Segway Inc. v. Andrey Vlasutin
Claim Number: FA1306001506822
Complainant is Segway Inc. (“Complainant”), represented by William L. Worden of Pierce Atwood LLP, Massachusetts, USA. Respondent is Andrey Vlasutin (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <segway-usa.com> registered with DOMAIN.COM, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2013; the National Arbitration Forum received payment on June 26, 2013.
On June 26, 2013, DOMAIN.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <segway-usa.com> domain name is registered with DOMAIN.COM, LLC and that Respondent is the current registrant of the name. DOMAIN.COM, LLC has verified that Respondent is bound by the DOMAIN.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 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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@segway-usa.com. Also on June 28, 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 July 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
i. Complainant owns the SEGWAY mark through its trademark registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,727,948, registered June 17, 2003).
ii. Complainant own the SEGWAY mark through its trademark registrations with over twenty-five countries throughout the world, including trademark registrations with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 3,193,593, registered August 7, 2003; Reg. No. 3,107,691 registered on Dec. 28, 2007).
iii. Complainant uses the mark in connection with motorized self-propelled, wheeled, personal mobility devices, such as scooters, utility carts, and chariots.
iv. Complainant has invested significant time and effort in building the goodwill associated with the mark, and enjoys international recognition.
i. Policy ¶ 4(a)(i)
1. The domain <segway-usa.com> is confusingly similar to Complainant’s SEGWAY mark. The disputed domain includes the SEGWAY mark in its entirety and merely adds a hyphen, the geographically descriptive term “USA,” and the generic top-level domain (“gTLD”) “.com.”
ii. Policy ¶ 4(a)(ii)
1. Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is commonly known by the disputed domain name. The WHOIS record indicates that the registrant of the disputed domain is “Andrey Vlasutin.” Further, Complainant has not authorized Respondent’s use of the mark.
2. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services for a legitimate noncommercial or fair use. Complainant uses the disputed domain name to make unauthorized sales of SEGWAY Personal Transporters.
3. Respondent is passing himself off as Complainant as he is misrepresenting that he is an authorized distributor of Complainant’s goods, though he is not.
iii. Policy ¶ 4(a)(iii)
1. Respondent registered the domain name with the intent to disrupt Complainant’s business, revealing Respondent’s bad faith.
2. Respondent is attempting to attract users to his website for commercial gain through the sale of goods bearing the SEGWAY mark. Respondent attempts to pass itself off as Complainant to further the confusion as to Complainant’s affiliation with the disputed domain name.
3. Respondent’s bad faith is further demonstrated by the fact that Respondent had knowledge he was infringing on Complainant’s rights in the mark.
1. Respondent’s <segway-usa.com> domain name is confusingly similar to Complainant’s SEGWAY mark.
2. Respondent does not have any rights or legitimate interests in the <segway-usa.com> domain name.
3. Respondent registered or used the <segway-usa.com> domain name 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.
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.”).
Complainant claims to own the SEGWAY mark through its trademark registration with the USPTO (e.g., Reg. No. 2,727,948, registered June 17, 2003). Complainant further claims to own the SEGWAY mark through trademark registrations with over twenty-five countries throughout the world, including trademark registrations with the SAIC (e.g., Reg. No. 3,193,593, registered August 7, 2003). The Panel finds that Complainant’s trademark registrations of the SEGWAY mark with the USPTO, as well as numerous registrations throughout the world, establish Complainant’s rights in the SEGWAY mark pursuant to Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant argues that the domain <segway-usa.com> is confusingly similar to Complainant’s SEGWAY mark. Complainant asserts that the disputed domain includes the SEGWAY mark in its entirety and merely adds a hyphen, the geographically descriptive term “usa,” and gTLD “.com.” In Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003), the panel determined that “the addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).” Further, past panels have found that a domain name consisting of a well-known mark, combined with a geographically descriptive terms, such as “usa,” is confusingly similar to the mark. See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”). Previous panels have also established that the inclusion of a gTLD, such as “.com,” is irrelevant in a Policy ¶ 4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel finds that the <segway-usa.com> domain name is confusingly similar to Complainant’s SEGWAY mark under Policy ¶ 4(a)(i) because the domain’s addition of a hyphen, the term “usa,” and the gTLD “.com” to the SEGWAY mark in its entirety, does not serve to adequately distinguish the domain name from the mark.
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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that there is no evidence that Respondent is commonly known by the disputed domain name. Complainant notes that the WHOIS record indicates that the registrant of the disputed domain is “Andrey Vlasutin.” Further, Complainant contends that it has not authorized Respondent’s use of the mark. The Panel notes that Respondent did not submit a Response, and therefore has not refuted the contentions made by Complainant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or a legitimate noncommercial or fair use. Complainant asserts that Respondent uses the disputed domain name to make unauthorized sales of Complainant’s SEGWAY Personal Transporters. The Panel notes that Complainant includes a screenshot of the resolving page in Annex 7, which shows Respondent appears to use the site to sell SEGWAY products. Complainant includes a screenshot of the webpage as it appears, written in Russian, as well as a version of the website translated to English. Previous panels have found that a respondent does not have rights or legitimate interests in a domain name that uses a complainant’s mark to sell complainant’s goods without authorization from the complainant. See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant). The Panel finds that Respondent’s use of the disputed domain name to create an association with Complainant in order to sell unauthorized products of Complainant, is 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).
Complainant further alleges that Respondent took photographs from Complainant’s website and is using them on its own site without Complainant’s permission. Respondent identifies the photographs in Annex 8. In light of the evidence in Annex 7 and 8, Complainant argues that Respondent is passing himself off as Complainant as he is misrepresenting that he is an authorized distributor of Complainant’s goods, though he is not. Previous panels have failed to find a bona fide offering of goods or services or for a legitimate noncommercial or fair use where the respondent passes itself off as the complainant or diverts Internet traffic from the complainant to the respondent’s own website. See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of 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 of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). The Panel agrees that Respondent’s lack of a right or legitimate under the parameters of Policy ¶ 4(c)(i) or (iii) may thus be based upon Respondent’s attempt to pass itself off as Complainant.
Complainant contends that Respondent registered and is using the domain name with the intent to disrupt Complainant’s business, revealing Respondent’s bad faith. Complainant asserts that Respondent’s efforts on the domain name serve to disrupt the sales of Complainant’s authorized distributors, especially in the regions of Russia and Eastern Europe. The Panel notes that Complainant includes Annexes 7 and 8, which show that the disputed domain name resolves to a webpage that advertises and sells Complainant’s products. Previous panels have found evidence of bad faith where a respondent uses a confusingly similar domain name to sell a complainant’s products, as it disrupts a complainant’s business. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). The Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii), because Respondent is using the domain name to sell Complainant’s goods without permission, disrupting the efforts of Complainant’s authorized distributors.
Complainant argues that Respondent is attempting to attract users to his website for commercial gain through the sale of goods bearing the SEGWAY mark. Again, the Panel notes that Complainant includes Annex 7, which shows that the resolving page advertises and sells Complainant’s SEGWAY products. The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent attempts to profit from the unauthorized sales of Complainant’s goods. See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”).
Similarly, Complainant contends that Respondent is attempting to profit, by passing itself off as one of Complainant’s authorized distributors. Complainant argues that Respondent unfairly profits from the confusion as to Complainant’s association with the disputed domain. Complainant alleges that Respondent took photographs from Complainant’s website and is using them on its own site without Complainant’s permission. See Annex 8. Previous panels have determined that a respondent’s attempt to pass itself off as a complainant in hopes of generating profit, is evidence of bad faith. In Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004), the panel found bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.” The Panel determines that Respondent’s activities reach the level of “passing off”, and thus finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent’s bad faith is further demonstrated by the fact that Respondent had knowledge that he was infringing on Complainant’s rights in the mark. Complainant contends that Respondent’s use of the SEGWAY mark in the domain name, and the content of the website indicate that Respondent had knowledge of Complainant’s rights in the SEGWAY mark. The Panel determines that Respondent had actual knowledge of Complainant’s rights given Respondent’s incorporation of the SEGWAY mark in the domain name, and Respondent’s effort to advertise and sell Complainant’s products using photographs from Complainant’s own website, and therefore finds that Respondent registered the disputed domain name in bad faith pursuant and 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 "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 <segway-usa.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 6, 2013
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