ABB/CON-CISE Optical Group LLC v. Peter Kimerling
Claim Number: FA0805001192831
Complainant is ABB/CON-CISE Optical Group LLC (“Complainant”), represented by Kevin
M. Bovard, of Bingham McCutchen LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <abbconcise.com>, registered with Register.com, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On May
27, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 16, 2008
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@abbconcise.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <abbconcise.com> domain name is confusingly similar to Complainant’s ABB/CON-CISE mark.
2. Respondent does not have any rights or legitimate interests in the <abbconcise.com> domain name.
3. Respondent registered and used the <abbconcise.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ABB/CON-CISE Optical Group LLC,
was formed on
Respondent registered the <abbconcise.com> domain name on April 3, 2007, a few weeks after Complainant’s predecessors merged. Respondent’s disputed domain name resolves to a website which displays links to the websites of Complainant’s competitors.
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.
Complainant has not alleged it registered its ABB/CON-CISE
mark with a governmental authority. The
Panel, however, finds the registration of a mark is not necessary pursuant to
Policy ¶ 4(a)(i), so long as Complainant can establish
common law rights in its ABB/CON-CISE mark. See
Complainant’s predecessor, ABB Optical, used its ABB mark in connection with the distribution of optical products from 1995 until March 12, 2007. Complainant’s other predecessor, CON-CISE Group LLC, used its CON-CISE mark to develop and distribute optical products from 1959 until March 12, 2007. These two predecessor companies merged on March 12, 2007 to form Complainant. Since then, Complainant has used its ABB/CON-CISE mark in conjunction with its offering of optical products and services. Additionally, Complainant has used its ABB/CON-CISE mark on the website resolving from its <abboptical.com> domain name and its other promotional materials since the merger. The Panel finds that Complainant has sufficiently established common law rights through the continuous and ongoing use of its ABB/CON-CISE mark dating back to March 12, 2007 when Complainant began marketing products under its mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
Respondent’s <abbconcise.com>
domain name fully incorporates Complainant’s ABB/CON-CISE mark with the mere
deletions of the forward slash and the hyphen.
Additionally, the addition of a top-level domain, such as “.com,” is
irrelevant in evaluating whether a disputed domain name is confusingly similar
to a mark. Therefore, the Panel finds
Respondent’s deletions of punctuation marks and addition of a
top-level domain do not sufficiently distinguish the disputed domain
name from Complainant’s mark. Therefore,
the Panel finds Respondent’s <abbconcise.com>
domain name is confusingly similar to Complainant’s ABB/CON-CISE mark pursuant
to Policy ¶ 4(a)(i).
See Mrs.
World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges Respondent does not possess rights and
legitimate interests in the <abbconcise.com>
domain name. Initially, Complainant has
the burden to establish a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
name. Once Complainant has produced a
sufficient prima facie case, the
burden shifts to Respondent to prove it does have rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel
finds Complainant has sufficiently established a prima facie case under Policy ¶ 4(a)(ii). Respondent has failed to file a Response in
these proceedings. Therefore, the Panel
may presume Respondent lacks rights and legitimate interests in the disputed
domain name. The Panel, however, will
examine the record to determine if Respondent has rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(c). 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum
Respondent’s <abbconcise.com>
domain name resolves to a website which displays links to the the websites of
Complainant’s competitors. The Panel
finds Respondent’s use of its <abbconcise.com>
domain name 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). See DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is
using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat.
Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain
names for a bona fide offering of goods or services nor a legitimate
noncommercial or fair use because the respondent used the names to divert
Internet users to a website that offered services that competed with those
offered by the complainant under its marks).
Additionally, Respondent lacks rights and legitimate
interests in the disputed domain name because Respondent does not appear to be
commonly known by the <abbconcise.com>
domain name. The WHOIS information lists
Respondent as “Peter Kimerling.” The
record indicates Complainant has not authorized Respondent to utilize its
ABB/CON-CISE mark in any manner.
Therefore, the Panel concludes Respondent is not commonly known by the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
The Panel find Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Respondent’s disputed domain name resolves to a website
which displays links to the websites of Complainant’s competitors. The Panel finds Respondent’s use of the
disputed domain name constitutes diversion and is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008)
(“The disputed domain names resolve to websites that list links to competitors
of Complainant, evidence that Respondent intends to disrupt Complainant’s
business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum
Also, Respondent presumably receives compensation from its
use of the disputed domain name in the form of click-through fees. Therefore, the Panel finds Respondent is
using the confusingly similar <abbconcise.com>
domain name to profit from the goodwill Complainant has established in its ABB/CON-CISE
mark.
The Panel finds Respondent’s actions are evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); see
also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if the respondent profits from its diversionary use of the
complainant's mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Additionally, Respondent registered the disputed domain name
only a few weeks after Complainant’s predecessors merged and Complainant began
using its ABB/CON-CISE mark. The Panel finds
Respondent’s actions are evidence of opportunistic registration and use in bad
faith pursuant to Policy ¶ 4(a)(iii). See
Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the
respondent’s registration of the <seveballesterostrophy.com> domain name
at the time of the announcement of the Seve Ballesteros Trophy golf tournament
“strongly indicates an opportunistic registration”); see also Pavillion Agency,
Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that the “domain names are so obviously connected with the Complainants that
the use or registration by anyone other than Complainants suggests
‘opportunistic bad faith’”).
The Panel finds Policy ¶
4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <abbconcise.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: July 1, 2008
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