Coltec Industries Inc. v.
Claim Number: FA0707001043033
Complainant is Coltec Industries Inc. (“Complainant”), represented by Ian
O'Neill, of Holland & Hart LLP, 1800 Broadway,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <quincycompresor.com>, registered with Domaindoorman, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 20, 2007.
On July 25, 2007, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <quincycompresor.com> domain name is registered with Domaindoorman, LLC and that Respondent is the current registrant of the name. Domaindoorman, LLC has verified that Respondent is bound by the Domaindoorman, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July
31, 2007, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 20, 2007
by which Respondent could file a response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent's registration as technical, administrative and billing contacts,
and to postmaster@quincycompresor.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 23, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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." 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 makes the following assertions:
1. Respondent’s <quincycompresor.com> domain name is confusingly similar to Complainant’s QUINCY COMPRESSOR mark.
2. Respondent does not have any rights or legitimate interests in the <quincycompresor.com> domain name.
3. Respondent registered and used the <quincycompresor.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Coltec Industries Inc., is a worldwide leader in quality air products and technologies. Through its operating division, Quincy Compressor, Complainant manufactures and markets rotary screw and reciprocal air compressors, vacuum pumps, and air treatment products. Complainant has continuously used the QUINCY COMPRESSOR mark since 1923 in connection with its air products, and owns a trademark registration for the QUINCY COMPRESSOR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 578,458 issued August 11, 1953). Complainant also promotes its products worldwide from a website located at the <quincycompressor.com> domain name.
Respondent registered the <quincycompresor.com> domain name on December 25, 2006. Respondent’s disputed domain name resolves to
a website that features hyperlinks to the websites of Complainant’s direct
competitors. In addition, Respondent has
been the respondent in several previous UDRP decisions in which the disputed
domain names in those cases were transferred from Respondent to the respective
complainants. See O’Reilly Auto., Inc. v.
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."
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.”).
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.
The Panel finds that Complainant has sufficiently
established its rights in the QUINCY COMPRESSOR mark pursuant to Policy ¶ 4(a)(i) due to its trademark registration with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18,
2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); see
also
Complainant alleges that Respondent’s <quincycompresor.com> domain name is confusingly similar to Complainant’s QUINCY COMPRESSOR mark, and the Panel agrees. The disputed domain name incorporates the entire mark, merely omitting one letter “s” from the word COMPRESSOR. This alteration does not change the overall impression of the mark, and, moreover, the word “compresor” is the Spanish language translation of the word “compressor,” which also indicates confusing similarity under the Policy. In addition, the inclusion of the generic top-level domain “.com” to the mark is irrelevant for the purposes of Policy ¶ 4(a)(i), as a top-level domain is a required element of all domain names. Thus, the Panel finds that the <quincycompresor.com> domain name is confusingly similar to Complainant’s QUINCY COMPRESSOR mark under Policy ¶ 4(a)(i). See Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Prop., D2005-1085 (WIPO Jan. 2, 2006) (“[A] semantic similarity between a trademark and a domain name can also exist if the trademark and the domain name contain word elements of different languages if a considerable part of the public understands the meaning of the translation.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant further alleges that Respondent lacks rights and legitimate interests in the <quincycompresor.com> domain name. Initially, Complainant has the burden of proving this allegation. Once Complainant has made a prima facie case, however, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. In the instant case, the Panel finds that Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Based on Respondent’s failure to answer the Complaint, the Panel presumes that Respondent lacks rights and legitimate interests in the <quincycompresor.com> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will still examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Respondent’s <quincycompresor.com>
domain name resolves to a website featuring links to the websites of
Complainant’s direct competitors, and the Panel presumes that Respondent earns
click-through fees when Internet users click on these links. This constitutes neither 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), and is indicative of Respondent’s lack of
rights and legitimate interests in the disputed domain name. See TM Acquisition Corp. v.
Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that the respondent’s diversionary use of the complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to the complainant’s competitors, was not a bona fide
offering of goods or services); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site).
In addition, there is nothing in the record to suggest, and
Respondent’s WHOIS information does not indicate, that Respondent is commonly
known by the <quincycompresor.com>
domain name. Moreover, Complainant
has not permitted Respondent to use the QUINCY COMPRESSOR mark for any
purpose. Thus, the Panel finds that
Respondent lacks rights and legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See
Charles Jourdan Holding AG v. AAIM, D2000-0403
(WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent
is not a licensee of the complainant; (2) the complainant’s prior rights in the
domain name precede the respondent’s registration; (3) the respondent is not
commonly known by the domain name in question); see also Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As mentioned above, Respondent is using the <quincycompresor.com> domain
name, which is confusingly similar to Complainant’s QUINCY COMPRESSOR mark, to
redirect Internet users to a website displaying links to Complainant’s direct
competitors. The Panel finds that such
use constitutes a disruption of Complainant’s business and qualifies as bad
faith registration and use under Policy ¶ 4(b)(iii). See 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); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered
a domain name confusingly similar to Complainant's mark to divert Internet
users to a competitor's website. It is a reasonable inference that Respondent's
purpose of registration and use was to either disrupt or create confusion for
Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii)
[and] (iv).”).
The Panel presumes that Respondent benefits commercially through click-through fees when Internet users are redirected to the website that resolves from the disputed domain name. Respondent is thus capitalizing on the likelihood that users will be confused as to Complainant’s affiliation with the disputed domain name, and this is further evidence that Respondent registered and is using the <quincycompresor.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
In addition, Respondent has been the respondent in several
previous UDRP decisions in which the disputed domain names in those cases were
transferred from Respondent to the respective complainants. See O’Reilly Auto., Inc. v.
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <quincycompresor.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., , Panelist
Dated: August 31, 2007
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