Heateflex Corporation v. HECTOR CANEDO
Claim Number: FA1304001496520
Complainant is Heateflex Corporation (“Complainant”), represented by Dan P. Sedor of Jeffer Mangels Butler & Mitchell LLP, California, USA. Respondent is HECTOR CANEDO (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <safna.com> (the “Domain Name”), registered with NETWORK SOLUTIONS, 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.
Clive Elliott QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2013; the National Arbitration Forum received payment on April 26, 2013.
On April 25, 2013 NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, 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 May 1, 2013 the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 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@safna.com. Also on May 1, 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 24, 2013 an email response was received by the Forum from Respondent. This response was received after the deadline. The Forum did not consider the response to be in compliance with ICANN Rule #5(a).
On May 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Elliott 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 formal response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a manufacturer and distributor of heating and filtration systems, including a division called Safna, which is devoted to the design, manufacture and sale of liquid filtration systems.
Complainant asserts that it owns exclusive rights in the mark SAFNA (the "Mark"), including the following current U.S. Registration for the SAFNA mark, covering a variety of liquid filtration goods, including, without limitation, liquid filtration equipment: U.S. Registration No. 4278861, issued January 22, 2013 by the United States Patent and Trademark Office ("USPTO").
In addition to its federal registration, Complainant asserts that it is the owner of all common law rights established in the Mark prior to federal registration, based on its acquisition of the assets of SEI. It contends that since on or before July 2002, Complainant or its predecessor-in-interest has been using the Mark in connection with the business of designing, manufacturing, and selling liquid filtration systems, heat transfer equipment, gas and air filters, and tanks and pressure vessels. Complainant advises that SEI was established as a California corporation on August 8, 2002 and that the Mark was used previous to that registration in developing SEI's business, and has been used continuously ever since either by SEI or Complainant.
Complainant asserts that it acquired SEI and its assets in November 2010, including all of SEI's rights in the Mark, and that it now owns all common law rights in the Mark established and owned by SEI. Complainant contends that it has been using the Mark in commerce since the date of that acquisition.
Complainant states that in or around July 2002, its predecessor-in-interest hired Respondent as an independent consultant to set up and design a website for SEI and to register the Domain Name. Complainant further states that Respondent registered the Domain Name in Respondent’s own name rather than in SEI's name.
Complainant submits that the word “Safna” is fanciful and arbitrary, and therefore inherently distinctive, and that it cannot be said to be descriptive or generic, as "Safna" is a meaningless word in English and is used primarily as a first or last name in non-English languages. Complainant notes that the only commercial uses of "Safna" that appear in the first 5 pages of Google search results for the word are Complainant's.
Complainant submits that the Domain Name is essentially identical to Complainant's SAFNA Mark. Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name and that Respondent is not associated in any way with the Complainant or the Mark. Complainant further asserts that Respondent is not known by or commonly referred to by the Domain Name, and Respondent's own name, as listed in the WHOIS directory, bears no resemblance to the Domain Name. Complainant also asserts that it owns the SAFNA mark and has not licensed or otherwise authorized Respondent to use the Mark.
Complainant contends that Respondent is not making active use of the Domain Name for any legitimate interest, but is instead interfering with Complainant’s ability to do so, and that Respondent’s improper registration and nonuse of the Domain Name were and is conducted in bad faith under the Policy.
Complainant submits that as Respondent was hired by SEI to design a public website and secure and register the Domain Name on SEI's behalf, Respondent therefore had actual knowledge of SEI’s rights in the Mark. The fact that the Domain Name was registered several weeks prior to SEI's incorporation, Complainant believes does not negate Respondent's actual knowledge of SEI's mark, as the Domain Name was registered in order to develop SEI's rights in the Mark.
Complainant argues that Respondent's continued nonuse of the Domain Name since the 2002 registration date is evidence that Respondent is holding the Domain Name in bad faith and furthermore, Respondent's refusal to respond or transfer the Domain Name to Complainant is additional evidence of bad faith. Complainant contends that it has made multiple attempts via telephone, email, and postal mail to contact Respondent and resolve this dispute, but has not received a response.
Complainant says that the fact that the Domain Name continues to resolve to its own website does not mitigate the bad faith of Respondent's on-going nonuse, and that as it has already incurred additional costs in establishing a second website using the Mark, it now requires full ownership and use of the Domain Name to effectively conduct its business.
B. Respondent
Respondent failed to submit a timely Response in this proceeding.
Respondent did however send an e-mail to the forum, dated May 23, 2013, stating: “I woold (sic) like to keep safna domain name for my company uses after my agreement has expired with safna engineering, which I think is end of 2014. I loaned the name to safna for a limited time since I was not using it, but now I want to use the domain. At that safna was thinking to change their compnay (sic) name to something else.”
For the reasons set out below the Complainant succeeds in its complaint and transfer of the Domain Name is ordered.
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.
As noted above, the National Arbitration Forum received an email from Respondent, dated May 23, 2013, which the Forum has deemed a deficient Response because it was received after the deadline for responses. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. Nevertheless, the Panel, at its discretion, may choose whether to accept and consider this Response. See Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
In this particular case the Panel considers that notwithstanding the deficiency in the Response that it should take into account what is said in the e-mail dated May 23, 2013.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant argues that it has a business which includes SAFNA, a division devoted to the design, manufacture, and sale of liquid filtration systems. Complainant argues that SEI, its predecessor-in-interest, was established as a California corporation on August 8, 2002. Complainant contends that it acquired SEI and its assets in November 2010, including all of SEI’s rights in the mark. Complainant contends that it is the owner of all common law rights established in the SAFNA mark prior to federal registration. Complainant claims that it is the owner of a trademark registration with the USPTO for the SAFNA mark (Reg. No. 4,278.861, filed May 18, 2012, registered January 22, 2013). None of this is disputed.
Complainant asserts that the Domain Name is identical to Complainant’s SAFNA Mark, differing only in the addition of the gTLD “.com.” It is now well established that the addition a gTLD does not negate identity under Policy ¶ 4(a)(i). Accordingly, the Panel concludes that the Domain Name is identical to Complainant’s SAFNA Mark pursuant to Policy ¶ 4(a)(i).
The ground is made out.
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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-Barbara 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).
The WHOIS information identifies “HECTOR CANEDO” as the registrant of the Domain Name. See Exhibit B. Complainant asserts that it has not licensed or otherwise authorized Respondent to use the Mark. Complainant contends that Respondent presently has no connection with Complainant or SEI. Therefore, the Panel finds that Respondent is not commonly known by the Domain Name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that in approximately July 2002 its predecessor-in-interest hired Respondent as an independent consultant to set up and design a website and to register the Domain Name. Complainant further asserts that Respondent registered the Domain Name in Respondent’s own name rather than in SEI's name.
Complainant claims that Respondent has failed to make any use of the Domain Name from the time of registration. The Domain Name resolves to a webpage that states “CLICK HERE TO VISIT OUR NEW SITE WWW.SAFNA.NET.” See Exhibit G.
Complainant argues that Respondent is not making active use of the Domain Name by providing a hyperlink to Complainant’s webpage for any legitimate interest, but is instead interfering with Complainant’s ability to do so.
Respondent in turn contends that he "loaned the name” for a "limited time" and now wants to use the Domain Name. This however is inconsistent with Complainant’s prior rights in the SAFNA Mark and the fact that it or its predecessor in business has continued to trade under the Mark since at least 2002.
In any event, Respondent’s use of the Domain Name to redirect to Complainant’s site is itself grounds for a finding of no rights or legitimate interests. See Better Existence with HIV v. AAA, FA 1363660 (Nat. Arb. Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”).
For these reasons the ground is made out.
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant contends that Respondent’s continued non-use of the Domain Name since the 2002 registration constitutes bad faith. As noted above the Domain Name resolves to a webpage that states “CLICK HERE TO VISIT OUR NEW SITE WWW.SAFNA.NET.” Complainant argues that the fact that the Domain Name continues to resolve to Complainant’s website does not mitigate the bad faith of Respondent’s ongoing non-use. The Panel does not consider the question of whether Respondent has actually used the Domain Name and whether such use is active or not, to be centrally relevant or dispositive. Instead, the Panel is of the view that Respondent’s use of the Domain Name to redirect to Complainant’s site is itself grounds for a finding of bad faith. See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (finding, when a domain name is used to redirect to the complainant’s website, that “such redirection will allow the Respondent to divert future users to competing web sites after having built up mistaken confidence in the source of the content,” which constitutes bad faith registration and use).
Complainant further argues that Respondent’s actual knowledge of Complainant’s Mark at the time of registration is evidence of bad faith registration. Complainant claims that Respondent, as an independent consultant to SEI, registered the Domain Name to himself in bad faith. As previously noted, Respondent was hired by SEI to design a public website and secure and register the Domain Name on SEI’s behalf. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the SAFNA Mark under Policy ¶ 4(a)(iii), and determines that Respondent registered the Domain Name in bad faith under Policy ¶ 4(a)(iii).
Accordingly, this ground is established.
Having established all three grounds or elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the Domain Name be TRANSFERRED from Respondent to Complainant.
Clive Elliott QC, Panelist
Dated: June 12, 2013
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