Republic Sheet Metal and Manufacturing
Co. Inc. v. Velocity Industries c/o Eamon McDonald
Claim Number: FA0408000314315
PARTIES
Complainant
is Republic Sheet Metal and
Manufacturing Co. Inc. (“Complainant”), represented by Heather C. Brunelli of Thompson
& Knight, LLP, 1700 Pacific Avenue, Suite 3300, Dallas, Texas 75201. Respondent is Velocity Industries c/o
Eamon McDonald (“Respondent”), 43153 Business Park Drive, Temecula,
California 92590.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <republicsales.us>
and <republicblowers.us>,
registered with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Judge
Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 18, 2004; the Forum received a hard copy of the
Complaint on August 19, 2004.
On
August 19, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain names <republicsales.us>
and <republicblowers.us>
are registered with Go Daddy Software, Inc. and that Respondent is the current registrant
of the names. Go Daddy Software, Inc.
has verified that Respondent is bound by the Go Daddy Software, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the U. S. Department of Commerce’s
usTLD Dispute Resolution Policy (the “Policy”).
On
August 23, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
13, 2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for
usTLD Dispute Resolution Policy (the “Rules”).
Having
received no Response from Respondent, using the same contact details and methods
as were used for the Commencement Notification, the Forum transmitted to the
parties a Notification of Respondent Default.
On
September 22, 2004, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Judge Harold Kalina
(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. Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
Policy, the 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.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
1. The <republicsales.us>
and <republicblowers.us> domain
names registered by Respondent are
confusingly similar to Complainant’s REPUBLIC marks.
2. Respondent has no rights to or legitimate
interests in the <republicsales.us>
and <republicblowers.us>
domain names.
3. Respondent registered and used the <republicsales.us> and <republicblowers.us> domain
names in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Republic Sheet Metal and
Manufacturing Co. Inc., is in the metal fabrication business and provides
product design, layout, fabrication, installation and plant maintenance. Additionally, Complainant is a distributor
of industrial equipment such as blowers, filters and vacuum pumps.
Complainant has done business under the
REPUBLIC SALES & MANUFACTURING mark since 1962. Complainant discovered a mechanical design for centrifugal
blowers and air knife drying systems in 1999 and created a line of these
products under the REPUBLIC BLOWER SYSTEMS mark.
Furthermore, Complainant and its
customers have shortened the REPUBLIC marks to “Republic Sales” and “Republic Blowers”
respectively due to the length of the actual marks. Complainant has owned the <republicsales.com> domain name
since March 1998 and the <republicblowers.com> domain name since August
1999. Complainant uses these domain
names to operate websites that promote and provide information about
Complainant’s products under the REPUBLIC marks.
Respondent registered the <republicsales.us> and <republicblowers.us> domain
names on August 15, 2003. Respondent
has used the disputed domain names to divert Internet users to Respondent’s
website at the <velocity-industries.com> domain name, which features the
products of Complainant’s competitors.
DISCUSSION
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the 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.
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Complainant has done business under the
REPUBLIC SALES & MANUFACTURING mark since 1962 and has used the REPUBLIC
BLOWER SYSTEMS mark since about 1999.
Furthermore, Complainant has promoted its products online since at least
as early as 1998 and distributes marketing materials displaying the REPUBLIC
marks. Thus, the Panel finds that
Complainant has established common law rights in its REPUBLIC marks by a
showing of secondary meaning associating Complainant as the source of products
sold under the REPUBLIC marks. See Tuxedos
By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common
law rights in a mark where its use was continuous and ongoing, and secondary
meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said
name [<keppelbank.com>] in connection with its banking business, it has
acquired rights under the common law.”); see
also S.A. Bendheim Co., Inc. v.
Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that
Complainant established rights in the descriptive RESTORATION GLASS mark
through proof of secondary meaning associated with the mark).
The <republicsales.us>
and <republicblowers.us> domain
names registered by Respondent are confusingly similar to Complainant’s
REPUBLIC SALES & MANUFACTURING and REPUBLIC BLOWER SYSTEMS marks because
the domain names utilize the principal term of Complainant’s marks. The <republicsales.us>
domain name omits only the ampersand and the term “manufacturing,” while
the <republicblowers.us> domain
name adds the letter “s” to the term “blowers” and deletes the term
“systems.” The Panel finds that the
abbreviation of Complainant’s marks or the deletion of some terms of
Complainant’s marks are not sufficient to negate the confusing similarity of
the disputed domain names. See Modern
Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003)
(“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or
shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any
other dictionary meanings, so the names are substantially similar in
meaning.”); see also Down E. Enter. Inc. v. Countywide
Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain
name <downeastmagazine.com> confusingly similar to Complainant’s common
law mark DOWN EAST, THE MAGAZINE OF MAINE).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent
has no rights or legitimate interests in the <republicsales.us> and
<republicblowers.us> domain names, which contain Complainant’s
REPUBLIC marks. Due to Respondent’s
failure to respond to the Complaint, the Panel will assume that Respondent
lacks rights and legitimate interests in the disputed domain names. In fact, once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to show that it does have such
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once
Complainant asserts that Respondent has no rights or legitimate interests with
respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name).
Furthermore, where Complainant makes the prima facie showing and Respondent does
not respond, the Panel may accept all reasonable allegations and inferences in
the Complaint as true. See 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.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond
allows all reasonable inferences of fact in the allegations of Complainant to
be deemed true).
Respondent has used the <republicsales.us> and <republicblowers.us> domain
names to redirect Internet users to Respondent’s website at the
<velocity-industries.com> domain name, which features products that
compete with Complainant’s products.
Respondent’s use of domain names that are confusingly similar to
Complainant’s REPUBLIC marks to redirect Internet users interested in
Complainant’s products to a commercial website that primarily offers the
products of Complainant’s competitors is not a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iv).
See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June
23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to
market products that compete with Complainant’s goods does not constitute a
bona fide offering of goods and services); see
also Clear Channel Communications,
Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding
that Respondent, as a competitor of Complainant, had no rights or legitimate
interests in a domain name that utilized Complainant’s mark for its competing
website); see also Avery Dennison Corp. v. Steele, FA
133626 (Nat. Arb. Forum Jan. 10, 2003) (finding that Respondent had no rights
or legitimate interests in the disputed domain name where it used Complainant’s
mark, without authorization, to attract Internet users to its business, which
competed with Complainant).
There is no evidence to suggest that
Respondent is the owner or beneficiary of a trade or service mark identical to
the <republicsales.us> and <republicblowers.us> domain
names pursuant to Policy ¶ 4(c)(i).
Furthermore, Respondent was not authorized or licensed by Complainant to
register or use domain names that incorporate the REPUBLIC marks and nothing
within the record shows that Respondent is commonly known by the <republicsales.us> and <republicblowers.us> domain
names. Therefore, the Panel finds that
Respondent lacks rights and legitimate interests in the domain names pursuant
to Policy ¶ 4(c)(iii). See Tercent Inc. v. Yi, FA 139720 (Nat.
Arb. Forum Feb. 10, 2003) (stating that “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) Respondent is not a licensee
of Complainant; (2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question).
Thus, the Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Respondent intentionally registered the <republicsales.us> and <republicblowers.us> domain
names for Respondent’s commercial gain.
Respondent’s domain names divert Internet users who seek Complainant’s
REPUBLIC marks to Respondent’s commercial website through the use of domain
names that are confusingly similar to Complainant’s marks. Furthermore, Respondent is unfairly and
opportunistically benefiting from the goodwill associated with Complainant’s
REPUBLIC marks. Respondent’s practice
of diversion, motivated by commercial gain, constitutes bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See TM
Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001)
(finding bad faith where Respondent used the domain name, for commercial gain,
to intentionally attract users to a direct competitor of Complainant); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22,
2000) (finding bad faith where Respondent attempted to attract customers to its
website, <efitnesswholesale.com>, and created confusion by offering
similar products for sale as Complainant); see
also G.D. Searle & Co. v.
24-7-Commerce.com, FA 114707 (Nat. Arb. Forum July 31, 2002) (finding that
although Respondent failed to come forward and provide evidence of a planned
use for the <celebrex-vioxx-ultram-super-blue-stuff.com> domain name, due
to the fact that the domain name incorporates marks of competing pharmaceutical
products, it can be inferred that Respondent registered the domain name for
ultimate use as an online pharmacy).
Furthermore, Respondent registered the <republicsales.us> and <republicblowers.us> domain
names for the primary purpose of disrupting Complainant’s business by
redirecting Internet traffic intended for Complainant to Respondent’s competing
website. Respondent’s use of
Complainant’s REPUBLIC marks to sell goods and services similar to
Complainant’s goods and services is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See Surface
Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding
that, given the competitive relationship between Complainant and Respondent,
Respondent likely registered the contested domain name with the intent to
disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Complainant having established all three
elements required under the usTLD Policy, the Panel concludes that relief shall
be GRANTED.
Accordingly, it is Ordered that the <republicsales.us> and <republicblowers.us> domain
names be TRANSFERRED from Respondent
to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
October 6, 2004
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