D.P.L. Enterprises, Inc. v. Aviram Segal
Claim Number: FA1402001543779
Complainant is D.P.L. Enterprises, Inc. (“Complainant”), represented by Mark Borghese, Nevada, USA. Respondent is Aviram Segal (“Respondent”), represented by Jeffrey R. Schell, Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aircareuv.com>, registered with eNom, 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.
Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 14, 2014; the National Arbitration Forum received payment on February 14, 2014.
On February 18, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <aircareuv.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 February 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 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@aircareuv.com. Also on February 19, 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.
A timely Response was received and determined to be complete on February 21, 2014.
An Additional Submission was received from Complainant on February 25, 2014 and determined to be compliant.
On February 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues G. Richard as Panelist.
An Additional Submission was received from Respondent on March 3, 2014 and determined to be compliant.
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 name be transferred from Respondent to Complainant.
A. Complainant
1. Policy ¶ 4(a)(i) - The domain name that Respondent registered, <aircareuv.com>, is confusingly similar to Complainant’s AIR-CARE trademark.
a. Complainant owns three trademark registrations with the United States Patent and Trademark Office (“USPTO”), including registrations of the standard character marks AIR-CARE (Reg. No. 4,425,197 and Reg. No. 4, 425,196 both registered on October 29, 2013) and registration of the stylized AIR-CARE INDOOR QUALITY SPECIALISTS mark (Reg. No. 2,581,421 registered on June 18, 2002).
b. Complainant has continuously used the AIR-CARE mark in commerce in the United States and abroad since at least as early as September 9, 1979, including on the website <air-care.com>, to provide duct cleaning equipment and air purification products.
i. One of Complainant’s air purification products uses ultraviolet (“UV”) light to destroy chemical and biological contaminants.
c. Other than the addition of the term “UV,” the omission of the hyphen and the addition of the .com suffix, Respondent’s domain name is identical to Complainant’s trademark.
d. The addition of the generic term “UV” does not sufficiently distinguish the disputed domain from Complainant’s trademark.
e. Respondent’s domain name begins with the Complainant’s trademark and is pronounced the same despite the hyphen.
f. The addition of the .com generic top-level domain is insufficient to differentiate Respondent’s domain name from Complainant’s trademark.
2. Policy ¶ 4(a)(ii) - Respondent has no rights or legitimate interests in the Domain Name
a. Respondent has no relationship with Complainant.
i. Respondent has never requested or received any authorization, permission or license from Complainant to use the AIR-CARE mark in any way.
b. Respondent has never been commonly known by the domain name <aircareuv.com>
i. As shown by the WHOIS information for <aircareuv.com> on record, Respondent is known by the name “Aviram Segal.”
c. Respondent has not used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services nor is the Respondent making a legitimate noncommercial or fair use of the domain name.
i. Respondent attempts to pass himself off as Complainant online by prominently displaying the name “AIR-CARE” at the top of the webpage and provides no business name or source indicators.
3. Policy ¶ 4(a)(iii) - Respondent registered and used the domain name in bad faith
a. Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
b. Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.
i. Respondent is using the <aircareuv.com> domain to generate revenue through selling unauthorized products by using Complainant’s registered trademark in the domain name and the title of the site.
c. Respondent had actual knowledge of Complainant and its rights in the trademark AIR-CARE
i. Complainant’s marks are federally registered, which provides notice of Complainant’s rights.
ii. Complainant has prominently used the AIR-CARE mark for more than thirty (30) years and has offered its goods and services at <air-care.com> since 1996.
iii. Respondent registered the <aircareuv.com> domain name in January 2012.
B. Respondent
1. Policy ¶ 4(a)(i) – Respondent does not dispute the similar nature of Respondent’s Domain Name and Complainant’s word marks.
a. Complainant registered the word marks only after registration by the Respondent of the domain name <aircareuv.com>.
b. Respondent’s domain name does not cause confusion with Complainant’s stylized mark because Respondent did not incorporate any graphics or styling that would confuse consumers.
2. Policy ¶ 4(a)(ii) – Respondent has rights and legitimate interests in the <aircareuv.com> domain name
a. Respondent has been commonly known by the <aircareuv.com> domain name even if he did not acquire trademark rights in the name.
i. Respondent has used the domain in connection with the sale of goods related to air care since 2012.
ii. Respondent’s website includes a variety of testimonials related to the air care products Respondent routinely sells.
b. Respondent has made a bona fide offering of air care goods at the disputed domain name since 2012.
i. Respondent registered the <aircareuv.com> domain name to make generic reference to products in the air care category, which Respondent sells.
ii. Complainant’s Complaint lacks any evidence showing that Respondent has done anything other than utilize the disputed domain name to further Respondent’s legitimate business related to air care products.
c. Respondent does not attempt to pass himself off as Complainant online.
i. Respondent had no awareness of Complainant whatsoever upon Respondent’s registration of the <aircareuv.com> domain name.
ii. The graphics and other materials contained in Respondent’s website do not cause any confusion with Complainant’s stylized mark. A comparison of Complainant’s stylized mark with Respondent’s website shows that Respondent has not incorporated any graphics or styling that would in any way confuse consumers with regard to Complainant’s stylized mark.
3. Policy ¶ 4(a)(iii) - Respondent did not register the <aircareuv.com> domain primarily in bad faith.
a. Respondent only offers goods and services associated with the generic and descriptive nature of the words “air care.”
b. Respondent has caused no likelihood of confusion with the stylized mark used by Complainant. The logos and graphics used on Respondent’s website (as displayed in Complainant’s Exhibit D) demonstrate no similarity whatsoever to Complainant’s stylized mark (as shown in Complainant’s Exhibit B).
c. Respondent had no knowledge of Complainant or its marks at the time Respondent registered the <aircareuv.com> domain name.
i. Complainant had yet to file its trademark applications for the AIR-CARE standard character mark.
4. Complainant has engaged in reverse domain name hijacking in bringing this dispute.
a. Complainant has no basis in law or fact to claim any right in Respondent’s <aircareuv.com> domain name, which Respondent acquired prior to Complainant’s registration of its mark.
b. Complainant recently changed the appearance of its website, intentionally and in bad faith, in order to make its website appear more similar to Respondent’s website at <aircareuv.com>.
C. Complainant’s Additional Submissions
1. Respondent makes several misstatements of fact in its Response.
a. Respondent’s claim that Complainant recently changed the content of its website (as purportedly demonstrated by evidence from <archive.org>) is unfounded and appears to be an intentional attempt to mislead the Panel.
b. Respondent claims that Complainant did not own a “relevant” trademark registration at the time Respondent registered the <aircareuv.com> domain name in 2012, but Complainant’s registration of the stylized AIR-CARE INDOOR AIR QUALITY SPECIALISTS mark dates back to 2002.
2. For nearly thirty-five years Complainant has been continuously and uninterruptedly using the AIR-CARE mark. The mark is extremely well known in the air duct cleaning and filtration industries, and Complainant has spent hundreds of thousands of dollars over the years promoting its brand. Moreover, Complainant has been selling UV duct filtration systems for nearly five years.
3. Complainant discovered Respondent’s site after receiving complaints from persons who purchased Respondent’s inferior products, believing that products sold on Respondent’s website were from Complainant.
4. Respondent’s purported sales receipts, as referenced in Respondent’s Exhibit B, appear to be sales made by “Tal Segal” rather than Respondent, indicating the absence of a bona fide offering of goods.
D. Respondent’s Additional Submissions
1. Complainants submissions do not prove that Respondent lacks legitimate interest in the domain name <aircareuv.com>. The terms “air” and “care” describe the generic category of products sold by Respondent.
2. Complainant made misleading statements with respect to its website.
a. Complainant bases its argument of alleged confusion on a webpage that has no prominence whatsoever within the overall context of Complainant’s website.
b. The front page of Complainant’s website, as provided in Respondent’s Exhibit G, does not resemble the front page of Respondent’s website, as provided in Complainant’s Exhibit C and does not create confusion.
3. Respondent did not interfere with the rights held by the Complainant in its marks.
a. Complainant’s stylized mark only offers limited protection that cannot go beyond the graphical, stylized image of the mark. Respondent did not use any stylized mark that is similar to the Complainant’s.
b. The words comprised in Complainant’s stylized mark are merely a portion of the mark and, when examined on their own, are descriptive and weak.
c. Complainant’s standard character marks have no bearing on the matter because they were registered following the registration of the disputed domain name by Respondent. The fact that Complainant registered the standard character marks following the registration of the Respondent’s domain name warrants a finding of reverse domain hijacking.
4. Respondent had no awareness of Complainant and its business at the time of registering the <aircareuv.com> domain name and did not register the domain name in bad faith.
a. Complainant lacks the market visibility allowing the inference that Respondent should have had knowledge of Complainant’s trademark.
b. Respondent lives in Israel while Complainant is based in Las Vegas and appears to market its products locally to Las Vegas area residents, thus Respondent could not have had any knowledge of Complainant.
Complainant D.P.L. Enterprises, Inc. is the owner of three trademark registrations with the United States Patent and Trademark Office (“USPTO”): the stylized AIR-CARE INDOOR AIR QUALITY SPECIALISTS mark (Reg. no. 2,581,421, registered on June 18, 2002) and two standard characters AIR-CARE marks (Reg. nos. 4,425,196 and 4,425,197, each registered on October 29, 2013). The stylized mark disclaims the phrase “Indoor Air Quality Specialists” apart from its use within the mark in its entirety. According to the Registration Certificates filed as Complainant’s Exhibit B, the three marks were first used on September 9th, 1979.
Complainant uses the AIR-CARE mark to provide air purification products and duct cleaning equipment, including UV air purification products that destroy air contaminants. The AIR-CARE mark is employed by Complainant in connection with an online order catalogue at the website resolving from Complainant’s <air-care.com> domain name.
Respondent Aviram Segal registered the <aircareuv.com> domain name on January 14, 2012. The <aircareuv.com> domain name resolves to a website that offers for sale UV air purification products similar to those sold by Complainant.
Complainant established that it had rights in the AIR-CARE mark contained in the <aircareuv.com> domain name. The disputed domain name is identical or confusingly similar to Complainant’s AIR-CARE mark.
Respondent is not commonly known by the <aircareuv.com> domain name and is without rights and legitimate interests in the disputed domain name.
Under the circumstances, it appears more likely than not that Respondent registered the disputed domain name <aircareuv.com> primarily for the purpose of disrupting the business of the Complainant, and attempted to profit by diverting Complainant’s customers and potential customers away from Complainant’s website, which is evidence of bad faith registration and use of the disputed domain name.
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.
Complainant states that it has, since September 1979, continuously used the AIR-CARE mark in commerce in the United States and abroad, including on the website <air-care.com>, to provide duct cleaning equipment and air purification products. The Complainant’s three registration certificates (Reg. No. 4,425,197, Reg. No. 4,425,196 and Reg. No. 2,581,421) indicate that first use in commerce occurred in 1979. Furthermore, Complainant’s Exhibit G shows use as a trademark of the expression AIR-CARE with the symbol TM next to it as of June 19, 2009, which is before January 14, 2012, the date on which the disputed domain name was registered. There is no doubt in the Panel’s mind that the Complainant holds Common Law rights in the AIR-CARE trademark since before the date of registration of the disputed domain name.
Complainant adds that one of its popular air purification products uses UV light to destroy chemical and biological contaminants. This is evidenced by Complainant’s Exhibit C, a screen shot of Complainant’s website promoting its UV air purification product.
Complainant claims to be the owner of three trademark registrations with the USPTO, including registration of the stylized AIR-CARE INDOOR AIR QUALITY SPECIALISTS mark (Reg. No. 2,581,421 registered June 18, 2002). This mark disclaims the phrase “INDOOR AIR QUALITY SPECIALISTS” apart from its use within the mark in its entirety, as is indicated in the Registration Certificate, Complainant’s Exhibit B.
Past panels have agreed that registration of a mark with the USPTO is sufficient to confer rights under the Policy. See, e.g., Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority). The Panel therefore concludes that Complainant’s registration of the stylized AIR-CARE INDOOR AIR QUALITY SPECIALISTS mark with the USPTO establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), prior to the registration of the disputed domain name. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (“The fact that Complainant’s marks incorporate distinctive design elements is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element.”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant alleges that Respondent’s <aircareuv.com> domain name is confusingly similar to a mark in which Complainant has rights. Complainant asserts that Respondent’s addition of the term “uv,” omission of a hyphen, and addition of the “.com” generic top-level domain (“gTLD”) do not distinguish the disputed domain name under Policy ¶ 4(a)(i). See Churchill Ins. Co. Ltd. v. Sutherland, FA 1328073 (Nat. Arb. Forum July 13, 2010), (holding that the <churchilllendinggroup.com> domain name was confusingly similar to the complainant’s CHURCHILL mark, because “the alteration of [c]omplainant’s mark with the addition of a phrase comprised of terms descriptive of [c]omplainant’s business fails to create a distinct domain name that avoids confusing similarity”); see also Herbalife Int’l of Am., Inc. v. Ahmad Sidani, FA 1320691 (Nat. Arb. Forum April 29, 2010) (“including a hyphen and gTLD in the disputed domain name are irrelevant, non- distinguishing modifications under a Policy ¶ 4(a)(i) analysis”).
The Panel notes that the disputed domain name omits the phrase “INDOOR AIR QUALITY SPECIALISTS” from Complainant’s AIR-CARE INDOOR AIR QUALITY SPECIALISTS mark. Past panels have found domain names that omit words from complainants’ multi-word marks confusingly similar to the marks where the domain names replicate the primary terms of the complainants’ marks. See, e.g., Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks). The Panel notes once again that Complainant’s USPTO registration disclaims the phrase “INDOOR AIR QUALITY SPECIALISTS,” suggesting that the term “AIR-CARE” is the dominant term in Complainant’s trademark. Moreover, Respondent’s domain name begins with the Complainant’s mark. Furthermore, the Panel finds that the Complainant has held Common Law rights in the trademark AIR-CARE since prior to January 14, 2012, the date on which the Respondent registered the disputed domain name.
Accordingly, the Panel finds Respondent’s <aircareuv.com> domain name to be confusingly similar to Complainant’s AIR-CARE INDOOR AIR QUALITY SPECIALISTS mark pursuant to Policy ¶ 4(a)(i), despite the fact that Respondent’s domain name does not incorporate the phrase “INDOOR AIR QUALITY SPECIALISTS.”
The relevant provision of the UDRP in relation to the issue of rights or legitimate interests in a domain name is paragraph 4(c) of the Policy, which provides examples of how a respondent may demonstrate its rights to and legitimate interests in a domain name, in responding to a complaint. These are:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It has been established in previous UDRP panel decisions (both under the National Arbitration Forum and WIPO) that a complainant must first establish a prima facie case that the respondent lacks rights and legitimate interests in respect of the domain name in dispute, after which the burden shifts to the 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 there is no evidence that Respondent has been commonly known by the <aircareuv.com> domain name. Complainant and Respondent agree that Respondent has no relationship, affiliation, connection, endorsement, or association with Complainant whatsoever and has not been authorized or permitted to use Complainant’s marks in any way.
Complainant points to the WHOIS information on record, Complainant’s Exhibit A, which identifies Respondent as “Aviram Segal,” as further evidence that Respondent is not commonly known by the disputed domain name. Respondent has provided sales receipts of products sold by Respondent allegedly through the website hosted at <aircareuv.com>, Respondent’s Exhibit B. As Complainant points out in its Additional Submission, these sales appear to be made by “Tal Segal” rather than Respondent. In fact, there is no indication of the domain name <aircareuv.com> anywhere on the said receipts. In his Additional Submission, Respondent provided Tag Segal’s declaration, to the effect that he is the proprietor and manager of the UV air purification product business and that Respondent helped him set up the website resolving from the <aircareuv.com> domain name. This declaration does not demonstrate that Respondent is known by the <aircareuv.com> domain name or that the sales invoked were in fact made through the website resolving from the <aircareuv.com> domain name. Respondent invokes numerous testimonials displayed on his website to demonstrate that he has achieved a reputation and an active base of customers through the use of <aircareuv.com> domain name, however, Respondent has provided no evidence of such testimonials.
The record contains insufficient evidence to support the idea that Respondent is in fact commonly known by the <aircareuv.com> domain name within the meaning of Policy ¶ 4(c)(ii), therefore Respondent is without rights and legitimate interests in the domain on this basis. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the domain name. Complainant avers that Respondent’s website at <aircareuv.com> offers UV air purifiers which are the same or similar to products offered by Complainant under its marks. Complainant’s Exhibit D, a screen shot of Respondent’s website, indicates that the <airecareuv.com> domain name resolves to a website offering competing content.
Complainant urges that Respondent’s use of this confusingly similar domain name improperly diverts Complainant’s customers and potential customers to Respondent’s site, where Respondent sells competing products. In Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), the panel explained that a respondent’s capitalization on the mark of a complainant by attracting Internet users to the respondent’s domain name, where respondent sells competing products, 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).
Complainant also charges Respondent with attempting to pass itself off as Complainant online by prominently displaying the name “AIR CARE” at the top of the resolving website and by providing no other business name or source indicators on its site. In fact, as shown in Complainant’s Exhibit D, a screen shot of Respondent’s website, the full name displayed at the top of Respondent’s website is “AIR CARE UV.” However, the words “AIR CARE” are displayed in white, while the term “UV” appears in black against a black background, making the first words more prominent. The addition of the term UV to the name enforces the Complainant’s position that Respondent is trying to pass himself off as Complainant online, because it is descriptive of the UV air purification product sold by the Complainant, as illustrated in Complainant’s Exhibit C, a screen shot of a product page on Complainant’s website.
Complainant maintains that Respondent’s efforts to pass himself off as Complainant illustrate Respondent’s lack of rights and legitimate interests in the <aircareuv.com> domain name. Complainant cites Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), wherein the panel found that the respondent’s attempts to pass itself off as the complainant online, which was blatant unauthorized use of the complainant’s mark, was also evidence that the respondent had no rights or legitimate interests in the disputed domain name.
Considering that the Complainant’s three trademark registrations claim first use since 1979, that the Complainant’s Exhibit G is evidence of use of the AIR-CARE trademark as of June 19, 2009 and that the Complainant registered the AIR-CARE INDOOR QUALITY SPECIALISTS stylized mark in 2002, while Respondent only registered the disputed domain name on January 14, 2012, Respondent’s contention that he registered the disputed domain name prior to Complainant receiving trademark protection is inaccurate.
The Panel considers it likely that Respondent has attempted to pass himself off as Complainant through his use of the <aircareuv.com> domain name and the display of the name “AIR CARE UV” at the top of the resolving website, with no other indication of source or business name. Respondent has not provided any evidence showing that he is known by the <aircareuv.com> domain name. The sales receipts provided in Respondent’s Exhibit B to demonstrate an active base of customers do not indicate the disputed domain name and no evidence of testimonials from clients has been provided by Respondent.
Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in respect of the <aircareuv.com> domain name and Respondent has failed to show that he has rights or legitimate interests in the domain name, pursuant to Policy ¶ 4(a)(ii).
Complainant contends that Respondent has demonstrated bad faith under Policy ¶ 4(b)(iii) by registering a domain name primarily for the purpose of disrupting the business of a competitor. Specifically, Complainant alleges Respondent is attempting to profit by diverting Complainant’s customers and potential customers away from Complainant’s website and to Respondent’s website, where Respondent sells competing products. Previous panels have agreed that a respondent’s use of a complainant’s mark in a domain name to divert customers to respondent’s competing business demonstrates bad faith under Policy ¶ 4(b)(iii). See, e.g., Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
On the other hand, Respondent claims that he only offers goods and services associated with the generic and descriptive nature of the words “air care,” that he never had any intent to take advantage of any of the Complainant’s rights and that he had no knowledge of the Complainant at the time of registration of the <aircareuv.com> domain name.
Respondent sells competing products and targets, as far as the sale receipts provided in the name of Tag Segal (Respondent’s Exhibit B) show, an American clientele. In his Additional Submission, Respondent asserts that Complainant markets its products mainly locally, to Las Vegas area residents, as allegedly indicated on the Complainant’s website. Complainant asserts, on the contrary, that its mark has acquired distinctiveness though use all over the United States.
Even assuming that Complainant sells mainly in Las Vegas, as Respondent claims, the parties are operating as direct competitors. Complainant has been in the air purifying products market for nearly 35 years while Respondent recently entered the marked, following Mr. Tag Segal’s discovery that a certain UV light mechanism was effective against mold, as per Respondent’s Exhibit D. By then, according to an Air Purification Equipment Manufacturing Industry Press Release (Respondent’s Exhibit E), the air purification product industry was already a multi-billion dollars industry in the United States.
Respondent claims that he didn’t have any knowledge of Complainant’s business and trademark at the moment he registered the disputed domain name. In his Additional Submission Respondent attempts to calculate Complainant’s potential revenue in order to prove that Complainant does not have enough market visibility to justify a finding of constructive knowledge. In this context, the fact that Respondent used the exact words “Air Care” in the disputed domain name and in the header of his home page is, despite the absence of any particular graphics or styling, an indication that Respondent registered the disputed domain name primarily for the purpose of disrupting Complainant’s business.
Complainant also contends that Respondent has demonstrated bad faith under Policy ¶ 4(b)(iv) by intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Complainant reiterates that Respondent uses without authorization the <aircareuv.com> domain name to generate revenue through selling products using Complainant’s registered trademark in the domain name and title of the site. Complainant reasons that Respondent’s use of a confusingly similar domain name and website creates a likelihood of confusion with Complainant, which drives Internet traffic to Respondent’s website and enables Respondent to generate a commercial gain through the sale of competing air purification products. Past panels have characterized such conduct as attraction for commercial gain in bad faith. See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
Respondent concedes that he realized commercial gain from the sale of air purification products at his website but rejects the allegation that he seeks to create likelihood of confusion with Complainant through the registration and use of the <aircareuv.com> domain name. Respondent reiterates that he registered the domain name only for the descriptive value of the terms and, furthermore, that the logos and graphics used on his website demonstrate no similarity with Complainant’s website.
The circumstances listed above, the fact that the parties are in the same line of business and the finding that the <aircareuv.com> domain name is confusingly similar to Complainant’s mark, support a finding that Respondent is using the disputed domain name to attract Internet users to his <aircareuv.com> domain name, which represents bad faith within the meaning of Policy ¶ 4(b)(iv).
Complainant further contends that Respondent had actual knowledge of Complainant and its rights in the marks upon registration of <aircareuv.com>. Complainant first notes that its marks are federally registered, and charges Respondent with constructive knowledge on this basis. Constructive notice is however generally considered to be insufficient to support a finding of bad faith. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."). Complainant also states that it has prominently used the AIR-CARE mark for more than thirty years and has offered its goods and services at <air-care.com> since 1996. In its Additional Submission, Complainant adds that its marks are extremely well known in the air duct cleaning and filtration industries, and Complainant has spent hundreds of thousands of dollars over the years promoting its brand. Additionally, Complainant claims to have sold UV duct filtration systems for nearly five years.
In his Response, Respondent alleged that he had no awareness of Complainant at the time he registered the <aircareuv.com> domain name because Complainant owned no relevant protectable trademark registration at that time. This claim is inaccurate, since Complainant registered the stylized AIR-CARE INDOOR QUALITY SPECIALISTS mark in 2002 while Respondent registered the disputed domain name in 2012. In his Additional Submissions Respondent denies having had knowledge of Complainant and claims that Complainant lacked the type of market dominance that would justify a charge of constructive knowledge. Respondent further contends that because his place of residence is in Israel he could not have had knowledge of Complainant’s mark. The Panel finds that constructive knowledge can be inferred on the basis of trademark registration alone, regardless of the fact that Respondent appears to reside in Israel, and whether or not the trademark owner is an important player in the pertinent industry.
Although aware of the fact that constructive knowledge alone is not sufficient to support a finding of bad faith, the overall evidence presented by Complainant supports a finding that Respondent registered the <aircareuv.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) and Policy ¶ 4(b)(iv). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <aircareuv.com> domain name, of its rights to use the disputed domain name. Respondent reiterates that he registered the name without any knowledge of Complainant or its business, and only sought to describe the products he would sell on the corresponding website.
Respondent further alleges that Complainant has submitted evidence to the Panel disingenuously, in an attempt to portray Respondent’s online presence as an imitation of Complainant’s. Respondent claims in his Response that Complainant recently changed the appearance of its website, intentionally and in bad faith, in order to make its website appear more similar to Respondent’s website at <aircareuv.com>. Respondent’s Exhibit C purports to show an image from the “Internet Way Back Machine” documenting the appearance of Complainant’s website as it appeared on August 16, 2013, which Respondent says looks nothing like the more recent depiction of Complainant’s website shown in Complainant’s Exhibit C.
In his Additional Submission, Complainant claims instead that the depiction of Complainant’s website filed as Complainant’s Exhibit C is in fact derived from Complainant’s website, but that it has no prominence whatsoever within the overall context of Complainant’s website which contains a great many subpages.
The Panel finds that there is no evidence to show that Complainant has recently changed its web page with the intent to mislead the Panel. Complainant’s Exhibit C is simply a sub-page of the website resolving from Complainant’s <air-care.com> domain name, displaying Complainant’s UV air purification products, in order to demonstrate the similarities with Respondent’s website promoting an almost identical product.
In any case, given that the Panel found that Complainant has satisfied Policy ¶ 4(a)(i) (ii) and (iii), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aircareuv.com> domain name be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: March 12, 2014
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