National Arbitration Forum

 

DECISION

 

Cummins Inc. v. P Compton

Claim Number: FA0501000403083

 

PARTIES

Complainant is Cummins Inc. (“Complainant”), represented by Ryan M. Kaatz, of Ladas & Parry, 224 South Michigan Avenue, Chicago, IL 60604.  Respondent is P Compton (“Respondent”), PMD 264, Inland Messanger, Road Town, Tortola 99999, BVI.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <cumminsmarine.com>, registered with Go Daddy Software, Inc.

 

PANEL

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.

 

M. Kelly Tillery, Esquire as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2005; the National Arbitration Forum received a hard copy of the Complaint on January 14, 2005.

 

On January 13, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <cumminsmarine.com> is registered with Go Daddy Software, Inc. and that the Respondent is the current Registrant of the name.  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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On January 31, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 21, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@cumminsmarine.com by e-mail.

 

A timely Response was received by e-mail and determined to be complete on February 1, 2005.  Although a hard copy of the same was not received, the e-mail will be considered.  See Supplemental Rule 5(a); see also J.W. Spear & Sons PLC v. Fun League Mgt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003).

 

On February 8, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed M. Kelly Tillery as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant contends that:

 

1.         It is the owner of the following CUMMINS Trademarks registered with the U.S. Patent and Trademark Office: 

 

            USPTO REGISTRATION NO:         MARK             REGISTRATION DATE

 

            2712759                                  C CUMMINS (and Design)                5/6/03

            1124765                                  C CUMMINS (and Design)                9/4/79

            1090272                                  C CUMMINS (and Design)                5/2/78

579346                                    CUMMINS (Block Letters)                 9/1/53

 

2.         It uses and has used said marks in connection with the sale of internal combustion engines, including marine engines, for over eighty years throughout the United States and around the world;

 

3.         Respondent’s e-mail dated December 4, 2004 admits to his knowledge of Complainant’s rights in the CUMMINS marks and his lack of any rights to or legitimate interests in the domain name;

 

4.         The domain name is confusingly similar to the CUMMINS mark because it incorporates Complainant’s mark in its entirety and simply adds the generic or descriptive term “marine” and the generic top-level domain “.com”;

5.         The combination of elements in the domain name was chosen for the purpose of diverting potential customers away from the official CUMMINS site and to confuse consumers who seek information on the Internet relating to Complainant’s products online;

 

6.         Respondent has no trademark or other intellectual property rights to the domain name;

 

7.         Respondent has attempted to conceal its correct contact information;

 

8.         Respondent has made no lawful use of the domain name; it was originally put to use promoting the goods and services of a company known as Seaboard Marine which offered services such as custom boat building, designing and supplying equipment to builders, commercial fishermen and recreational users;

 

9.         A contract exists between Seaboard Marine, the original registrant of the domain name, and Cummins Cal Pacific, LLC, which has been authorized by Complainant to service and sell its products providing that Seaboard Marine agreed that it “has or acquires no right in [Complainant’s] trademarks or trade names by virtue of its appointment as an authorized Dealer” and Seaboard Marine acknowledged and agreed that it has no right to use, except as provided in the agreement, “any trademark or trade name identical with or similar to those used, applied for, or registered by [Complainant] in connection with [its] Products”;

 

10.       Seaboard Marine willfully and purposely violated the terms of the contract by registering a domain name confusingly similar to Complainant’s CUMMINS mark on May 10, 2000;

 

11.       Seaboard Marine is no longer the current registrant of the domain name;

 

12.       Presumably upon receipt of Cummins Cal Pacific, LLC’s cease-and-desist letter, the domain name was transferred to Respondent, who was originally listed as the technical contact for the domain name;

 

13.       To the best of Complainant’s knowledge, neither Compton nor Domains by Proxy has any connection with Complainant or Complainant’s products;

 

14.       Respondent apparently signed up for Go Daddy’s affiliated proxy service, Domains by Proxy, whereby the domain name registrant’s contact information is concealed;

 

 

 

 

 

15.       Following e-mail correspondence between Complainant’s counsel and Respondent, the content at the website was disabled in what can only be assumed to be a tacit admission that Respondent has no rights to or legitimate interests in the domain name.  Respondent is now passively holding the domain name.

 

16.       Such passive holding is further evidence of a lack of any rights or legitimate interests Respondent could have in the domain name;

 

17.       Respondent’s domain name resolves to a “parked” Go Daddy webpage displaying commercial advertisements for Internet-related services which does not indicate use of the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i); 

 

18.       The domain name has been registered in bad faith because Respondent knew or should have known of the registration and use of Complainant’s trademarks prior to registering the domain name due to the pre-existing applications and registrations for the CUMMINS marks, along with Respondent’s contractual responsibility not to use any trademark or trade name identical with or similar to those of Complainant;

 

19.       The domain name has been used in bad faith since Respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of a product or service on its website.

 

 

B. Respondent

 

Respondent contends that:

 

1.         He is a small engineering consultant residing in the British Virgin Islands;

 

2.         “There is no dispute;” Respondent was unable to agree to the transfer when first requested as it was within 60 days of a previous registration change;

 

3.         The domain name was registered by Tony Athens in 2000 for his business Seaboard Marine, probably the largest Cummins Marine Engine dealer on the West Coast;

 

4.         He operates the premier Marine Diesel website on the Internet - <boatdiesel.com>; In return for Tony Athens' support of his website, he hosts and maintains his website on his server;

 

5.         In October 2004, Athens told him that Cummins had requested he drop the name; he recommended that Athens do so, and asked Athens to transfer the domain to him so he could control incoming email for a transition period while his customers adjusted to his new domain name, <sbmar.com>;

 

6.         The website at the <cumminsmarine.com> domain name was then closed down is response to Cummins’ request, but he kept the domain name on the email server for what he thought would be a 3 month transition period; 

 

7.         When Complainant threatened action he closed down the email immediately.

 

FINDINGS

 

1.   Complainant has met its burden to prove that Respondent’s domain name is identical and/or confusingly similar to marks in which Complainant has rights.  Policy ¶ 4(a)(i).

 

2.   Complainant has met its burden to prove that Respondent has no rights or legitimate interest in respect to the domain name.  Policy ¶ 4(a)(ii).

 

3.   Complainant has met its burden to prove that Respondent’s domain name has been registered and is being used in bad faith.  Policy ¶ 4(a)(iii).

 

 

DISCUSSION

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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;

(2)    the 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.

 

ADMISSIONS

Respondent has not complied with Policy ¶¶ 5(b)(i) and/or 5(b)(viii).  Respondent did not “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use the disputed domain name…”  Policy ¶ 5(b)(i) and did not “[c]onclude with the following statement followed by the signature of the Respondent or its authorized representative: ‘Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not be presented for any improper purpose, such as to harass, and that the assertions in this response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.’”  Policy ¶ 5(b)(viii).

 

Policy ¶ 14 entitled “Default” provides in part (b) that “[i]f a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any requests from the Panel, the Panel shall draw such inferences there from as it considers appropriate.”

 

The UDRP Rules thus provides that Respondent is required to specifically respond to each and every substantive, well-plead factual allegation of Complainant’s Complaint and make a certification regarding same.  Federal Rule of Civil Procedure Rule 8(d) provides that, “[a]verments in a pleading to which a responsive pleading is required, other than those as to the amount of damages, are admitted when not denied in the responsive pleading.  Averments in a pleading to which no responsive pleading is required or permitted shall be taken as denied or avoided.”  While the Federal Rules do not govern here, guidance may be drawn there from. 

 

Complainant has set forth in simple, concise language, ten pages of specific, factual allegations regarding its rights and the lack thereof of Respondent.   Respondent did respond very generally to Complainant’s Complaint, but Respondent has consciously chosen not to respond directly to each of these factual allegations in accordance with the Rules, each and every one of those well-plead factual allegations shall be deemed admitted for purposes of this proceeding.  However, the several legal conclusions contained therein are not deemed admitted, as they would not be under the Federal Rules of Civil Procedure.

 

PROCEDURAL STATUS

At first blush, this case may appear quite simple and straightforward.  Complainant wishes to have the domain name transferred to it and Respondent says “there is no dispute” and appears willing to concede that the domain name should be transferred.’[1]  However, Respondent has not yet transferred the domain name to Complainant, which, of course, it is free to do, if that is its wish.  See UDRP Policy 8(a).[2]  Thus, transfer can only be made if the Panel finds that Complainant has proven each and every element now required by Policy ¶ 4(a).

           

At second blush, this case may still appear simple and straightforward since all of the well-pled, factual allegations of Complainant’s Complaint have been deemed admitted.  However, since the legal conclusions pled have not and cannot be deemed admitted, what is left to determine is whether the now-admitted facts are admissible, relevant and proven by a preponderance of the evidence as required by Policy ¶ 4(a).

 

IDENTICAL AND/OR CONFUSINGLY SIMILAR

 

Respondent’s domain name is clearly not identical to the mark in which Complainant has rights for it adds the term “marine.”  Just as clear is the fact that Complainant has substantial rights in the CUMMINS mark. 

 

Complainant’s first Federal U.S. Trademark Registration was issued on September 1, 1953, long before Respondent’s predecessor in interest, Seaboard Marine, registered the domain name in question on May 10, 2000.  Respondent had at least constructive notice of Complainant’s mark(s) due to the U.S. Federal Registrations dating back to September 1, 1953.  Respondent’s Response also makes it clear that both Respondent and its predecessor were well aware of Complainant’s marks. 

 

Complainant clearly has priority and as a second comer, Respondent must take care not to use any mark confusingly similar thereto.  Respondent has taken no such care. 

 

Respondent’s inclusion of the descriptive term “marine” is not enough to circumvent the confusing similarity requirement pursuant to Policy ¶ 4(a)(i).  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term).  Respondent’s addition of the generic top-level domain “.com” is also not enough to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).  Respondent’s domain name is clearly confusingly similar to the mark in which Complainant has substantial rights.

 

RIGHTS OR LEGITIMATE INTERESTS

 

Complainant has alleged, as required by Policy ¶ 4(a)(ii), that Respondent has no rights or legitimate interests in respect to the domain name.  This issue is at best, a mixed question of fact and law, and therefore Complainant cannot clear the hurdle of Policy ¶ 4(a)(ii) merely by virtue of the factual admissions made by Respondent.

 

Respondent has not even attempted to demonstrate its[3] rights to and legitimate interests in the domain name in responding to the Complaint in accord with Policy ¶ 4(c).  While it is conceivable that any of the circumstances set forth in Policy ¶ 4(c)(i), (ii) or (iii) might exist, there is no such evidence in this Record.  Under these circumstances, this Panel finds no sufficient evidence to support a finding that Respondent has any rights or legitimate interests in regard to the domain name.

 

REGISTRATION AND USE IN BAD FAITH

 

The Record reflects substantial evidence that Respondent (and/or Respondent’s predecessor in interest) registered and has used/is using the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  Respondents’ predecessor in interest clearly used the domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website and Respondent has admittedly continued to do so, apparently on behalf of Respondent’s predecessor pursuant to Policy ¶ 4(b)(iv). 

 

Respondent’s subsequent failure to use the domain name in connection with an active website constitutes passive holding.   Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

 

Respondent had actual or constructive knowledge of Complainant’s rights in the CUMMINS mark due to Complainant’s numerous registrations of the mark with the USPTO.  Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the

mark or any confusingly similar variation thereof.”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <cumminsmarine.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

M. KELLY TILLERY, ESQUIRE, Panelist
Dated: March 1, 2005

Philadelphia, PA 

 

 

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