Dwyer Instruments, Inc. v. Daniel Gill
Claim Number: FA1304001492984
Complainant is Dwyer Instruments, Inc. (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Daniel Gill (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dwyer-instruments.net>, registered with ENOM, INC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 4, 2013; the National Arbitration Forum received payment on April 5, 2013.
On April 4, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <dwyer-instruments.net> 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 April 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 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@dwyer-instruments.net. Also on April 11, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 13, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant Dwyer Instruments, Inc. is a leading manufacturer and seller of pressures switches, gauges, flowmeters, and valves in the controls and instrumentation industry under the DWYER and DWYER INSTRUMENTS marks.
Complainant’s first use of the DWYER marks was as early as 1931, and the first use of its DWYER INSTRUMENTS mark was as early as 1955.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DWYER mark (e.g., Reg. No. 946,287, registered October 31, 1972). Complainant also provides registration numbers for its DWYER mark in multiple international trademark authorities.
Respondent’s <dwyer-instruments.net> domain name is confusingly similar to Complainant’s DWYER and DWYER INSTRUMENTS marks.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is not and has never been a licensee of Complainant.
Respondent has used at least one email address linked to the domain name to impersonate Complainant and to place unauthorized orders for expensive goods from third-party suppliers, all in the name of Complainant.
Respondent registered and is using the disputed domain name in bad faith.
At the time when Respondent registered the domain name, Complainant’s marks were distinctive and registered throughout numerous jurisdictions in the world.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for DWYER.
Respondent is not affiliated with Complainant and had not been authorized to use the DWYER mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in DWYER.
The <dwyer-instruments.net> domain name was used to host an email account used to impersonate Complainant.
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.”).
The at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant’s registration of the DWYER mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”).
Respondent adds a hyphen and the descriptive term “instruments” to Complainant’s mark. Respondent then appends the top level domain name “.net” to form the at-issue domain name. The addition of a hyphen, a descriptive term, and top level domain name does nothing to distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). Therefore the Panel finds that Respondent’s <dwyer-instruments.net> domain name is confusingly similar to Complainant’s DWYER mark. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Daniel Gill” as the at-issue domain name’s registrant. Moreover, the record before the Panel contains no evidence that suggests that Respondent is otherwise commonly known by the domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent has used at least one email address containing the at-issue domain name to impersonate Complainant and to place unauthorized orders for expensive goods from third-party suppliers. Respondent used the @dwyer-instruments.net address purporting to be Robert E. Byrd, Purchasing Manager of Complainant to attempt to fraudulently purchase some $72,711.85 worth of goods. Robert Byrd is not employed by Complainant. Respondent has a pattern of fraud and has impersonated Complainant on numerous occasions for the purpose of ordering expensive goods in Complainant’s name. Needless to say, Respondent’s use of the disputed domain name to pass itself off as Complainant is neither a Policy ¶ 4(c)(i) bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii) . See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, non-Policy ¶ 4(b) circumstance are present and compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Although Complainant does not urge the existence of bad faith circumstances, enumerated in Policy ¶ 4(b), such factors are not intended to be exhaustive. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence). On February 27, 2013, just six days after the domain name had been registered; Respondent impersonated Complainant to approach a third-party supplier. As mentioned above, Respondent has used at least one email address bearing the at-issue domain name to impersonate Complainant and to place unauthorized orders for expensive goods from third-party suppliers, all in the name of Complainant. The Panel finds that Respondent’s passing itself off as Complainant demonstrates bad faith registration and use under Policy ¶ 4(a)(iii). See Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use); see also Smiths Group plc v. Snooks, FA1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent registered and used the disputed domain name in bad faith by impersonating an employee of the complainant to make cell phone purchases using the complainant’s account).
Finally, prior to registering the at-issue domain name Respondent had actual knowledge of Complainant’s rights in the DWYER mark. Respondent’s prior knowledge is clear from the fact that the <dwyer-instruments.net> domain name contains Complainant’s entire DWYER trademark and was used by Respondent to impersonate Complainant. Registering a domain name that one knows is confusingly similar to the trademark of another indicates bad faith registration and use under Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dwyer-instruments.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 14, 2013
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