Fuseco, Inc. v. FusePlus
Claim Number: FA1309001519730
Complainant is Fuseco, Inc. (“Complainant”), represented by Katherine L. Sunstrom of Lorance & Thompson, PC, Texas, USA. Respondent is FusePlus (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fuseco.com>, registered with NETWORK SOLUTIONS, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on September 16, 2013; the National Arbitration Forum received payment on September 16, 2013.
On September 17, 2013, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <fuseco.com> 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 September 20, 2013, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of October 10, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administrat-ive, and billing contacts, and to postmaster@fuseco.com. Also on September 20, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 October 15, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 has been marketing its products and services under the FUSECO mark since the company’s inception in 1965, and it is now the largest electrical fuse and accessory supplier in the United States.
Fuses are Complainant’s only line of business, and Complainant has acquired common law rights in its unregistered FUSECO mark because of its long and continuous use of the mark in the marketplace in connection with that business.
Respondent registered the <fuseco.com> domain name on July 31, 1997.
The <fuseco.com> domain name is substantively identical to Complainant’s FUSECO mark.
Respondent has not been commonly known by the contested domain name, but is instead known as “FusePlus.”
Respondent uses the <fuseco.com> domain name for commercial gain by mis-leadingly diverting Complainant’s customers to its own site at <fuseplus.com>.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent’s employment of the domain name disrupts Complainant’s business.
Respondent registered and uses the <fuseco.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Policy ¶ 4(a)(i) does not require a trademark registration in order for a UDRP complainant to prove rights in a mark, so long as such a complainant can show common law rights in the mark. Here Complainant has demonstrated to a mini-mally sufficient degree for purposes of Policy ¶ 4(a)(i) that it has rights in the unregistered FUSECO trademark owing to its long and continuous use of the mark in commerce and the consequent creation of secondary meaning in the mark, all as set out in the Complaint. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a UDRP complainant need not own a trademark registration for the ZEE CINEMA mark in order to demon-strate its rights in that mark under Policy ¶ 4(a)(i)). To the same effect, see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark, adequate for purposes of Policy ¶ 4(a)(i), where its use was continuous and ongoing, and secondary meaning was established).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that the <fuseco.com>domain name is substantively identical to Complainant’s FUSECO mark. The domain name includes the FUSECO mark in its entirety, adding only the generic top-level domain (“gTLD”) “.com.” Be-cause every domain name requires a gTLD, this alteration of the mark, made in creating the domain name, fails to avoid the realm of confusing similarity or substantive identity under the standards of the Policy. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding the <pomellato.com> domain name identical to a UDRP complainant’s mark because the addition of the gen-eric top-level domain (gTLD) “.com” after the mark POMELLATO to form the domain name was not relevant to a Policy ¶ 4(a)(i) analysis.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <fuseco.com> domain name, but is instead known as “FusePlus.” Moreover, there is nothing in the record to suggest that Complainant has authorized Respondent to use its FUSECO mark in a domain name, and the WHOIS record for the <fuseco.com> domain name identifies the registrant only as “FusePlus,” which does not re-semble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel there finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by disputed domain names, and so failed to show that it had rights to or legitimate interests in them as described under that section of the Policy, where the rele-vant WHOIS information, as well as all other evidence in the record, gave no indication that that respondent was commonly known by the domain names, and where a UDRP complainant had not authorized that respondent to register a domain name containing its mark.
We next observe that Complainant contends, without objection from Respondent, that Respondent uses the <fuseco.com> domain name for commercial gain by employing it misleadingly to divert Complainant’s customers to its own website at <fuseplus.com>. This use of the domain name is neitheer 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). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Re-spondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s registration and use of the disputed <fuseco.com> domain name as alleged in the Complaint disrupts Com-plainant’s business. This stands as proof of bad faith in the registration and use of the domain name as described in Policy ¶ 4(b)(iii). On the point, see, for example, Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001).
And, because the evidence shows that Respondent uses the <fuseco.com> domain name, which is substantively identical to complainant’s FUSECO trade-mark, for commercial gain by misleadingly diverting Complainant’s customers to its own site at <fuseplus.com>, we are convinced that Respondent has also demonstrated bad faith in the registration and use of the domain name as provid-ed in Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where a respondent used the domain name to divert to its own website Internet users searching for the website of a UDRP complainant, likely profiting in the process).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <fuseco.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 23, 2013
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