Norgren, Inc. v. NICK CLEGG / TITAN INSTRUMENTATION LTD
Claim Number: FA1401001540816
Complainant is Norgren, Inc. (“Complainant”), represented by Susanna Semaszczuk of The Ollila Law Group, Colorado, USA. Respondent is NICK CLEGG / TITAN INSTRUMENTATION LTD (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <norgrenair.com>, <norgrenregulators.com>, <norgrencylinders.com>, and <norgrenfilters.com>, registered with Tucows Domains 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2014; the National Arbitration Forum received payment on January 27, 2014.
On January 27, 2014, Tucows Domains Inc. confirmed by e-mail to the National Arbitration Forum that the <norgrenair.com>, <norgrenregulators.com>, <norgrencylinders.com>, and <norgrenfilters.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 January 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 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@norgrenair.com, postmaster@norgrenregulators.com, postmaster@norgrencylinders.com, and postmaster@norgrenfilters.com. Also on January 28, 2014, 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 February 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 names be transferred from Respondent to Complainant.
A. Complainant
i. There is no evidence that Respondent has, as a business or other organization, been commonly known by the domain names.
ii. Once a user accesses any of the disputed domain names and clicks through the product links, they are diverted to Respondent’s homepage for valves.
i. Respondent registered the disputed domain names in bad faith to disrupt Complainant’s business, because Respondent’s domain names direct Internet users to Respondent’s websites that offer products in competition with Complainant.
ii. Respondent is capitalizing on the likelihood Internet users will associate the goods sold on the disputed domain names’ website with official NORGREN goods.
iii. It is clear that Respondent was aware of Complainant’s NORGREN mark when it registered the domain names, and therefore, Respondent had notice of Complainant’s rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Norgren, Inc., has used its NORGREN mark for many years in the motion and fluid flow control products industry. Complainant is the owner of trademark registrations with the United Kingdom Intellectual Property Office (“UKIPO”) for the NORGREN mark (e.g., Reg. No. 981,468, registered October 6, 1971).
Respondent, NICK CLEGG / TITAN INSTRUMENTATION LTD, registered the <norgrenair.com>, <norgrenregulators.com>, <norgrencylinders.com>, and <norgrenfilters.com> domain names on March 13, 2013. Respondent uses the disputed domain names to provide click-thru links to Respondent’s homepage for valves, which then lists all the products sold through Respondent’s site, including Complainant and several competitors. See Complainant’s Annexes F1–F4. Respondent holds itself out as an authorized distributor or supplier of Complainant. See Complainant’s Annexes H and I. However, Complainant says that Respondent is not a formal authorized distributor.
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 owns rights in the NORGREN mark under Policy ¶ 4(a)(i) through trademark registrations with the UKIPO. See DatingDirect.com Ltd. v. Turner, FA 349013 (Nat. Arb. Forum Dec. 16, 2004) (distinctive nature of the complainant’s DATINGDIRECT.COM mark recognized through registration with the United Kingdom Patent Office).
Respondent’s <norgrenair.com>, <norgrenregulators.com>, <norgrencylinders.com>, and <norgrenfilters.com> domain names incorporate Complainant’s registered NORGREN trademark in its entirety and adds the descriptive terms “air,” “cylinders,” “filters,” or “regulators.” Respondent’s addition of a descriptive term to Complainant’s mark in the disputed domain names is inconsequential to a Policy ¶ 4(a)(i) determination. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Respondent’s inclusion of a gTLD does not distinguish the disputed domain names from Complainant’s NORGREN mark under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Therefore, the Panel finds that Respondent’s <norgrenair.com>, <norgrenregulators.com>, <norgrencylinders.com>, and <norgrenfilters.com> domain names are confusingly similar to Complainant’s NORGREN mark under Policy ¶ 4(a)(i).
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).
Respondent is not commonly known by the <norgrenair.com>, <norgrenregulators.com>, <norgrencylinders.com>, and <norgrenfilters.com> domain names under to Policy ¶ 4(c)(ii). The WHOIS information for the <norgrenair.com>, <norgrenregulators.com>, <norgrencylinders.com>, and <norgrenfilters.com> domain names identifies Respondent as “NICK CLEGG / TITAN INSTRUMENTATION LTD.” Complainant says that Respondent is not authorized to use Complainant’s mark. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006)( 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 respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark).
Respondent uses the disputed domain names to provide click-thru links to Respondent’s homepage for valves. See Complainant’s Annexes F1–F4. Respondent’s purpose in registering and using the disputed domain names is to trade on the recognition of Complainant’s NORGREN mark and to deliberately increase Internet traffic to its websites. Respondent’s homepage <titaninist.com> sells valves then lists all of the products sold through its website, including Complainant’s products and products of Complainant’s competitors. Respondent is using its websites to offer Complainant’s products and competitor’s products in the same industrial field as Complainant. Whether Respondent is an authorized distributor or supplier of Complainant is immaterial as Respondent fails to use the site to sell only Complainant’s trademarked goods. See Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001)(To be a “bona fide” offering, “Respondent must use the site to sell only the trademarked goods. . . ”). Therefore, the Panel finds that Respondent’s use of the <norgrenair.com>, <norgrenregulators.com>, <norgrencylinders.com>, and <norgrenfilters.com> domain names to sell Complainant’s products and competing products is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent registered the <norgrenair.com>, <norgrenregulators.com>, <norgrencylinders.com>, and <norgrenfilters.com> domain names in bad faith to disrupt Complainant’s business. Respondent’s domain names direct Internet users to Respondent’s websites that offer products in competition with Complainant. Once a user accesses any of the disputed domain names and clicks through the product links, they are diverted to Respondent’s homepage for valves. See Complainant’s Annexes F1–F4. Respondent’s homepage <titaninist.com> sells valves through its website, including Complainant’s products and products of Complainant’s competitors. The Panel finds that Respondent has registered and is using the <norgrenair.com>, <norgrenregulators.com>, <norgrencylinders.com>, and <norgrenfilters.com> domain names in bad faith under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent registered the <norgrenair.com>, <norgrenregulators.com>, <norgrencylinders.com>, and <norgrenfilters.com> domain names in bad faith, because Respondent’s domain names direct Internet users to Respondent’s websites that offer products in competition with Complainant. Respondent is using the websites located at the disputed domain names to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation, or endorsement of its website. Therefore, the Panel finds that Respondent registered and is using the <norgrenair.com>, <norgrenregulators.com>, <norgrencylinders.com>, and <norgrenfilters.com> domain names in bad faith under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Respondent had actual knowledge of Complainant's mark prior to registration of the disputed domain names. Therefore, Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <norgrenair.com>, <norgrenregulators.com>, <norgrencylinders.com>, and <norgrenfilters.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 10, 2014
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