Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1501001599884
Complainant is Norgren GmbH (“Complainant”), represented by Kathleen S. Ryan of The Ollila Law Group LLC, Colorado, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <herionusa.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 15, 2015; the National Arbitration Forum received payment on January 15, 2015.
On January 16, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <herionusa.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 2015 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@herionusa.com. Also on January 20, 2015, 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 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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
1. Complainant has rights in the HERION mark pursuant to Policy ¶ 4(a)(i).
a. Complainant has established rights in the HERION trademark through long term, continuous and exclusive use of the mark in commerce worldwide for valves and related devices.
b. Complainant has HERION trademark registrations in more than 50 countries.
c. Complainant owns the HERION mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,042,555, registered June 29, 1976).
d. The <herionusa.com> domain name is confusingly similar to Complainant’s HERION mark because Respondent has simply added a geographic descriptor to the otherwise incorporated mark. Furthermore, the addition of a generic top-level domain (“gTLD”) does not negate the confusing similarity of Respondent’s domain name to Complainant’s HERION mark.
2. Policy ¶ 4(a)(ii)
a. Respondent has no rights or legitimate interests in the disputed domain name.
b. There is no evidence that Respondent is commonly known by the <herionusa.com> domain name.
c. Respondent does not utilize the Domain Name to provide any bona fide goods or services.
d. Respondent utilizes pay-per-click links intended to divert Internet users to web sites in competition with Complainant.
e. Respondent’s sole purpose in registering and using the disputed Domain Name is to trade on the recognition of Complainant’s HERION trademark and to deliberately increase Internet traffic to its website located at the <herionusa.com> domain name, which has no relation to Complainant.
f. Respondent has no legitimate noncommercial or fair use for the HERION term as it is an arbitrary mark with no dictionary meaning.
i. However, the principal value of the HERION mark lies in its role as a product identifier.
ii. The arbitrary nature of the trademark makes it unlikely Respondent would legitimately choose this name unless seeking to create an impression of an association with the Complainant.
3. Policy ¶ 4(a)(iii)
a. Respondent’s registration of a confusingly similar domain to Complainant’s HERION trademark disrupts and diminishes Complainant’s business because the featured links direct Internet users to competitors of Complainant.
b. Respondent is engaging in the intentional confusion and diversion of Internet traffic for commercial gain. Respondent’s sole purpose in registering and using the disputed Domain Name is to trade on the recognition of Complainant’s HERION trademark and to deliberately increase Internet traffic to its website located at the <herionusa.com> domain name, which has no relation to Complainant.
c. Respondent was actually aware of Complainant’s business because the disputed domain name contains links to direct competitors of Complainant.
B. Respondent
1. Respondent did not submit a Response. The disputed domain name was registered May 12, 1999.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 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 uses the HERION mark in connection with its valve products. Complainant claims to own the HERION mark through its trademark registration with the USPTO (Reg. No. 1,042,555, registered June 29, 1976). Complainant argues that such a registration is sufficient to establish rights in its marks pursuant to Policy ¶ 4(a)(i) requirements. The Panel agrees that Complainant’s registration of HERION with the USPTO sufficiently demonstrates its rights in the mark pursuant to 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 argues that the <herionusa.com> domain name is confusingly similar to the HERION mark in which the Complainant has rights and interests. Complainant notes that the disputed domain name incorporates the HERION mark in its entirety and adds the geographic descriptor “USA” and gTLD “.com.” Specifically, Complainant claims that the addition of the geographic descriptor “USA” does not negate the confusing similarity of Respondent’s domain name to Complainant’s HERION mark. Complainant cites to Pepsico, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), D2003-0696 (WIPO Oct. 28, 2003), where the panel found that adding various sports terms to the “PEPSI” mark does not change the overall impression of the designations as being connected to the complainant. Prior panels have specifically determined that the addition of a geographic term or abbreviation fails to distinguish the resulting domain name from the incorporated mark. For example, in Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) the panel stated, “The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.” Prior panels have also concluded that the affixation of a gTLD is not a distinguishing feature in domain names as all domain names require some top-level domain. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). As the disputed domain name incorporates the mark in full and merely adds the geographic abbreviation “USA” and non-distinguishing “.com” gTLD, the Panel finds the <herionusa.com> domain name confusingly similar to the HERION mark pursuant to 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); 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 argues that Respondent has no rights or legitimate interests in the <herionusa.com> domain name. First, Complainant urges that Respondent is not commonly known by the disputed domain name or any variant of HERION. The Panel notes that the WHOIS information identified Respondent as “Domain Admin” of “Private Registrations Aktien Gesellschaft.” As Respondent has failed to add any evidence for the Panel’s consideration, the Panel finds no basis in the available evidence to find Respondent commonly known by the disputed domain name per 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).
Further, Complainant claims Respondent is not making a bona fide offering of goods or services through the disputed domain name, nor a legitimate noncommercial or fair use. Complainant alleges that the disputed domain name redirects users to a pay-per-click website where Respondent likely generates revenue from promoted links that generally are of a commercial nature including Complainant and Complainant’s competitors. The Panel notes that the disputed domain name resolves to promote valve-related links such as “Solenoid Valves,” “Needle Valves,” and Butterfly Valve,” which relate to Complainant’s own offerings. See Compl., at Attached Ex. C. Prior panels have found that the use of a confusingly similar domain name to promote commercial links relating to or competing with the complainant is not protected as a bona fide offering of goods or services under Policy ¶ 4(c)(i), or as a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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).”). Accordingly, the Panel determines that Respondent has failed to use the <herionusa.com> domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively.
Complainant asserts that Respondent’s registration and use of the <herionusa.com> domain name is in bad faith because it is of a confusingly similar nature to the HERION trademark and disrupts and diminishes Complainant’s business. Complainant argues that customers seeking information online from Complainant are likely to be misled and diverted to Respondent’s website, which resolves to a parked website where visitors are presented with sponsored links, which include Complainant’s competitors. See Compl., at Attached Ex. C. The Panel agrees that Respondent’s use of the disputed domain name in furtherance of valve-related hyperlinks in competition with Complainant constitutes bad faith disruption as envisioned by Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because Respondent’s domain name is confusingly similar to Complainant’s well-established HERION trademark. Complainant asserts that Respondent has purposefully created likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site through the use of Complainant’s HERION mark to attract Internet users to its web site for commercial gain which constitutes bad faith. The Panel recalls that the disputed domain name resolves to pay-per-click website featuring valve-related links. See Compl., at Attached Ex. C. The Panel determines that such use falls within the behavior proscribed by Policy ¶ 4(b)(iv), and therefore finds that Respondent registered and has used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Lastly, Complainant contends that Respondent’s registration and use of the <herionusa.com> domain name constitutes bad faith because Respondent has knowledge of Complainant’s HERION trademark registrations. Complainant argues this point by asserting that the HERION trademark has been registered since 1965 and has been registered in the United States since 1976, thus providing Respondent with constructive notice of the trademark registration. Complainant further asserts that the trademark HERION is an arbitrary mark and has no dictionary meaning, proving that Respondent had actual knowledge of Complainant’s rights in the HERION trademark. Although previous panels have declined to find evidence of bad faith based solely on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel infers that Respondent registered the disputed domain name with actual knowledge of the HERION mark and Complainant’s rights therein as Respondent uses the disputed domain name to promote links related to Complainant’s field of operation. See Compl., at Attached Ex. C. Therefore, the Panel finds Respondent registered the disputed domain name in bad faith pursuant to 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 <herionusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 25, 2015
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