Hydratech Braking Systems, LLC v. BUTCH POLLARD / TALLON HYDRAULICS
Claim Number: FA1502001606702
Complainant is Hydratech Braking Systems, LLC (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA. Respondent is BUTCH POLLARD / TALLON HYDRAULICS (“Respondent”), represented by Joseph Buchbinder of The Trademark Source, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hydratechbrakingsystems.com>, <hydratechbrakes.com>, <hydratechconversions.com>, <hydratechhydroboost.com>, and <hydratechinfo.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 25, 2015; the Forum received payment on February 25, 2015.
On February 26, 2015, Enom, Inc. confirmed by e-mail to the Forum that the <hydratechbrakingsystems.com>, <hydratechbrakes.com>, <hydratechconversions.com>, <hydratechhydroboost.com>, and <hydratechinfo.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. 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 27, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 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@hydratechbrakingsystems.com, postmaster@hydratechbrakes.com, postmaster@hydratechconversions.com, postmaster@hydratechhydroboost.com., and postmaster@hydratechinfo.com.
Also on February 27, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant owns common law rights in the HYDRATECH BRAKING SYSTEMS mark, as established through its continuous use of the mark and its consumer recognition. Complainant provides brake systems for automotive vehicles, and uses the HYDRATECH BRAKING SYSTEMS mark to promote its services. The <hydratechbrakingsystems.com>, <hydratechbrakes.com>, <hydratechconversions.com>, <hydratechhydroboost.com> and <hydratechinfo.com> domain names are confusingly similar to the HYDRATECH BRAKING SYSTEMS mark. The disputed domain name <hydratechbrakingsystems.com> is identical to Complainant’s mark, as Respondent merely adds a generic top-level domain (“gTLD”) “.com.” The remaining disputed domain names contain a portion of the Complainant’s mark, add a variety of generic words, and contain a gTLD “.com.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, and Respondent has provided no evidence to the contrary. Respondent’s lack of rights or legitimate interests in the <hydratechbrakingsystems.com>, <hydratechbrakes.com>, <hydratechconversions.com>, <hydratechhydroboost.com> and <hydratechinfo.com> domain names is evidenced by Respondent’s failure to use the domain name in connection with a bona fide offering of goods or services and failure to make a legitimate noncommercial or fair use of the domain name. Respondent’s disputed domain names divert Internet users seeking Complainant’s website to Respondent’s websites, and were created for the purpose of promoting confusion among Complainant’s customers.
Respondent has engaged in bad faith registration and use of the <hydratechbrakingsystems.com>, <hydratechbrakes.com>, <hydratechconversions.com>, <hydratechhydroboost.com> and <hydratechinfo.com> domain names under Policy ¶ 4(a)(iii). Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Further, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Finally, Respondent registered the disputed domain names with knowledge or constructive notice of Complainant’s rights in the HYDRATECH BRAKING SYSTEMS mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
Complainant is Hydratech Braking Systems, LLC of Lebanon, TN, USA. Complainant asserts that it has common law rights in the mark HYDRATECH BRAKING SYSTEMS dating back to December 1, 2000, when it began using the mark in connection with certain goods, namely ”Brake systems for automotive vehicles….” Complainant filed for domestic federal registration for the mark “on or about November 24, 2012”. Registration for the mark issued September 23, 2014. Complainant asserts that its common law rights claim is further buttressed by its “considerable advertising expenditures and significant annual sales.”, as well as its long continued use. Complainant also claims that it registered the domain name <hydroboost.com> “on or about April 9, 2002 to market and sell the above referenced goods, and later registered the domain name <hydratechbraking.com> in 2005 in furtherance of its business operations. However, the WHOIS information for those domain names does not currently reflect Complainant as the owner of either.
Respondent is indicated as Butch Pollard/Tallon Hydraulics. The Panel notes that Respondent sent informal correspondence via email requesting that Butch Pollard be removed as respondent and that Hydratech Braking Systems INC. (italics mine) be substituted as the respondent in the proceedings. The email represents Butch Pollard to be the CEO of the entity Hydratech Braking Systems INC. and states that the company owns the registrations for all the disputed domains. There is no reference in the email to Tallon Hydraulics. The Respondent indicates that there are numerous companies sharing the name Hydratech. The WHOIS data indicates the Respondents in the pleadings as the registrant of the disputed domain names thus the Panel declined Respondent’s request. The Panel further notes that the <hydratechbrakingsystems.com> domain name was registered on or about January 5, 2010 and the <hydratechbrakes.com>, <hydratechconversions.com>, <hydratechhydroboost.com> and <hydratechinfo.com> domain names were registered on or about November 24, 2009.
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 argues that it has rights in the HYDRATECH BRAKING SYSTEMS mark pursuant to Policy ¶ 4(a)(i). In so arguing, Complainant provides evidence of its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,607,988, first used in commerce Dec. 1, 2000, filed Nov. 24, 2012, registered Sept. 23, 2014). Prior panels have found that a registration with the USPTO is sufficient to establish rights in a mark regardless of where respondent is located. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark). Additionally, prior panels have concluded that the relevant date for determining rights in a registered mark is the date of filing. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). The Panel here finds that Complainant has established rights in the HYDRATECH BRAKING SYSTEMS mark under Policy 4(a)(i), dating back to November 24, 2012.
Complainant additionally argues that it has established secondary meaning in the HYDRATECH BRAKING SYSTEMS mark and asserts common law rights in the mark through its continuous use of the mark, considerable advertising expenditures, significant annual sales, and widespread consumer recognition. Complainant argues it has been using the HYDRATECH BRAKING SYSTEMS mark since 2000, registered the domain name <hydroboost.com> in 2002 to provide its services, and registered the domain name <hydratechbraking.com> in 2005. Further, Complainant incorporated its business under the HYDRATECH BRAKING SYSTEMS mark in the State of Michigan in 2002.
Proof of secondary meaning generally requires evidence of use, sales, advertising, and similar methods of communication with the general public that results in the public’s recognition of the mark as an indicator of a single source for the production of the goods or services to which the mark is affixed. Common law rights are generally also limited in geographical scope to the area bounded by the evidence provided. The Complainant has failed to provide evidence of any sales or advertising as well as any indication of the extent of use aside from what may be implied from Complainant’s exhibits showing various pages from random resources where the mark was referred to. Isolated internet commentary is not enough. Mere self-serving assertions are insufficient since proof of secondary meaning easily lends itself to both quantitative and qualitative support. The Panel finds that Complainant has not established secondary meaning or common law rights in the HYDRATECH BRAKING SYSTEMS mark dating back to its alleged first commercial use on December 1, 2000. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Complainant asserts that the <hydratechbrakingsystems.com>, <hydratechbrakes.com>, <hydratechconversions.com>, <hydratechhydroboost.com> and <hydratechinfo.com> domain names are confusingly similar to the HYDRATECH BRAKING SYSTEMS mark. Specifically, the disputed domain name <hydratechbrakingsystems.com> is identical to Complainant’s mark, as Respondent merely adds a generic top-level domain (“gTLD”) “.com” and eliminates spaces between the terms in the mark. Prior panels have found that the addition of a gTLD does not serve to adequately distinguish the disputed domain name from the registered mark. Further, previous panels have agreed a disputed domain name that eliminates spaces from a registered mark is still rendered identical. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The remaining disputed domain names contain the “HYDRATECH” portion of the Complainant’s mark, add a variety of generic words, and contain a gTLD “.com.” Prior panels have found that simply adding a generic word to an otherwise incorporated mark does nothing to distinguish the disputed domain name from the complainant’s registered trademark, particularly when the term alludes to the complainant’s business. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”).
Additionally, the Panel notes that Respondent has omitted the “BRAKING SYSTEMS” portion of Complainant’s mark in the <hydratechbrakes.com>, <hydratechconversions.com>, <hydratechhydroboost.com> and <hydratechinfo.com> domain names. Past panels have held that omitting a portion of an otherwise incorporated mark does not negate confusingly similarity. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). Again, the addition of a gTLD does not adequately distinguish the disputed domain name from the registered mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel here finds that the <hydratechbrakingsystems.com> disputed domain name is identical and the <hydratechbrakes.com>, <hydratechconversions.com>, <hydratechhydroboost.com> and <hydratechinfo.com> domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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). The Complainant has met this burden.
Complainant asserts Respondent has no rights or legitimate interests in the disputed domain names. Complainant claims Respondent is not commonly known by the disputed domain names, and Respondent has provided no evidence to the contrary. The Panel notes that the WHOIS information for the domain names in dispute lists “Butch Pollard / Tallon Hydraulics ” as the registrants of record. Despite Respondent’s informal email asserting ownership of the disputed domain names belongs to the company for which he identifies himself as CEO, no evidence in support of that contention has been provided. The Panel finds that Respondent lacks rights to the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant argues that Respondent’s lack of rights or legitimate interests in the <hydratechbrakingsystems.com>, <hydratechbrakes.com>, <hydratechconversions.com>, <hydratechhydroboost.com> and <hydratechinfo.com> domain names is evidenced by Respondent’s failure to use the domain name in connection with a bona fide offering of goods or services and failure to make a legitimate noncommercial or fair use of the domain name. Complainant claims that Respondent’s disputed domain name diverts Internet users seeking Complainant’s website to Respondent’s websites, and were created for the purpose of promoting confusion among Complainant’s customers. Complainant contends that when Internet users type Complainant’s mark into a variety of search engines, they will inevitably become confused by Respondent’s misuse of Complainant’s mark. Prior panels have found that a respondent’s general intent to divert Internet users is not a bona fide offering of goods or services. Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) The Panel finds that Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a formal response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts Respondent has engaged in bad faith registration and use of the <hydratechbrakingsystems.com>, <hydratechbrakes.com>, <hydratechconversions.com>, <hydratechhydroboost.com> and <hydratechinfo.com> domain names under Policy ¶ 4(b)(iii). Specifically, Complainant alleges Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Complainant contends that when Internet users attempt to access its website through a variety of search engines, they will be diverted by Respondent’s disputed domain names.
Respondent, in its informal email response, states it registered the disputed domain names on or about January 6, 2010 prior to the establishment of any rights by the Complainant in its registered mark. Complainant provides exhibits that indicate Respondent and Complainant had a working relationship when Complainant’s business was located in Michigan but it was discontinued when Complainant moved the business to Tennessee in 2010. Respondent’s informal email indicates that the company that he heads as its CEO is located in Michigan and the WHOIS address for the disputed domain names, also dated 2010, matches that corporate address. Because Complainant has only provided proof of rights in its mark dating back to 2012, the date of filing for its USA federal trademark registration, Respondent’s registration of the disputed domain names cannot be said to have been in bad faith. The Panel cannot speculate on the relationship between the parties and nothing in the complaint beyond the above-referenced exhibits, or the informal response, addresses their past dealings. The Panel finds that the parties are in the wrong forum to resolve this dispute as it appears to be significantly influenced by the past business relationship between them. The Panel finds that Respondent has not registered and used the <hydratechbrakingsystems.com>, <hydratechbrakes.com>, <hydratechconversions.com>, <hydratechhydroboost.com> and <hydratechinfo.com> domain names in bad faith as required by the policy.
The Complainant has NOT proven this element.
Because the Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <hydratechbrakingsystems.com>, <hydratechbrakes.com>, <hydratechconversions.com>, <hydratechhydroboost.com>, and <hydratechinfo.com> domain names REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: April 14, 2015
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