U.S. Natural Resources, Inc. v. J. Lee
Claim
Number: FA0503000436912
Complainant is U.S. Natural Resources, Inc. (“Complainant”),
represented by Michelle Evans, of Gunn and Lee, P.C.,
700 N. St. Mary's, Suite 1500, San Antonio, TX 78205. Respondent is J. Lee (“Respondent”),
18 Salisbury Road, Kowloon, Hong Kong.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <friedrichairpurifiers.com>, registered
with Iholdings.com, Inc. d/b/a Dotregistrar.com.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
9, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 11, 2005.
On
March 11, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain name <friedrichairpurifiers.com>
is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com 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
March 14, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 4, 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@friedrichairpurifiers.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 7, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <friedrichairpurifiers.com>
domain name is confusingly similar to Complainant’s FRIEDRICH mark.
2. Respondent does not have any rights or
legitimate interests in the <friedrichairpurifiers.com> domain
name.
3. Respondent registered and used the <friedrichairpurifiers.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
U.S. Natural Resources, Inc., is a manufacturer of air conditioners and related
goods for consumers.
Complainant
holds registrations with the United States Patent and Trademark Office for the
FRIEDRICH mark (Reg. No. 984,507 issued May 21, 1974 and Reg. No. 1,645,098
issued May 2, 1991). Complainant has
used the FRIEDRICH mark in commerce since at least 1883. In addition, Complainant holds trademark
registrations for its mark in countries that range from Australia to Yemen,
including Hong Kong, Respondent’s purported country of residence (Reg. No.
B1077/84 issued May 24, 1984 and Reg. No. 11108 issued December 9, 1996).
Respondent
registered the <friedrichairpurifiers.com> domain name on February
21, 2005. Respondent is using the
disputed domain name to direct Internet users to a website that features a
generic search engine and links to websites that feature air conditioners and
related products that Complainant and its competitors manufacture and market.
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 Complainant's undisputed
representations pursuant to paragraphs 5(e), 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 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 has
established that it has rights in the FRIEDRICH mark through registration with
the United States Patent and Trademark Office, registration of the mark in
various countries including Respondent’s purported home country of Hong Kong,
and through continued use of the mark in commerce for the last one hundred
twenty-two years. See Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption.); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000)
(finding that the failure of a complainant to register all possible domain
names that surround its substantive mark does not hinder the complainant’s
rights in the mark. “Trademark owners are not required to create ‘libraries’ of
domain names in order to protect themselves”).
Respondent’s <friedrichairpurifiers.com>
domain name is confusingly similar to Complainant’s FRIEDRICH mark because the
domain name incorporates Complainant’s mark in its entirety and simply adds the
generic or descriptive terms “air” and “purifiers” and the generic top-level
domain (“gTLD”) “.com.” The addition of
generic or descriptive terms that describe Complainant’s business and the
addition of a gTLD do not distinguish the domain name pursuant to Policy ¶
4(a)(i). See Vivid Video, Inc. v.
Tennaro, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any
distinctiveness resulting from a respondent’s addition of a generic word to a
complainant’s mark in a domain name is less significant because the respondent
and the complainant operate in the same industry); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see
also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where a respondent’s domain name combines a complainant’s mark with
a generic term that has an obvious relationship to the complainant’s business).
The
Panel finds that Policy ¶
4(a)(i) has been satisfied.
Respondent
failed to contest Complainant’s assertion that Respondent lacks rights and
legitimate interests in the disputed domain name. Because Complainant’s evidence and arguments are unopposed, the
Panel is permitted to accept all reasonable inferences made 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 Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that a complainant’s allegations are
true unless clearly contradicted by the evidence); see also Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on a respondent’s
failure to respond: (1) the respondent does not deny the facts asserted by the
complainant, and (2) the respondent does not deny conclusions which the
complainant asserts can be drawn from the facts).
Additionally,
Complainant has submitted a prima facie case to the Panel, thereby
shifting the burden to Respondent.
Respondent’s failure to fulfill its burden means that Respondent has
failed to invoke any circumstances that could demonstrate rights or legitimate
interests in the domain name. See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where a complainant has asserted that a respondent has no rights
or legitimate interests with respect to the domain name it is incumbent on the
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 a complainant asserts that a respondent
has no rights or legitimate interests with respect to the domain, the burden
shifts to the respondent to provide credible evidence that substantiates its
claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
Nothing in the
record, including the WHOIS domain name registration information, suggests that
Respondent is commonly known by the domain name or by Complainant’s mark
pursuant to Policy ¶ 4(c)(ii).
Complainant has asserted that Respondent is not commonly known by the
domain name, which is confusingly similar to Complainant’s registered mark, and
Respondent has not rebutted that assertion.
Therefore the Panel finds that Respondent lacks rights and legitimate
interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that the respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also RMO,
Inc. v. Burbridge, FA
96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) the respondent is not a licensee of
the complainant; (2) the complainant’s rights in the mark precede the
respondent’s registration; and (3) the respondent is not commonly known by the
domain name in question).
Respondent’s <friedrichairpurifiers.com>
domain name is confusingly similar to Complainant’s FRIEDRICH mark and is used
to direct Internet users searching for Complainant to a website that features a
search engine and links to third party businesses that compete directly with
Complainant. Such use has been found
not to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong,
D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s
entire mark in infringing domain names makes it difficult to infer a legitimate
use"); see also Computer
Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept.
8, 2000) (finding that a respondent’s website, which is blank but for links to
other websites, is not a legitimate use of the domain names); see also
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that a respondent’s appropriation of a complainant’s mark to
market products that compete with the complainant’s goods does not constitute a
bona fide offering of goods and services).
The
Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent is
using the <friedrichairpurifiers.com> domain name to provide a
search engine and links to websites that feature Complainant’s products and
links to Complainant’s competitor’s products.
Complainant’s business manufactures and markets air conditioners and
related products. The Panel finds that,
by creating confusion around Complainant’s mark, Respondent is attempting to
disrupt the business of a competitor.
Respondent’s use of Complainant’s mark in its domain name 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 EBAY, Inc. v.
MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that a respondent
registered and used the domain name <eebay.com> in bad faith where the
respondent has used the domain name to promote competing auction sites); see
also S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding a
respondent acted in bad faith by attracting Internet users to a website that
competes with a complainant’s business); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5,
2001) (finding that, given the competitive relationship between a complainant
and a respondent, the respondent likely registered the contested domain name
with the intent to disrupt the complainant's business and create user
confusion).
Furthermore,
Respondent registered a domain name that contains in its entirety Complainant’s
well-known mark and did so for Respondent’s commercial gain. Respondent’s domain name diverts Internet
users seeking Complainant’s goods to Respondent’s commercial website through
the use of a domain name that is confusingly similar to Complainant’s mark. Additionally, Respondent is unfairly and
opportunistically benefiting from the goodwill associated with Complainant’s
FRIEDRICH mark. Respondent’s practice
of diversion, motivated by commercial gain, constitutes bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that a respondent registered and used the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if a respondent profits from its diversionary use of a
complainant's mark when the domain name resolves to commercial websites and the
respondent fails to contest the Complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat.
Arb. Forum June 23, 2003) (finding that a respondent’s use of the
<saflock.com> domain name to offer goods competing with a complainant’s
illustrates the respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration and use pursuant to Policy 4(b)(iv)).
The Panel
finds that Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <friedrichairpurifiers.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: April 21, 2005
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