Clockwork IP, LLC v. John Hendrickson / Air Life Environmental Products, LLC
Claim Number: FA1803001778562
Complainant is Clockwork IP, LLC (“Complainant”), represented by Meredith Phillips of IPWatch Corporation, Alabama, USA. Respondent is John Hendrickson / Air Life Environmental Products, LLC (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <micropower-guard.com>, <micro-power-guard.com>, <micropower-guard-diamond.com>, <micropower-guard-filters.com>, <micropower-guard-filter.com>, <micropowerguarddiamond.com>, <micro-power-guard-diamond.com>, <micropowerguardfilter.com>, <micropowerguardfilters.com>, <micro-power-guard-filter.com>, and <micropowerguard-diamond.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.
Hector Ariel Manoff as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 23, 2018; the Forum received payment on March 23, 2018.
On Mar 27, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <micropower-guard.com>, <micro-power-guard.com>, <micropower-guard-diamond.com>, <micropower-guard-filters.com>, <micropower-guard-filter.com>, <micropowerguarddiamond.com>, <micro-power-guard-diamond.com>, <micropowerguardfilter.com>, <micropowerguardfilters.com>, <micro-power-guard-filter.com>, and <micropowerguard-diamond.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. 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 April 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2018 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@micropower-guard.com, postmaster@micro-power-guard.com, postmaster@micropower-guard-diamond.com, postmaster@micropower-guard-filters.com, postmaster@micropower-guard-filter.com, postmaster@micropowerguarddiamond.com, postmaster@micro-power-guard-diamond.com, postmaster@micropowerguardfilter.com, postmaster@micropowerguardfilters.com, postmaster@micro-power-guard-filter.com, postmaster@micropowerguard-diamond.com. Also on April 3, 2018, 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 April 23, 2018.
On April 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hector Ariel Manoff 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 names be transferred from Respondent to Complainant.
A. Complainant
1- Complainant uses the MICROPOWER GUARD mark in connection with air filters for home and commercial use.
2- Complainant enjoys a long history of use and enormous consumer recognition and goodwill.
3- Complainant has rights in the MICROPOWER GUARD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,433,981, registered Mar. 6, 2001). See Compl. Annex 1.
4- Respondent’s infringing domain names are identical and confusingly similar to Complainant’s mark as they incorporate Complainant’s mark in its entirety.
5- Respondent has no rights or legitimate interests in the disputed domain names, as Respondent is not commonly known by the domain names.
6- Respondent also does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.
7- Respondent used the <micropower-guard-filter.com> domain name to offer air filters in direct competition with those offered by Complainant. See Compl. Annex 2.
8- Respondent also uses that same domain name to make disparaging comments about Complainant and its business.
9- In regards to the other domain names, Respondent has never used them in connection with functional websites.
10- Respondent registered and uses the infringing domain names in bad faith. 11- Respondent is merely cybersquatting and has prevented Complainantfrom registering them for itself.
12- Respondent appears to be trying to profit from the goodwill and consumer recognition associated with Complainant’s MICROPOWER GUARD mark with the hope that consumers will be mistakenly and deceptively directed to Respondent’s websites instead of Complainant’s website.
B. Respondent
1- Respondent concedes that the domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
2- Respondent concedes it has no rights or legitimate interests in respect of the domain names currently at issue.
3- Respondent did not register and/or use the domain names in bad faith. Respondent only used the domain names to provide an alternative to the inquiring customers of Complainant who are familiar with the name and the product.
4- Respondent alleges that, with the exception of <micropower-guard-filter.com> domain name, the domain names were parked and never used.
5- Respondent argues that to make certain that all visitors were aware and not misled or confused, it is clearly stated at the top and bottom of each of the posted website pages that the products offered are manufactured by Respondent’s supplier and that Respondent is not affiliated with Complainant. See Resp. Annex 1.
6- The eleven domain names at-issue were canceled immediately when requested by Complainant and are not available to Respondent for renewal, use or purchase. See Resp. Annex 2.
Complainant, Clockwork IP, LLC has rights in the MICROPOWER GUARD mark and uses it in connection with air filters for home and commercial use. Respondent registered the disputed domain names <micropower-guard.com>, <micro-power-guard.com>, <micropower-guard-diamond.com>, <micropower-guard-filters.com>, <micropower-guard-filter.com>, <micropowerguarddiamond.com>, <micro-power-guard-diamond.com>,, <micropowerguardfilter.com>, <micropowerguardfilters.com>, <micro-power-guard-filter.com> and <micropowerguard-diamond.com>, which are confusingly similar and may be associated with Complainant’s mark. Respondent has neither filed evidence to prove legitimate interest on the domain names nor a bona fide offering of goods or services or a legitimate noncommercial or fair use.
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 claims rights in the MICROPOWER GUARD mark through its registration of the mark with the USPTO (e.g. Reg. No. 2,433,981, registered Mar. 6, 2001). See Compl. Annex 1. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the MICROPOWER GUARD mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s at-issue domain names are identical and confusingly similar to Complainant’s mark as they incorporate Complainant’s mark in its entirety.
The Panel notes that the domain names at-issue incorporate additional terms, hyphens, and the generic top-level domain (“gTLD”) “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that the each and every disputed domain name is confusingly similar to Complainant’s registered MICROPOWER GUARD mark under Policy ¶4(a)(i).
The Panel finds that Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the infringing domain names. Relevant information can include the WHOIS to determine whether a respondent is commonly known by at-issue domain names. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “John Hendrickson / Air Life Environmental Products, LLC” as the registrant for all of the domain names. Accordingly, the Panel concludes that the WHOIS information does not indicate that Respondent is commonly known by the at-issue domain names under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the <micropower-guard-filter.com> domain name to offer air filters in direct competition with those offered by Complainant, and also uses that same domain name to make disparaging comments about Complainant and its business. Using a confusingly similar domain name to offer goods that directly compete with a complainant and criticizes a complainant generally fails to amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use); see also Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark). Complainant provides screenshots of the resolving webpage, which displays the title “Replacement filter pads for the MicroPower Guard air cleaner” and appears to advertise for a competing product, “Electro Breeze,” while critiquing Complainant product. See Compl. Annex 2. The Panel finds that Respondent’s use of the <micropower-guard-filter.com> domain name fails to confer rights and legitimate interests in the name under Policy ¶¶ 4(c)(i) and (iii).
Further, Complainant contends that Respondent has never made any use of the ten remaining domain names currently at issue and Respondent states that they were parked and never used, with the exception of micropower-guard-filter.com. Failure to make active use of confusingly similar domain names can evince a lack of rights and legitimate interests. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the failure to make an active use of a domain name which includes Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Respondent has not made any use of the <micropower-guard.com>, <micro-power-guard.com>, <micropower-guard-diamond.com>, <micropower-guard-filters.com>, <micropowerguarddiamond.com>, <micro-power-guard-diamond.com>, <micropowerguardfilter.com>, <micropowerguardfilters.com>, <micro-power-guard-filter.com>, and <micropowerguard-diamond.com> domain names, and that Respondent fails to use the domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant alleges that Respondent registered the disputed domain names in bad faith by engaging in cybersquatting and has prevented Complainant from registering them for itself. The registration of multiple confusingly similar domain names incorporating a complainant’s mark can demonstrate bad faith registration. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Respondent appears to have registered eleven domain names which all contain various forms of the MICROPOWER GUARD mark. The Panel finds that Respondent’s registration of multiple domain names in the present case evinces bad faith registration under Policy ¶ 4(b)(ii).
Next, Complainant argues that Respondent appears to be trying to profit from the goodwill and consumer recognition associated with Complainant’s MICROPOWER GUARD mark with the hope that consumers will be mistakenly and deceptively directed to Respondent’s websites instead of Complainant’s website, and that such use disrupts Complainant’s business. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As noted previously, Complainant provides screenshots of the resolving webpage for the <micropower-guard-filter.com> domain name, which displays the title “Replacement filter pads for the MicroPower Guard air cleaner” and appears to advertise for a competing product, “Electro Breeze,” while critiquing Complainant product. See Compl. Annex 2. The Panel holds that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (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 <micropower-guard.com>, <micro-power-guard.com>, <micropower-guard-diamond.com>, <micropower-guard-filters.com>, <micropower-guard-filter.com>, <micropowerguarddiamond.com>, <micro-power-guard-diamond.com>, <micropowerguardfilter.com>, <micropowerguardfilters.com>, <micro-power-guard-filter.com>, and <micropowerguard-diamond.com> domain names be TRANSFERRED from Respondent to Complainant.
Hector Ariel Manoff, Panelist
Dated: May 9, 2018
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