant’s business. Complainant submits evidence that, for instance, a link titled “Norgren Products,” when clicked on, leads the consumer to a website at the <omega.com> website, which offers product in the motion and fluid control industry. See Complainant’s Annex F-1. Complainant argues that using the domain name to host hyperlinks to competing websites fails to demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant further contends in its Additional Submission that Respondent’s assertion of using the disputed domain name to “create socially responsible messaging about the genetic sciences” fails, because Respondent’s use does not support its argument. The Panel finds that Respondent has not and does not use the <norgen.com> domain name in connection with 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), because Respondent uses the domain name to post links leading to advertisements by entities in competition with Complainant’s business.
Complainant alleges in its Policy ¶ 4(a)(iii) section and in its Additional Submission that Respondent engages in typosquatting, as the <norgen.com> domain name is confusingly similar to Complainant’s mark due to an intentional typographical error. In LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003), the panel found that the disputed domain names consisted of intentional misspellings of the complainant’s LTD COMMODITIES mark, which constituted typosquatting, which demonstrated the respondent’s lack of rights or legitimate interests in the disputed domain name. This Panel likewise finds that Respondent’s use of a domain name that consists of a misspelled version of Complainant’s mark in connection with a parking site containing links and advertisements to/by entities in competition with Complainant fails to establish that Respondent has rights or legitimate interests in the <norgen.com> domain name pursuant to Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s bad faith registration and use are apparent by the fact that resolving website has links that redirect internet users to competitor’s websites and has advertisements for products in competition with Complainant’s products. Previous panels have determined that a respondent acts in bad faith when its use of the resolving website disrupts the complainant’s business, by including hyperlinks to businesses and products competing with those offered by the complainant. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent). The Panel therefore concludes that Respondent disrupts Complainant’s business by its use of the resolving website, demonstrating bad faith registration and use of the <norgen.com> domain name under Policy ¶ 4(b)(iii).
Complainant makes the contention that Respondent exploits Complainant’s NORGREN mark in bad faith by using a confusingly similar mark and featuring hyperlinks and competing products at the resolving domain name in order to make a financial gain. The Panel finds that Respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(iv) due to its use of the <norgen.com> domain name to display hyperlinks designed to attract Internet users to the site at a confusingly similar domain name. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).
Complainant argues that even if Respondent does not make a profit from its use of the domain name, its use registration and use are still in bad faith because Respondent parks the domain name, and all activity at the resolving website is attributable to Respondent. In Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007), the panel stated that it was irrelevant that a respondent did not receive any revenue from the displayed hyperlinks, and the revenues were received by the parking service, as the respondent still registered and used the domain name in bad faith because it allowed the parking service to access the domain name instead of resolving to a blank page. The Panel finds that even though Respondent may not have received referral fees as a result of parking its website with the registrar, but nonetheless Respondent registered and uses the <norgen.com> domain name in bad faith because it allowed the registrar to post content at the resolving website that included click-through hyperlinks.
Complainant makes the argument in its Complaint and its Additional Submission that Respondent’s typosquatting is evidence of its bad faith registration and use, because Respondent chose a domain name that was calculated to take advantage of Internet users’ typing errors when attempting to reach Complainant’s website by removing a single letter from Complainant’s NORGREN mark. In Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), the panel determined that the respondent’s typosquatting was evidence of bad faith registration and use. This Panel similarly finds that Respondent engaged in typosquatting by creating a misspelled version of Complainant’s mark in order to capitalize on Internet consumer’s typographical errors, demonstrating bad faith registration and use pursuant to 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 <norgen.com> domain name be TRANSFERRED from Respondent to Complainant.
David S. Safran, Panelist
Dated: May 7, 2013
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