national arbitration forum

 

DECISION

 

ABB/CON-CISE Optical Group LLC v. Peter Kimerling

Claim Number: FA0805001192831

 

PARTIES

Complainant is ABB/CON-CISE Optical Group LLC (“Complainant”), represented by Kevin M. Bovard, of Bingham McCutchen LLP, California, USA.  Respondent is Peter Kimerling (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <abbconcise.com>, registered with Register.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 23, 2008.

 

On May 22, 2008, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <abbconcise.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name.  Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 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 June 21, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

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.

 

FINDINGS

Complainant, ABB/CON-CISE Optical Group LLC, was formed on March 12, 2007 by a merger between ABB Optical, which was founded in 1995 and CON-CISE LLC, which was founded in 1959.  Complainant has provided evidence of its formation on March 12, 2007 through documentation of its incorporation in the state of Delaware.  Since its merger, Complainant has operated under its ABB/CON-CISE mark as a distributor of optical products including contact lenses, ophthalmic lenses, frames, sunglasses, accessories and contact lens solutions.  Complainant also manufactures Gas Permeable contact lenses.  Complainant’s predecessor, ABB Optical, first had a presence on the Internet on October 2, 1998 at the <abboptical.com> domain name.  After the merger Complainant continued its web presence at the <abboptical.com> domain name using the ABB/CON-CISE mark to market Complainant’s products on the resolving website. 

 

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. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

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 Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

 

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 Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); 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 Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

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 Dec. 1, 2004) (finding that because the respondent failed to submit a response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).

 

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 Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

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 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).”).

 

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.

 

DECISION

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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