Teledyne Technologies Incorporated v. Lisa Katz / Domain Protection LLC
Claim Number: FA1709001747790
Complainant is Teledyne Technologies Incorporated (“Complainant”), represented by Mary D. Baril of McGuireWoods LLP, Virginia, USA. Respondent is Lisa Katz / Domain Protection LLC (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teledynewaterpic.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 6, 2017; the Forum received payment on September 6, 2017.
On Sep 07, 2017, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <teledynewaterpic.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 September 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@teledynewaterpic.com. Also on September 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 September 29, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an international company that provides products and systems for defense, space, environmental and energy applications.
Complainant uses the TELEDYNE mark to market its goods and services.
Complainant holds a registration for the TELEDYNE trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,068,209, registered June 10, 1997.
Respondent registered the domain name <teledynewaterpic.com> on or about January 30, 2005.
The domain name is confusingly similar to Complainant’s TELEDYNE mark, in that it contains the mark in its entirety, merely appending the generic Top Level Domain (“gTLD”) “.com,” and the generic terms “new” and “waterpic,” the latter being a misspelled reference to a product and brand of Complainant’s predecessor-in-interest.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the TELEDYNE mark for any reason.
Respondent’s use of the domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, depending on the device used to access the domain name, it resolves to either a third-party e-commerce website or a parked page that features links to the websites of enterprises competing with the business of Complainant.
Respondent likely benefits commercially from its use of the domain name by receipt of referral and/or click-through fees as a consequence of confusion among Internet users caused by the confusing similarity of the domain name to Complainant’s TELEDYNE mark.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the TELEDYNE mark when it registered the domain name.
Respondent has registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the TELEDYNE trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. 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 a UDRP complainant’s rights in a mark).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Australia). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he 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.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <teledynewaterpic.com> domain name is confusingly similar to Complainant’s TELEDYNE trademark. The domain name contains the mark in its entirety, merely adding the generic Top Level Domain (“gTLD”) “.com,” the generic term “new” and “waterpic,” the latter being a misspelled reference to a product and brand of Complainant’s predecessor-in-interest. These alterations of the mark, made in creating the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum January 22, 2016) (finding, under Policy ¶ 4(a)(i), that the addition of a generic term and of a gTLD to the mark of another in forming a domain name was insufficient to distinguish the resulting domain name from the mark from which it was derived.).
See also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding, under Policy ¶ 4(a)(i), that by adding the term “security” to a UDRP complainant’s mark, which described that complainant’s business, a respondent “very significantly increased” the likelihood of confusion with that mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <teledynewaterpic.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the TELEDYNE mark in any way. Moreover, the pertinent
WHOIS information identifies the registrant of the domain name only as “Lisa Katz / Domain Protection LLC,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that, because the relevant WHOIS record listed “Dale Anderson” as the registrant of the <statefarmforum.com> domain name, a respondent was not commonly known by that domain name and therefore was not within the provisions of Policy ¶ 4(c)(ii)). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name registration).
We next observe that Complainant asserts, without objection from Respondent, that the <teledynewaterpic.com> domain name resolves to both a third-party e-commerce website and a parked page that link to websites which compete with Complainant’s business. In the circumstances described in the Complaint, we may comfortably presume that Respondent seeks to profit commercially from this employment of the domain name, whether from the receipt of click-through fees or otherwise. Such use of the domain name is neither a bona fide offering of goods or services by means of the domain name or a legitimate noncommercial or fair use of it such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Forum June 12, 2003) (finding that a respondent’s use of a disputed domain name to redirect Internet users to websites from the operation of which that respondent presumably received a referral fee for each misdirected Internet user was not a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i)). See also 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 [either] a bona fide offering [of goods or services] or a legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <teledynewaterpic.com> domain name as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015):
The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s use of the disputed <teledynewaterpic.com> domain name, which we have found to be confusingly similar to Complainant’s TELEDYNE trademark, is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this too demonstrates Respondent’s bad faith in registering and using the domain name. See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (finding that a respondent’s use of a disputed domain name to display links to the websites of a UDRP complainant’s commercial competitors showed bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)). See also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum December 28, 2005):
[T]he Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).
Finally under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the TELEDYNE mark when it registered the offending <teledynewaterpic.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See Immigration Equality v. Brent, FA 1103571 (Forum January 11, 2008):
That Respondent proceeded to register a domain name identical to, and with prior knowledge of[,] Complainant's mark is sufficient to prove bad faith registration … under Policy ¶ 4(a)(iii).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <teledynewaterpic.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 5, 2017
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