Prestolite Electric Inc. v. Domain Privacy Service FBO Registrant
Claim Number: FA1312001535774
Complainant is Prestolite Electric Inc. (“Complainant”), represented by Patrick J. Arnold Jr. of McAndrews, Held & Malloy, Ltd., Illinois, USA. Respondent is Domain Privacy Service FBO Registrant (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <prestoliteelectric.com> and <leeceneville.com>, registered with FastDomain Inc.
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.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 20, 2013; the National Arbitration Forum received payment on December 20, 2013.
On December 23, 2013, FastDomain Inc. confirmed by e-mail to the National Arbitration Forum that the <prestoliteelectric.com> and <leeceneville.com> domain names are registered with FastDomain Inc. and that Respondent is the current registrant of the names. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 December 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 13, 2014 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@prestoliteelectric.com and postmaster@leeceneville.com. Also on December 23, 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.
A timely Response was received and determined to be complete on December 27, 2013.
<<If applicable, enter date Additional Submission was received here – otherwise delete this point. If Additional Submission does not comply with Supplemental Rule 7, please address here.>>
On January 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Complainant states that it is one of the exclusive licensees of the federally registered trademark PRESTOLITE, and it is the owner of the federally registered LEECE-NEVILLE mark, both of which are used for various types of electrical goods, including generators, motors, alternators, and starters. Complainant provides the Panel with evidence that both marks are registered with the USPTO: PRESTOLITE (Reg. No. 742,943 registered January 1, 1963); LEECE-NEVILLE (Reg. No. 785,917 registered March 2, 1965). See Complainant’s Annexes E and F. Therefore, the Panel finds that Complainant has rights in the PRESTOLITE and LEECE-NEVILLE marks pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant alleges that the <prestoliteelectric.com> domain name is confusingly similar to the PRESTOLITE mark. Complainant argues that the addition of “electric,” which describes the nature of the products sold by Complainant, adds to confusing similarity, while the addition of the gTLD “.com” provides little differentiation. Panels have found similarly. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Therefore, the Panel finds that the <prestoliteelectric.com> domain name is confusingly similar to the PRESTOLITE mark under Policy ¶ 4(a)(i).
Complainant further asserts that the <leeceneville.com> domain name is identical to the LEECE-NEVILLE mark. Complainant contends that the removal of the hyphen and addition of the gTLD “.com” fail to create any distinction between the domain name and the allegedly-infringed-upon mark. In Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000), the panel held, “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark." Moreover, in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the panel concluded that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. Accordingly, the Panel holds that the <leeceneville.com> domain name is identical to the LEECE-NEVILLE mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has met its burden of showing the existence of and its rights in the marks in question; it has shown that the domain names are identical or confusingly similar. Respondent offers no rebuttal.
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
As noted above, Complainant must first make a prima facie case as to all elements; here, Complain ant has shown that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii); at that point, the burden shifted 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 states that Respondent is not commonly known by either of the disputed domain names, and neither Complainant nor Complainant’s licensor has authorized, either explicitly or implicitly, Respondent to use the at-issue mark. The WHOIS information for the disputed domain names lists “Domain Privacy Service FBO Registrant” as the domain name registrant. Respondent identifies itself in its Response as “James Ross/President Allstar Electric, Inc.” In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel determined 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. As such, the Panel finds that Respondent is not commonly known by the <prestoliteelectric.com> and <leeceneville.com> domain names under Policy ¶ 4(c)(ii).
Next, Complainant shows that Respondent has the <prestoliteelectric.com> and <leeceneville.com> domain names resolve to webpages featuring links to the website of WAIglobal, a company that sells products that directly compete with Complainant’s products. See Complainant’s Exs. A, C. The panel in Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), concluded that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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 diverting of Internet users through the links on the disputed domain names to a competitor of Complainant is not a Policy ¶ 4(c)(i) bona fide offering of goods, or Policy ¶ 4(c)(iii) services or a legitimate noncommercial or fair use.
Complainant has shown that prior to Respondent’s linking to WAIglobal, the disputed domain names resolved to websites that appeared to be operated by Allstar Electric, Inc., a company that sells starter and alternator products made by various manufacturers. See, e.g., Complainant’s Ex. H. Panels have previously held that the use of allegedly infringing domain names to host competing websites does not justify receiving the protections of Policy ¶¶ 4(c)(i) and 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Thus, the Panel finds that Respondent’s previous use of the disputed domain names to host a website offering competing goods and services is neither a bone fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant asserts that the disputed domain names were registered and are being used in bad faith. Respondent’s previous use of the disputed domain names and subsequent change of the content after receiving notice of this dispute is only some evidence of bad faith given Respondent’s contention that it changed the content in response to the Complainant’s notice.
Certainly, the disputed domain names previously resolved to websites which competed with Complainant’s offerings. See Complainant’s Ex. H. Panels have previously held that the registration of a domain name for the purpose of running a competing website is evidence of bad faith. See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market). Therefore, the Panel finds that Respondent’s previous competing use of the disputed domain names is evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also asserts that Respondent is using the <prestoliteelectric.com> and <leeceneville.com> domain names for commercial gain and that Respondent intends for consumers to believe that they have reached Complainant somehow approves of the competing hyperlink advertisements. According to Complainant, Respondent uses Complainant’s marks to attract traffic through a blatant and unmistakable usurpation of the marks. Complainant argues that Respondent has, by creating a likelihood of confusion, intentionally profited from the improper use of Complainant’s marks. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found 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. Respondent acted similarly in the instant case, and thus the clear inference is that Respondent registered and used the <prestoliteelectric.com> and <leeceneville.com> domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that, given the distinctiveness of Complainant’s marks, especially when used in connection with alternators and starters, it is inconceivable that Respondent “just so happened” to select the <prestoliteelectric.com> and <leeceneville.com> domain names to host its own websites providing links and information to competing products. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds, based upon the Respondent’s statements in the Response, that Respondent had actual knowledge of the marks and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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).
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.
The domain names and marks are identical or confusingly similar pursuant to Policy ¶ 4(a)(i). As noted above, Respondent did not attempt to rebut this allegation.
As fully discussed above, Respondent holds no rights or legitimate interests in the marks or the derived domain names and Policy ¶ 4(a)(ii) has been satisfied.
Respondent has admitted, and the facts reflect, registration and use in bad faith, or violations of Policy ¶ 4(a)(iii)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <prestoliteelectric.com> and <leeceneville.com> domain names be TRANSFERRED from Respondent to Complainant .
R. Glen Ayers, Panelist
Dated: January 8, 2014
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