Tyco Fire & Security GmbH v. Feodor Lisovsky
Claim Number: FA1411001588279
Complainant is Tyco Fire & Security GmbH (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Feodor Lisovsky (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sensormatik.com>, registered with INSTANTNAMES LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2014; the National Arbitration Forum received payment on November 17, 2014.
On November 7, 2014, INSTANTNAMES LLC confirmed by e-mail to the National Arbitration Forum that the <sensormatik.com> domain name is registered with INSTANTNAMES LLC and that Respondent is the current registrant of the name. INSTANTNAMES LLC has verified that Respondent is bound by the INSTANTNAMES LLC 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 November 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 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@sensormatik.com. Also on November 18, 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 December 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
A. Complainant
As set forth more fully below, the Complainant owns certain trademarks and makes extensive use of them such that they have become famous.
Complainant Owns Its Trademarks. Complainant, through acquisition, is the owner of the distinctive and world-famous SENSORMATIC trademark and its corresponding logo (collectively, the “SENSORMATIC Marks”). For many years, and long prior to the creation of the <Sensormatik.com> domain, Complainant, through its predecessor and licensee, Sensormatic Electronics LLC (“Sensormatic”), commenced use of the SENSORMATIC Marks in connection with the advertising, marketing and operation of merchandise security systems and solutions as well as related products and services. Since the inception of the SENSORMATIC Marks they have continually been used in interstate and international commerce.
The SENSORMATIC Marks Are Extensively Used, Promoted and Protected. Complainant’s predecessor and licensee for the SENSORMATIC Marks was founded in the United States in 1966 and has now become an internationally-renowned developer of electronic article surveillance equipment. Complainant has a notable history of creating innovative loss prevention products, such as the SENSORMATIC “ULTRA-TAG” and “ULTRA-MAX” loss-prevention tags which are used by numerous retail operations around the world. Complainant, through its affiliates and licenses is also famous around the world for its more than 50 year history of developing industry-leading products and services across a number of business segments including “Security Solutions” and “Fire Protection.” In addition, as a result of extensive advertising and promotion, Complainant’s “Security Solutions” business segment, which includes its SENSORMATIC products, generated US$8.8 Billion in net revenue in 2011 and, overall, Complainant has reported total revenue of more than US$17 Billion for the same year.. Complainant’s affiliated operating company, Tyco International, currently employs approximately 102,000 people and is traded on the New York Stock Exchange under the ticker symbol TYC. In 1996 Tyco International was added to the S&P 500 Composite Index, which comprises the top 500 public companies in the United States by market capitalization.
Complainant’s licensee, Sensormatic, extensively promotes the SENSORMATIC Marks through a variety of advertising mediums. In 2011 alone, Complainant expended US$206 Million on these efforts. The SENSORMATIC Marks have been the subject of extensive media coverage including stories in the New York Times, CNN and many other outlets. Complainant, its affiliates and licensees also support a variety of eco-initiatives by pursuing recycling partnerships and reducing the environmental impact of product packaging. In addition, Complainant, its affiliates and licensees support an extensive array of initiatives and organizations such as the Children’s Burns Foundation and the American Red Cross.
As a result of the long usage and promotion of the SENSORMATIC Marks, they have become overwhelmingly famous and widely recognized around the world.
Further, the SENSORMATIC Marks are aggressively protected through registration and enforcement. Complainant owns many trademark registrations for the SENSORMATIC Marks, including United States and European Community Trademark Registrations as follows:
Mark Goods and Services Reg. No. Reg. Date
SENSORMATIC IC 009. US 026. G & S: Electronic article and object surveillance and detection equipment and techniques utilizing transmitted radio frequency or microwave signals to establish a surveillance or detection zone in which the presence of special transponders is sensed by receivers detecting reradiated signals from the transponders, the goods and equipment being adapted to communication, navigation, and security uses, particularly to prevent pilferage or shoplifting. FIRST USE: 19660407. FIRST USE IN COMMERCE: 19660407 0978557 (US) February 12, 1974 (Filed March 9, 1970)
SENSORMATIC IC 037. US 103. G & S: Installing and servicing article surveillance devices. FIRST USE: 19660407. FIRST USE IN COMMERCE: 19660407
IC 042. US 100 101. G & S: [ Leasing article surveillance devices ]. FIRST USE: 19660407. FIRST USE IN COMMERCE: 19660407 1017608 (US) August 5, 1975 (Filed February 7, 1974)
SENSORMATIC IC 009. US 021 023 026 036 038. G & S: Electronic article, object surveillance and detection equipment, namely, radio frequency identification (RFID) tags, labels and readers, radio and microwave signal detectors, receivers and transmitters, electromagnetic field and acoustomagnetic detectors, receivers and transmitters, electronic inventory tag and label detachers and deactivators, transponders, and anti-theft alarms that utilize transmitted radio frequency or microwave signals to establish a surveillance or detection zone in which the presence of special transponders is sensed by receivers detecting reradiated signals from the transponders for use with communication, navigation, and security systems to prevent pilferage or shoplifting. FIRST USE: 19660407. FIRST USE IN COMMERCE: 19660407 3354873 (US)
0902373 (Madrid - IS KR NO VN) December 18, 2007 (Filed October 2, 2006)
SENSORMATIC Cl. 9: Electronic article surveillance devices. 005410964 (CTM) August 8, 2007 (Filed October 24, 2006)
Respondent’s registration of the <Sensormatik.com> violates the Policy.
The <Sensormatik.com> domain is identical or confusingly similar to the Marks under Policy ¶4(a)(i). Respondent’s <Sensormatik.com> domain is confusingly similar, on its face, to Complainant’s registered SENSORMATIC Marks. Since the word SENSORMATIC is an arbitrary term that is only used as a brand name and has no generic meaning in any language known to Complainant, searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the <Sensormatik.com> domain.
It has been held, in decisions too numerous to mention, that a minor misspelling of a Complainant’s trademark creates a confusingly similar domain name. See, W.W. Grainger, Inc. v. Private Registration (auc), NAF Claim No. FA0908001281960 (2009) (<gainger.com> held confusingly similar to GRAINGER trademark). In DIRECTV, Inc v. Digi Real Estate Foundation, NAF Claim No. FA0702000914942 the Panel found that “Respondent’s <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names are all confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶4(a)(i), because Respondent’s domain names each contain Complainant’s mark in its entirety or are simply a misspelled variation of the DIRECTV mark.” Id. The Panel held that all of the domains at issue are “likely to cause confusion among customers searching for Complainant’s goods and services.” Similarly, in Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, the respondent used a minor misspelling of the complainant’s trademark leading the panel to find that “Respondent has chosen the Domain Name precisely to attract users who mistype the name of the complainant’s website.” Id.
Similar to the above-cited decisions, the Respondent in the present dispute merely substitutes the letter “k” for the letter “c” in Complainant’s SENSORMATIC Mark thereby making visitors to its website think that they are being linked to one of the Complainant’s legitimate sites. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (Complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address. As reasoned in Athanasios, even if searchers eventually discover they are not at Complainant’s site, searchers may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the <Sensormatik.com> website. As in Athanasios, Respondent here uses the Mark in its site’s domain name as well as in the title and body of its website. It only makes sense that if searchers see the Marks listed in the body of the <Sensormatik.com> web page they will be confused and led to believe that Respondent’s website originates with Complainant or is at least affiliated with, endorsed or sponsored by Complainant.
(b) Respondent has no rights or legitimate interest in the <Sensormatik.com> domain Under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the <Sensormatik.com> domain. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). Respondent’s website under the <Sensormatik.com> domain is a classic pay-per-click site displaying links which divert visitors - likely Complainant’s customers and potential customers - to other websites which are not associated with Complainant and, in some cases, may be associated with Complainant’s competitors. ICANN panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services provided by others are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, NAF Case No. FA573872 (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
With respect to Policy ¶4(c)(ii), upon information and belief, Respondent is not commonly known by the name <Sensormatik.com> or “SENSORMATIC” nor does Respondent operate a business or other organization under this mark or name and does not own any trademark or service mark rights in the SENSORMATIC name. See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name.”). Similarly, by using a whois privacy service Respondent has refrained from associating itself with the <Sensormatik.com> domain and it cannot obtain any legitimate interests therein as a result. Nike, Inc. v. Elah Blake / N/A, NAF Claim No. FA 1580701 (2014) (“Respondent registered the disputed domain name using a WHOIS privacy service. This means Respondent has not publicly associated itself with the domain name, which means it cannot acquire any rights from owing the domain name.”)
Respondent is not making a legitimate noncommercial or fair use of the <Sensormatik.com> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the domain name to confuse and misleadingly divert consumers, or to tarnish the Marks. In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 the Panel noted that “The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.” The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id.
Further, in Athanasios, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”. Here, searchers for Complainant’s SENSORMATIC goods, who used the domain name <Sensormatik.com>, would be confused and think they were visiting a site of the Complainant’s until they discovered that they were forwarded to other websites offering related or competing goods and services. Such use cannot be considered fair.
Finally, Respondent’s use has tarnished and diluted the Marks. Respondent has diminished consumers’ capacity to associate the SENSORMATIC Marks with the quality goods and services offered under the Marks by Complainant by using the Marks in association with unrelated sites which provide goods and services not associated with or related to Complainant’s quality branded services. Respondent’s use creates the very real risk that Complainant’s trademarks are not only being associated with numerous products and services not related to Complainant’s branded products, but also to products and services over which Complainant has no quality control.
(c) Respondent Registered The <Sensormatik.com> Domain In Bad Faith Under Policy ¶4(a)(iii). The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See Policy ¶4(b)(iv).
Respondent intentionally used the Marks without consent from Complainant. Respondent was on actual notice of Complainant’s rights in the SENSORMATIC Marks through Complainant’s Trademark Registrations/Applications, its common-law trademark rights, and its extensive, global use of the SENSORMATIC Marks which predate the creation date of the <Sensormatik.com> domain. See, Sensormatic Electronics, LLC v. Pymesdirect, NAF Claim No. FA 1448829 (2012) (“the Panel finds that Complainant has rights in the SENSORMATIC mark pursuant to Policy ¶4(a)(i).”). In fact, the domain <Sensormatik.com> makes no sense on its own other than as a typo-squat, it could only have been copied from Complainant’s SENSORMATIC Marks. Therefore, Respondent knowingly and intentionally used the Marks with knowledge of, and in violation of Complainant’s rights in the Marks.
Respondent is obtaining commercial gain from its use of the <Sensormatik.com> website. When a visitor to the <Sensormatik.com> website clicks on one of the links which appear there, Respondent receives compensation from the various website owners who are forwarded from the <Sensormatik.com> domain. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the <Sensormatik.com> domain. See AllianceBernstein LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230, and Brownells, supra, (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of Complainant. Id. The Panel inferred that the respondent received click-thru fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv). Id.
In Brownells, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Brownells, supra. The respondent’s website offered links to hunting equipment and related items. Id. The panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of forwarding fees from its <Sensormatik.com> domain results from pay-per-click links alone constitutes commercial gain. See AllianceBernstein, supra. Moreover, similar to the facts in Brownells and AllianceBernstein, Respondent’s use of the domain name and website results in a commercial gain for others by forwarding visitors to third parties, some of whom are potential competitors of Complainant. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who were forwarded from the <Sensormatik.com> domain. There is no other rational explanation for Respondent having registered and maintained the <Sensormatik.com> domain and resolving it to a pay-per-click site or having it redirect to other commercial sites. Respondent’s use of the domain name is commercial because the various companies forwarded from the <Sensormatik.com> domain benefit from the subsequent interest and purchases of those searches. ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, supra (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Of course, as the owner of the <Sensormatik.com> domain, Respondent is entirely and solely responsible for the content of its website and the functioning of its domain. See, Disney Enterprises, Inc. v. ll, NAF Claim No. FA1007001336979 (2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.
Apart from the above, Respondent’s bad faith is amply shown by its having sought to transfer the <Sensormatik.com> domain for a price far in excess of its out-of-pocket registration cost. After Complainant sent the original draft of this Complaint to Respondent on November 4, 2014, a Mr. Yuri Yasmanov, claiming to be the still-unnamed Respondent’s representative replied with a request to settle this dispute. He said his client would offer to transfer of the <Sensormatik.com> domain in exchange for US$500 “as fair compensation” claiming that his client “legitimely purchased it and had related expenses.” It is axiomatic that offering to sell an infringing domain to a brand owner for a price far in excess of the registration cost is an obvious display of the Respondent’s bad faith. See, e.g., Bank of Ireland Securities Services Limited v. David Boissonnault, WIPO Case No. D2004-0352 (Respondent offered to sell the domain to complainant and “is apparently aware that the domain name is or would be valuable to Complainant.”); Martha Stewart Living Omnimedia. Inc. v. Josh Gorton, WIPO Case No. D2005-1109 “Respondent registered the disputed domain names primarily for the purpose of selling them to the Complainant for an amount greatly in excess of any documented out-of-pocket costs incurred by the Respondent and directly related to the domain names.”). In the present case, .com domains are typically sold by registrar for between $12 and $25 per year. As a result, Respondent’s request for $500 is far in excess of its costs directly related to the <Sensormatik.com> domain and a clear sign of its bad faith.
Next, Respondent’s true identity may only be discovered, if at all, if its Registrar removes the privacy protection for the whois information relating to the <Sensormatik.com> domain. Such use of a privacy service is further evidence of Respondent’s bad faith registration and use as was held in Beijing Qunar Information Technology Co., Ltd. v. Premium Registration Service / Zheng ZhongXing, WIPO Case No. D2013-0281 (“the fact that the disputed domain name was registered anonymously and protected by Premium Registration Service is consistent with bad faith in this Panel’s view”).
Finally, as more fully set forth above, by infringing upon Complainant’s internationally famous SENSORMATIC trademark, Respondent intentionally uses the Marks in its domain names to attract Internet searchers by creating a strong likelihood of confusion. See, e.g., DIRECTV, Inc v. Digi Real Estate Foundation.
Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the <Sensormatik.com> domain in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling ort transferring a domain name:
(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 uses the SENSORMATIC mark in connection with security products, namely electronic surveillance and detection equipment. Complainant owns the SENSORMATIC mark through its registration with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 978,557, registered Feb. 12, 1974) inter alia. Registration with a governmental entity adequately proves Complainant’s rights under Policy ¶4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant claims the <sensormatik.com> domain name is confusingly similar to the SENSORMATIC mark because the domain name merely substitutes the letter “k” for the “c” in the mark. The domain name also adds the generic top-level domain (“gTLD”) “.com,” which is required under domain name syntax. Substituting the single terminating letter in a mark, especially where the resulting name is phonetically similar to the mark, fails to adequately distinguish the domain name from the incorporated mark. See Vivendi Universal Games, Inc. v. Cupcake Patrol, FA 196245 (Nat. Arb. Forum Oct. 31, 2003) (“Respondent's <blizzerd.com> domain name is confusingly similar to Complainant's BLIZZARD mark. The replacement of the letter 'a' in Complainant's BLIZZARD mark with the letter 'e' creates a domain name that is phonetically identical and confusingly similar to Complainant's mark.”); 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.”). The <sensormatik.com> domain name is confusingly similar to the SENSORMATIC mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in the disputed domain name. There is nothing in the record indicating Respondent is commonly known by the disputed domain name. The WHOIS information lists “Feodor Lisovsky” as registrant (after the privacy service was terminated and the registrant was uncloaked). In light of the available evidence, and the fact Respondent has failed to submit any response indicating otherwise, the Panel concludes Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s actions demonstrate neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use without intent for commercial gain. The disputed domain name redirects users to a classic pay-per-click parking website, promoting links unrelated to Complainant, and in some instances, to links associated with Complainant’s competitors. The resolving page includes links such as “Network Security,” “Security Camera,” and “Sirius Satellite Radio.” Respondent’s use of the disputed domain name to redirect users to a website populated by commercial links is neither a bona fide offering pursuant to Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
Furthermore, Respondent has acquired no rights to the disputed domain name through its registration because the domain name was registered using a privacy service.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s bad faith is demonstrated by its offer to sell the disputed domain name for $500.00, a price far in excess of its out-of-pocket costs. Prior panels have found evidence of bad faith where the respondent offered to sell the disputed domain name for valuable consideration in excess of any out-of-pocket costs. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Respondent’s offer to sell the disputed domain name for $500.00 demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶4(b)(i).
Complainant claims Respondent commercially gains from its use of the disputed domain name (even if only through free parking), which resolves to a click-through parking website promoting, in part, links to Complainant’s competitors. When the respondent is using the disputed domain name to impermissibly attract users for commercial gain, this adequately demonstrates bad faith registration and use. The panel in Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), wrote, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).” Respondent’s attempt to generate revenue through the click-through links associated with the <sensormatik.com> domain name are sufficient evidence to prove Policy ¶4(b)(iv) bad faith registration and use.
Finally, Respondent registered the disputed domain name using a WHOIS privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut the presumption. This fact alone justifies a finding of bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <sensormatik.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, December 29, 2014
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