Innovative Marketing and Distribution, Inc d/b/a Engel Coolers v. Marc Richter / American Van Equipment, Inc.
Claim Number: FA1512001654265
Complainant is Innovative Marketing and Distribution, Inc d/b/a Engel Coolers (“Complainant”), Florida, United States. Respondent is Marc Richter / American Van Equipment, Inc. (“Respondent”), New Jersey, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <engel-coolers.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 28, 2015; the Forum received payment on December 28, 2015.
On December 29, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <engel-coolers.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 December 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2016 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@engel-coolers.com. Also on December 29, 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 January 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses its ENGEL mark in connection with its portable cooler business. Complainant has registered the ENGEL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,662,752, registered December 30, 2014), which demonstrates Complainant’s rights in its mark. Attached Annex 4 appears to be a copy of Complainant’s USPTO registration. The <engel-coolers.com> domain is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark and merely adds a hyphen, the descriptive word “coolers,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent uses its disputed domain name to sell older versions of Complainant’s products. Attached Annex 5 is a screenshot of Respondent’s resolving webpage. Additionally, Respondent has attempted to sell the domain name to Complainant for $10,000.00, an amount in excess of Respondent’s out-of-pocket costs to acquire the domain.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent has attempted to sell the domain for an amount in excess of Respondent’s out-of-pocket costs to acquire the domain name. Second, Respondent’s use of the domain disrupts and competes with Complainant’s business. Finally, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on September 15, 2010.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration 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.
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(f), 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.”).
The Panel finds that there can be little doubt that the disputed domain name and the Complainant’s trademark are confusingly similar. To arrive at the disputed domain name, the Respondent merely added a hyphen, the generic word “coolers” (which happens to be the products Complainant sells) and added the gTLD “.com.” These additions do not distinguish the disputed domain name from the registered trademark.
Complainant has adequately plead that it has rights in the trademark ENGEL. As such, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s registered trademark.
In addition, Respondent has no demonstrated rights or legitimate interests in or to the disputed domain name. It doesn’t appear to be commonly known by the disputed domain name and it has no permission from Complainant to register the disputed domain name.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
Finally, the Panel finds that it is clear that Respondent engaged in bad faith use and registration of the disputed domain name. Respondent apparently attempted to sell the domain for an amount in excess of Respondent’s out-of-pocket costs to acquire the domain name. However, as Complainant has not provided any evidence of this alleged offer, the Panel will disregard this argument.
Complainant argues that Respondent’s use of the domain disrupts and competes with Complainant’s business. A respondent engages in bad faith registration and use pursuant to Policy ¶ 4(b)(iii), where it uses a disputed domain name to sell the products and/or services of a complainant. It appears here that Respondent has engaged in sales of older products of Complainant. For this reason, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Finally, Complainant alleges that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Previous panels have concluded that a respondent acted in bad faith under Policy ¶ 4(b)(iv) where it used a disputed domain to sell a complainant’s goods and services. See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”).
Therefore, the Panel finds that Respondent demonstrated bad faith registration and use under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <engel-coolers.com> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: January 23, 2016
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