Rockwell Automation v. Rusty Parrish / allenbradleysupply
Claim Number: FA1610001699206
Complainant is Rockwell Automation (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Rusty Parrish / allenbradleysupply (“Respondent”), Michigan, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allenbradleysupply.com>, registered with Tucows Domains 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 21, 2016; the Forum received payment on October 21, 2016.
On October 21, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <allenbradleysupply.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 October 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@allenbradleysupply.com. Also on October 24, 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.
A timely Response was received and determined to be complete on November 1, 2016.
On November 9, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is the world’s largest company dedicated to industrial automation. Complainant has registered the ALLEN-BRADLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 712,800, registered Mar. 21, 1961).
2. The <allenbradleysupply.com> domain name, which was registered on March 2, 2015, is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the generic term “supply” and the “.com” generic top-level domain (“gTLD”).
3. Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, and Complainant has not licensed, authorized, or permitted Respondent to register a domain name incorporating the ALLEN-BRADLEY mark.
4. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, prior to receiving Complainant’s cease and desist letter, Respondent had been using the domain name to pass itself off as Complainant.
5. Currently, Respondent is using the domain name to sell products of Complainant’s competitors.
6. Respondent registered and is using the domain name in bad faith. First, Respondent attempted to sell the domain name for $547,000.00, an amount in excess of its out-of-pocket costs to acquire the domain name.
7. Second, Respondent currently uses the domain name to sell products that directly compete with Complainant’s business.
8. Third, Respondent initially used the domain name in an attempt to pass itself off as Complainant.
9. Fourth, the metadata associated with the domain name specifically refers to Complainant and its trademark, which increases the likelihood that an Internet user searching for Complainant through a search engine would come across the domain name.
10. Fifth, after receiving Complainant’s cease and desist letter, Respondent included a disclaimer on its website. Finally, because Complainant’s ALLEN-BRADLEY mark is known internationally, it is clear that Respondent registered the domain name with at least constructive knowledge of Complainant’s mark.
B. Respondent
1. Respondent purchased the domain name with the intention of solely providing Allen Bradley items to customers. The name “Allen Bradley” is a synonym and is used as a general term related to multiple electrical items that Complainant manufactures, much like “camping supplies” would be used for a term for many different things related to camping.
2. Respondent has rights and legitimate interests in the domain name. Respondent uses the domain name to operate a legitimate online business; when a customer needs Allen Bradley parts, they come to Respondent’s website and request a quote through the request a quote page, or they call the number on the website for help.
3. Respondent does not sell items that compete with Complainant’s business. Respondent sells items that Complainant does not manufacture. Further, while Respondent initially used Complainant’s logos on its resolving website, it ceased such use after receiving correspondence from Complainant and it immediately put a disclaimer on its website that it was not an authorized distributor of Complainant.
4. Respondent did not register and is not using the domain name in bad faith. Respondent uses the domain name to sell Allen Bradley supplies, and there would be no other way for Internet users to find multiple Allen Bradley items if they could not use the general search term “Allen Bradley.”
5. Respondent ceased use of Complainant’s logos on its resolving website after receiving correspondence from Complainant, and it added a disclaimer on its resolving website.
Complainant holds trademark rights for the ALLEN-BRADLEY mark. Respondent’s domain name is confusingly similar to Complainant’s ALLEN-BRADLEY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <allenbradleysupply.com> domain name, and that Respondent registered and uses the 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.
Complainant is the world’s largest company dedicated to industrial automation. Complainant has registered the ALLEN-BRADLEY mark with the USPTO (e.g., Reg. No. 712,800, registered Mar. 21, 1961), which is sufficient to demonstrate Complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (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 <allenbradleysupply.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the generic term “supply” and the “.com” gTLD. The domain name also eliminates the space between the words of Complainant’s mark and removes the hyphen between “Allen” and “Bradley.” These changes do not serve to adequately distinguish a respondent’s domain from a complainant’s mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (FORUM June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (FORUM Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names; see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark). Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). For these reasons, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <allenbradleysupply.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant alleges that Respondent has no rights or legitimate interests in the domain name. According to Complainant, Respondent is not commonly known by the domain name, and Complainant has not licensed, authorized, or permitted Respondent to register a domain name incorporating the ALLEN-BRADLEY mark. The WHOIS information merely lists “Rusty Parrish” as registrant. As such, the Panel finds no basis in the record to find Respondent commonly known by the <allenbradleysupply.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (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 maintains that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant asserts, and the record shows, that prior to receiving Complainant’s cease and desist letter, Respondent had been using the domain name to pass itself off as Complainant. For example, Respondent used Complainant’s A-B, A-B QUALITY, and ROCKWELL AUTOMATION marks on its resolving website. A respondent’s attempt, through a domain name, to pass itself off as a complainant is evidence that the respondent lacks rights and legitimate interests in the domain name. See Kmart of Mich., Inc. v. Cone, FA 655014 (FORUM April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Complainant has presented proof that presently Respondent is using the domain name to sell products of Complainant’s competitors. Such use has been found to demonstrate that a respondent lacks rights and legitimate interests in the disputed domain name. See Florists’ Transworld Delivery v. Malek, FA 676433 (FORUM June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). As such, the Panel may find that Respondent lacks rights and legitimate interests in the domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has shown that Respondent attempted to sell the domain name for $547,000.00, an amount in excess of its out-of-pocket costs to acquire the domain name. A respondent’s attempt to sell a domain name for an amount in excess of its out-of-pocket costs associated with registering the domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (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). Accordingly, the Panel finds that Respondent registered and is using the domain name in bad faith per Policy ¶ 4(b)(i).
Complainant has shown that Respondent currently uses the resolving website to sell products that are directly competitive with Complainant’s business. A respondent’s use of a domain name to sell products and/or services that are in direct competition with a complainant’s business is evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (FORUM Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Thus, the Panel concludes that Respondent has engaged in bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv).
Complainant persuasively argues that the metadata associated with the domain name specifically refers to Complainant and its trademark, which increases the likelihood that an Internet user searching for Complainant through a search engine would come across the domain name. A respondent’s use of a domain name to divert Internet users searching for a complainant’s website to that of a respondent is evidence of bad faith registration and use. See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (FORUM Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent). Because the Panel agrees with Complainant, it finds that Respondent has engaged in bad faith, in violation of Policy ¶ 4(b)(iv).
After receiving Complainant’s cease and desist letter, Respondent included a disclaimer on its website. This has been found to be insufficient to overcome a finding of bad faith under Policy ¶ 4(a)(iii). See Continental Airlines, Inc. v. Vartanian, FA 1106528 (FORUM Dec. 26, 2007) (“Respondent’s use of a disclaimer does not mitigate a finding of bad faith under Policy ¶ 4(a)(iii)”). Thus, the Panel finds Respondent has engaged in bad faith registration and use per Policy ¶ 4(a)(iii).
Complainant argues that because its ALLEN-BRADLEY mark is known internationally, it is clear that Respondent registered the <allenbradleysupply.com> domain name with knowledge of Complainant’s mark. It is apparent that Respondent had actual knowledge of the mark because Respondent incorporated the mark in its entirety into Respondent’s domain name, and Respondent purports to sell Complainant’s products from the resolving website. Thus, the Panel holds that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (FORUM Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has satisfied 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 <allenbradleysupply.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 18, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page