Emerson Electric Co. and Rosemount, Inc. v. Above.com Domain Privacy
Claim Number: FA1310001524784
Complainant is Emerson Electric Co. and Rosemount, Inc. (“Complainant”), represented by Suzanne Bergner of Emerson Electric Co., Missouri, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emersonrosemount.com>, registered with ABOVE.COM PTY LTD.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2013; the National Arbitration Forum received payment on October 16, 2013.
On October 17, 2013, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <emersonrosemount.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. 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 October 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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@emersonrosemount.com. Also on October 17, 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 November 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
Complainant
a) Complainant has been in business since 1890, and today it is a diversified global manufacturing and technology company offering a wide range of products and services in the industrial, commercial and consumer markets. Complainant has approximately 133,000 employees and 325 manufacturing locations worldwide.
b) Emerson Electric acquired Rosemount in 1976. Rosemount manufactures and sells sensors that measure pressure, temperature, level, and flow for a large number of applications. By acquiring and subsequently promoting Rosemount, Inc., Emerson has rights in the ROSEMOUNT mark, along with Complainant’s inherent rights in the EMERSON mark.
c) Complainant has rights in the EMERSON and ROSEMOUNT marks. Complainant is the owner of a registration for the EMERSON mark with IP Australia (“IPA”) (Reg. No. 872,230 registered July 7, 2003) and registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 111,931 registered August 15, 1916). Complainant is also the owner of a registrations for the ROSEMOUNT mark with the USPTO (e.g., Reg. No. 903,838 registered December 8, 1970).
d) Respondent’s <emersonrosemount.com> domain name is confusingly similar to Complainant’s EMERSON and ROSEMOUNT marks. The disputed domain name combines both of the marks in their entirety while adding the generic top-level domain (“gTLD”) “.com.”
e) Respondent does not have any rights or legitimate interests in the <emersonrosemount.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its EMERSON and ROSEMOUNT marks in any way.
b. The <emersonrosemount.com> domain name resolves to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant presumes Respondent receives click-through revenue from these linked websites.
f) Respondent registered and used the <emersonrosemount.com> domain name in bad faith.
a. Respondent is using the disputed domain name to redirect Internet users to a confusingly similar domain name that resolves to a website featuring links to third-party websites, and Respondent is presumably receiving click-through revenue in the process.
b. Respondent had knowledge of Complainant’s EMERSON and ROSEMOUNT marks prior to registering the <emersonrosemount.com> domain name. Complainant points to its long-standing use of the EMERSON and ROSEMOUNT marks, dating back to 1890 and 1967 respectively.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: Emerson Electric Co. and Rosemount, Inc. Emerson Electric acquired Rosemount in 1976.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and it will treat them all as a single entity in this proceeding. In this decision, the Complainants will be collectively referred to as “Complainant.”
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 it has rights in the EMERSON and ROSEMOUNT marks. Complainant states it is the owner of registrations for the EMERSON mark with IPA (Reg. No. 872,230 registered July 7, 2003) and with the USPTO (e.g., Reg. No. 111,931 registered August 15, 1916). Complainant states it is also the owner of a registrations for the ROSEMOUNT mark with the USPTO (e.g., Reg. No. 903,838 registered December 8, 1970). In regards to the ROSEMOUNT trademark registrations, Past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country to demonstrate rights in a mark in a way which satisfies Policy ¶ 4(a)(i) requirements. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, because Complainant holds valid trademark registrations for EMERSON and ROSEMOUNT marks, the Panel finds that Complainant has rights in the marks under Policy ¶ 4(a)(i).
Complainant claims Respondent’s <emersonrosemount.com> domain name is confusingly similar to Complainant’s EMERSON and ROSEMOUNT marks. The disputed domain name combines both of the marks in their entirety while adding the gTLD “.com.” The Panel finds that combining a complainant’s marks does not negate a finding a confusing similarity. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name). The Panel finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <emersonrosemount.com> domain name is confusingly similar to Complainant’s EMERSON and ROSEMOUNT marks under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 contends that Respondent does not have any rights or legitimate interests in the <emersonrosemount.com> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its EMERSON and ROSEMOUNT marks in any way. The Panel notes the WHOIS record for the disputed domain name lists “Above.com Domain Privacy” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the EMERSON and ROSEMOUNT marks, and neither the WHOIS information nor the other evidence on record appears to indicates otherwise, the Panel finds that Respondent is not commonly known by the <emersonrosemount.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims the <emersonrosemount.com> domain name resolves to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant presumes Respondent receives click-through revenue from these linked websites. In previous cases, panels have found that using a disputed domain to promote third-party links of a complainant’s competitors does not constitute a bona fide offering a goods or services or a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent’s use of the <emersonrosemount.com> domain name that resolves to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant contends Respondent registered and used the <emersonrosemount.com> domain name in bad faith. Complainant claims Respondent is using the disputed domain name to redirect Internet users to a confusingly similar domain name that resolves to a website featuring links to third-party websites, and Respondent is presumably receiving click-through revenue in the process. In previous cases, panels have found that using a disputed domain name to attract and mislead Internet users for a respondent’s own commercial gain constitutes bad faith and registration. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Therefore, the Panel finds that Respondent registered and is using the <emersonrosemount.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is using the disputed domain name to redirect Internet users to a confusingly similar domain name that resolves to a website featuring links to third-party websites, and Respondent is presumably receiving click-through revenue in the process.
Complainant asserts Respondent had knowledge of Complainant’s EMERSON and ROSEMOUNT marks prior to registering the <emersonrosemount.com> domain name. Complainant points to its long-standing use of the EMERSON and ROSEMOUNT marks, dating back to 1890 and 1967 respectively. Constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, the Panel determines Respondent was well aware of Complainant’s marks, and concludes that Respondent had actual notice of Complainant's marks and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <emersonrosemount.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 13, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page