Teledyne Technologies Incorporated v. Danielle Mellott
Claim Number: FA1708001743020
Complainant is Teledyne Technologies Incorporated (“Complainant”), represented by Mary Dalton Baril of McGuire Woods LLP, Virginia, USA. Respondent is Danielle Mellott (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teledyne-res0n.com>, registered with Wild West Domains, LLC.
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.
Complainant submitted a Complaint to the Forum electronically on August 3, 2017; the Forum received payment on August 3, 2017.
On Aug 04, 2017, Wild West Domains, LLC confirmed by e-mail to the Forum that the <teledyne-res0n.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 August 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 2017 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@teledyne-res0n.com. Also on August 8, 2017, 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 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Teledyne Technologies Incorporated, Is a publicly traded company that serves markets requiring advanced technology including oil and gas exploration, defense, space, environmental and energy applications. Complainant uses the TELEDYNE mark to market these technology solutions. Complainant’s wholly-owned subsidiary, Teledyne Reson A/S owns the RESON trademark, and has authorized Complainant to act on its behalf with regards to its mark. Complainant therefore has rights or license in the TELEDYNE and RESON marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. TELEDYNE—Reg. No. 637,429, registered Nov. 20, 1956; RESON—Reg. No. 3,382,049, registered Feb. 12, 2008). Respondent’s <teledyne-res0n.com> domain name is confusingly similar to Complainant’s marks, as it consists of a combination of the TELEDYNE and RESON marks, merely adding a hyphen between the marks, replacing the letter “o” in the second mark with a number “0,” and appending the generic top-level domain name (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <teledyne-res0n.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use either the TELEDYNE or RESON marks for any reason. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a parked page.
Respondent has registered and used the disputed domain name in bad faith. Respondent has failed to make an active use of the disputed domain name. Additionally, It is clear that Respondent knew of Complainant and its rights in the marks at the time Respondent registered and subsequently used the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
Paragraph 3(a) of the Rules provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
While in the instant case there is only one named Complainant, Teledyne Technologies Incorporated, there are effectively two complainants: Teledyne Technologies Incorporated which owns the TELEDYNE mark and Teledyne Reson A/S which owns the RESON mark. However, for the purposes of Supplemental Rule 1(e) the Panel notes that Complainant contends Teledyne Reson A/S is a wholly owned subsidiary of Complainant. The Panel therefore will treat the named Complainants as a single entity and all references herein to “Complainant” are to be understood in that way.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <teledyne-res0n.com> 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 (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 claims rights in the TELEDYNE and RESON marks based upon registration of the mark with the USPTO (e.g. TELEDYNE—Reg. No. 637,429, registered Nov. 20, 1956; RESON—Reg. No. 3,382,049, registered Feb. 12, 2008). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel holds that Complainant’s registration of the marks with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims Respondent <teledyne-res0n.com> is confusingly similar to Complainant’s marks, as it consists of a combination of the TELEDYNE and RESON marks, merely adding a hyphen between the marks, replacing the letter “o” in the second mark with a number “0,” and appending the gTLD “.com.” Combining two marks in a domain name and adding a gTLD does not distinguish the domain name from the marks in a Policy ¶ 4(a)(i) analysis. See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”). Similarly, addition of a hyphen between marks does not diminish confusing similarity of a disputed domain name. See NSK LTD. v. Xu Yan / ChangZhou City Thinker Network Technology Co., Ltd., FA 1709111 (Forum Jan. 31, 2017) (“The disputed domain name combines both of Complainant’s RHP and NSK marks, with a hyphen added between them… creating confusing similarity.”). Further, changing one letter in a mark to create a visually similar misspelling does not distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i). See Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). The Panel finds <teledyne-res0n.com> to be confusingly similar to the TELEDYNE and RESON marks per Policy ¶ (a)(i)).
Complainant has proved this element.
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 argues that Respondent has no rights or legitimate interests in <teledyne-res0n.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TELEDYNE or RESON marks in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). A privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. As a result, the WHOIS information of record identifies Respondent as “Danielle Mellott.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by their failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Failure to make an active use of a disputed domain name can be evidence of a lack of rights or legitimate interests per Policy ¶¶ 4(c)(i) and (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant contends that <teledyne-res0n.com> does not resolve to an active website. The Panel determines that Respondent has not made a use of the disputed domain name that would confer rights or legitimate interests in the same under Policy ¶¶ 4(c)(i) or (iii).
Complainant has proved this element.
Complainant does not argue any of the factors of bad faith under Policy ¶ 4(b). However, past panels have held that the factors in Policy ¶ 4(b) are non-exclusive, and that bad faith can be determined from a “totality of the circumstances” under Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”). Accordingly, the Panel may look to arguments beyond Policy ¶ 4(b) for evidence of bad faith.
Complainant contends that Respondent’s failure to make an active use of <teledyne-res0n.com> is evidence of its bad faith registration and use of the disputed domain name. Failure to make an active use of a disputed domain name can be evidence of bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The disputed domain name does not resolve to an active webpage. The Panel finds that Respondent has acted in bad faith with regards to the disputed domain name.
Complainant also contends that its marks are created marks and have no meaning other than as an identifier of Complainant and its goods and services and that accordingly there can be little doubt that Respondent registered <teledyne-res0n.com> with actual knowledge of Complainant's rights in the mark. Complainant claims this conclusion is strengthened by the fact that Respondent chose to register a domain name containing not only the TELEDYNE mark, but explicitly refers to a product and brand of Complainant’s subsidiary. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the marks prior to registering the disputed domain name and finds that is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <teledyne-res0n.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: August 31, 2017
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