Thermotion, LLC v. ISIS
Claim Number: FA1811001817477
Complainant is Thermotion, LLC (“Complainant”), represented by Michael A. Marrero of Ulmer & Berne, LLP, Ohio, USA. Respondent is ISIS (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thermotion.com>, registered with Network Solutions, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 20, 2018; the Forum received payment on November 20, 2018.
On November 21, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <thermotion.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 November 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 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@thermotion.com. Also on November 27, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 engages in research, development, manufacturing and selling of electrothermal actuators for use in various industries, such as automotive manufacturing, kitchen appliance manufacturing, and for use in heating and cooling systems. Complainant has rights in the THERMOTION mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,972,990, registered May 7, 1996). Respondent’s <thermotion.com> domain name is identical to Complainant’s mark as it simply adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <thermotion.com> domain name. Respondent is not commonly known by the disputed domain name and has no trademark for any term within the domain name. Further, while Complainant previously held a business relationship with Respondent, and Complainant permitted Respondent to register the domain name for use in connection with Complainant’s business, Respondent failed to transfer the domain name to Complainant. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent does not use the domain name in connection with its own business, but rather developed the domain name specifically for Complainant and continues to display Complainant’s content on the resolving domain.
Respondent registered and uses the <thermotion.com> domain name in bad faith. Respondent failed to transfer the domain name to Complainant when it discontinued operation of its business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Thermotion, LLC (“Complainant”), of Mentor, Ohio, USA. Complainant is the owner of domestic registrations for the mark THERMOTION, which it has continuously used since at least as early as 1995, in connection with its’ research, development, and sale of electrothermal actuators for use in various industries.
Respondent is ISIS (“Respondent”), of Shaker Heights, Ohio, USA. Respondent’s registrar’s address is listed as unknown. The Panel notes that Respondent registered the <thermotion.com> domain name on or about January 11, 1997.
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 THERMOTION mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,972,990, registered May 7, 1996). 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).”). The Panel here finds that Complainant has established rights in the THERMOTION mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <thermotion.com> domain name is identical to Complainant’s mark as it simply adds the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel here finds that the <thermotion.com> domain name is identical to the THERMOTION mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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), 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”). The Complainant has NOT met its burden of making a prima facie case regarding Respondent’s lack of rights and legitimate interests in the disputed domain name.
Complainant’s statements in its complaint are inconsistent. Complainant initially notes its standing to challenge Respondent’s registration of the domain name, yet states that it engaged Respondent to create a website and web presence on Complainant’s behalf. Complainant claims that Respondent fails to make a legitimate noncommercial or fair use of the domain name, yet states Respondent “ISIS registered the domain <thermotion.com> on behalf of Thermotion, for the sole purpose of creating and maintaining a website for Thermotion.” Complainant provides evidence of an agency relationship between the parties via a cease and desist letter dated November 2018, from Complainant’s attorney referencing the parties’ contract, which is not provided. The letter was presumably sent because Complainant says it only very recently became aware of its inability to gain control of the website without Respondent’s consent. Complainant also alleges “upon information and belief” Respondent has ceased its business operations, following the death of the owner/operator with whom Complainant communicated. Although Complainant now argues it has never consented to license or transfer its registered trademark to Respondent, and Respondent’s use of the domain name inured to Complainant’s benefit, none of the allegations specifically address Respondent’s rights relative to the disputed domain name under the instant circumstances. Here Complainant admittedly granted Respondent some type of initial interests in the disputed domain name via contract, which it apparently seeks to terminate through the UDRP proceeding. Normally business disputes involving contractual relations between the parties are outside the scope of the UDRP. See Frazier Winery LLC v. Hernandez, FA 841081 (Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
The Complainant has NOT proven this element.
Because the Panel concludes that Complainant failed to prove Respondent lacks rights or legitimate interests in the <thermotion.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel finds it unnecessary to address bad faith since all three elements are required to grant Complainant’s requested relief.
The Panel has NOT addressed this element.
As Complainant has NOT established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief is DENIED.
Accordingly, it is Ordered that the <thermotion.com> domain name REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: January 2, 2019
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