DECISION

 

A. O. Smith Corporation v. Domain Admin / Private Registrations Aktien Gesellschaft

Claim Number: FA1607001684068

PARTIES

Complainant is A. O. Smith Corporation (“Complainant”), represented by Katrina G. Hull of Michael Best & Friedrich, LLP, Wisconsin, 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 <aosmithwaterheater.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

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.

 

Hon. Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 15, 2016; the Forum received payment on July 15, 2016.

 

On July 19, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <aosmithwaterheater.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 July 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 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@aosmithwaterheater.com.  Also on July 25, 2016, 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 August 23, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Karl V. Fink (Ret.) 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.

 

On August 29, 2016 Complainant submitted additional evidence in response to the Panel’s request.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant has several renditions of the AO SMITH mark registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,012,504; first use Dec. 13, 1962, filed Jan. 26, 2011, registered Aug. 16, 2011), that it uses in conjunction with its water heater related business. Respondent’s domain name <aosmithwaterheater.com> is confusingly similar to the AO SMITH mark, as it merely adds the descriptive words “water,” “heater,” and the “.com” generic top-level domain (“gTLD”) to the AO SMITH mark.

 

Respondent has no rights or legitimate interest in the disputed domain name, and Respondent is not commonly known by the disputed domain name. The web page cannot be said to be a bona fide offering of goods and services, nor can it be said to be for a legitimate noncommercial or fair use.

 

Further, Respondent has registered the domain name and is using it in bad faith as is evidenced by the offer to sell the domain name at excess cost, Respondent’s history and pattern of conduct under the UDRP, and Respondent’s intentional effort to create a likelihood of confusion for Internet users around the Complainant’s mark for commercial gain.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <aosmithwaterheater.com>  domain name.

 

DISCUSSION

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 (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.”).

Identical and/or Confusingly Similar

The Complainant states it has several versions of the AO SMITH mark registered in the United States and India for use in connection with water heaters and related goods and services. Complainant has registered AO SMITH marks with the USPTO, (e.g., Reg. No. 4,012,504; first use Dec. 13, 1962, filed Jan. 26, 2011, registered Aug. 16, 2011), which demonstrates rights in the mark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).). Panels have also found rights in a registered mark which date back to the mark’s filing date.  See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). Therefore, the Panel agrees that the Complainant has demonstrated rights in the AO SMITH mark under Policy ¶ 4(a)(i) which date back to January 26, 2011.

 

 While Complainant does not explicitly make an argument for rights under the common law, there is evidence that Complainant has established rights which predate the registration of the disputed domain.  Panels have agreed that common law rights may be demonstrated through a secondary meaning established through evidence of media and consumer recognition, amount of sales under the mark, etc. See generally Gourmet Depot v. DI S.A., FA 1378760 (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.”). Here, Complainant alleges that it first introduced water heaters under the mark in 1962. Complainant notes that it owns several websites that provide information about the water heaters and accessories that are sold under the AO SMITH mark. Complainant’s exhibits demonstrate Complainant’s online offerings, and provide evidence of length and amount of sales under the mark.   For many years before the creation of the disputed domain name, Complainant had hundreds of millions of dollars of sales under the AO SMITH mark. The Panel finds that before the creation of the disputed domain name, Complainant had common law rights in the mark. 

 

Complainant argues Respondent’s domain name <aosmithwaterheater.com> is confusingly similar with its AO SMITH trademark. Complainant contends that the addition of “water heater” are merely descriptive terms, and that the lack of spacing and addition of “.com” does nothing to distinguish the domain name from their mark. Panels have held that adding merely descriptive words and “.com” are not sufficient to distinguish a Respondent’s domain name with a Complainant’s mark. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Panels have also considered elimination of spacing between words of a mark is an irrelevant alteration under Policy ¶ 4(a)(i).  See Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015) (declaring, “Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i).”). Therefore, the Panel finds Respond’s domain name <aosmithwaterheater.com> is confusingly similar to the Complainant’s AO SMITH mark.

 

Complainant has proved this element.

 

Rights or Legitimate Interests

 

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 (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 (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 contends that Respondent has no rights or legitimate interest in the <aosmithwaterheater.com> domain name Complainant states the Respondent is not commonly known by the disputed domain name, and that the Complainant never consented to the Respondent’s use of AO SMITH or the domain name. The Panel notes the WHOIS information regarding the Respondent’s domain name lists “Domain Admin” as the registrant. The Panel finds that Respondent is not commonly known by this domain name per policy ¶ 4(c)(ii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name.  Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”).

 

In addition, Complainant argues that Respondent is not making a bona fide offering of goods and services or using the <aosmithwaterheater.com> domain name for a legitimate noncommercial or fair use. Complainant contends that Respondent uses pay-per-click advertising to generate revenue from the hyperlinks on the web page that directly compete with the Complainant’s business. Panels have held that hosting such competing hyperlinks on a web page does not constitute a bona fide offering of goods or services, and that it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant.  The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Therefore, the Panel agrees that Respondent has not used the disputed domain in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

Complainant has also asserted the Respondent has offered to sell the disputed domain name to them, and that this further demonstrates a lack of rights and a legitimate interest. Panels have found that such a willingness to sell a disputed domain name can serve as evidence that a respondent does not have rights or legitimate interests in a domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). Accordingly, the Panel finds that Respondent’s offer to sell the disputed domain to Complainant constitutes additional evidence that Respondent lacks rights and legitimate interests in the disputed domain.

 

Complainant has proved this element.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent made an offer to sell the <aosmithwaterheater.com> domain name to them for an excessive fee, and this is evidence of bad faith registration and use under Policy ¶ 4(b)(i). Respondent’s “best offer” to sell the domain name was for $1,299 according to Complainant. Complainant also contends that the Respondent made an offer to sell the domain name to the general public, through the description listed in their WHOIS information. Prior Panels have found that an offer to sell a domain name can serve as evidence to indicate bad faith, when the panel also finds that respondent primarily intended for such an offer when registering the domain. See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); see also Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).). The Panel has determined that Respondent registered the disputed domain name with the intention of selling it, and finds bad faith registration and use under Policy ¶ 4(b)(i).

 

Complainant next contends that Respondent has a pattern of domain name misuse which constitutes bad faith registration under Policy ¶ 4(b)(ii). The Panel notes the numerous cases against “Domain Admin / Private Registrations Aktien Gesellschaft” provided by Complainant. The Panel agrees with Complainant and holds that such a history of adverse UDRP decisions against Respondent shows a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“Complainant has provided evidence that Respondent has a history of UDRP and USDRP decisions decided against it.  This establishes bad faith within the meaning of Policy ¶ 4(b)(ii).”).

 

Complainant finally asserts that Respondent is attempting to attract Internet users to its site for commercial gain by intentionally creating a likelihood of confusion of the source, sponsorship, affiliation, or endorsement of the web site. Complainant contends that Respondent uses the disputed domain name to divert Internet users to the “sponsored listings” on its web page, for which it presumably earns fees and other income. The Panel finds that having “sponsored listings” that link to competing products does constitute bad faith by Respondent under Policy ¶ 4(b)(iv). See Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products.  The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion.  Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).

 

Complainant has proved this element.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <aosmithwaterheater.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Karl V. Fink (Ret.), Panelist

Dated:  September 1, 2016