Teledyne Technologies Incorporated v. Raphael Schieferstein
Claim Number: FA2102001931834
Complainant is Teledyne Technologies Incorporated (“Complainant”), represented by David J. Zoetewey of Teledyne Technologies Incorporated, California, USA. Respondent is Raphael Schieferstein (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teledyneflir.com> (‘the Domain Name’), registered with 1&1 IONOS SE.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2021; the Forum received payment on February 11, 2021. The Complaint was submitted in both German and English.
On February 15, 2021, 1&1 IONOS SE confirmed by e-mail to the Forum that the <teledyneflir.com> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 February 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2021 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@teledyneflir.com. Also on February 22, 2021, 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 February 24, 2021.
On February 24, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant is the owner of the mark TELEDYNE registered, inter alia in the USA for oceanographic equipment with first use recorded as 1951.
The Domain Name registered in 2021 is confusingly similar to the Complainant’s trade mark including it in its entirety and adding only ‘flir’ which appears to be descriptive of a kind of camera meaning forward looking infer red and the gTLD “.com” which does not prevent said confusing similarity.
The Respondent does not have rights or a legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.
The Domain Name points to a parked page with competing commercial pay per click links. This is not a bona fide offering of goods or services or legitimate noncommercial or fair use. It is bad faith registration and use.
B. Respondent
The Respondent replied saying
‘For sure, we want to provide Teledyne with the following Ethernet domains, and make them available.
teledyne-flir.com
teledyneflir.com
With this, I would like to confirm, that at no time there was the approach to block these domains, I never had the intension to archive an financl (sic) advantage, or to block any business.
More to avoid, that somebody will take an malicious action.
I would like to appologies (sic)for this discomfort.
For further questions, please do not hesitate to reach me out.’
However there was no actual offer to transfer for free or any transfer made.
The Complainant is the owner of the mark TELEDYNE registered, inter alia in the USA for oceanographic equipment with first use recorded as 1951.
The Domain Name registered in 2021 has been used for competing pay per click links.
PRELIMINARY ISSUE – LANGUAGE OF THE PROCEEDINGS
The Registration Agreement is written in German, thereby making the language of the proceedings in German. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the German language Complaint and Commencement Notification, and since the Respondent has replied in English determines that the remainder of the proceedings may be conducted in English.
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.
The Domain Name in this Complaint combines the Complainant’s TELEDYNE mark (registered, inter alia, in the USA for oceanographic equipment and used by the Complainant since 1951), the generic term ‘flir’ meaning forward looking infra red and the gTLD “.com”.
The addition of the generic term ‘flir’ does not prevent confusing similarity between the Domain Name and the Complainant’s mark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of a generic term does not adequately distinguish a disputed domain name from complainant’s mark under Policy 4(a)(i).).
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
The Complainant has not authorized the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Respondent has used the site attached to the Domain Name for competing pay per click links which is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Ashley Furniture Industries Inc. v. domain admin /private registrations aitken Gesellschaft, FA 1506001626253 (Forum July 29, 2015).
As such the Panelist finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Domain Name has been used for competing commercial pay per click links which is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant. The nature of the links makes it more likely than not that the Respondent was aware of the Complainant and its rights and the Respondent did not deny this. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site or products or services offered on it likely to disrupt the business of the Complainant. See Health Republic Insurance Company v Above.comLegal, FA 1506001622088 (Forum July 10, 2015) re diversion to pay per click links.
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and (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 <teledyneflir.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: February 25, 2021
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