Intermec Technologies Corporation v.
Intermec Technologies
Claim Number: FA0506000495408
Complainant is Intermec Technologies Corporation (“Complainant”),
represented by Kevin Costanza, of Seed IP Law Group PLLC, 701 Fifth
Avenue, Suite 6300, Seattle, WA 98104.
Respondent is Intermec
Technologies (“Respondent”), 1400 N. Rio Sonora, Green Valley, Arizona
85614.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <intermec-technologies.com>,
registered with Tucows Inc.
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.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 15, 2005.
On
June 14, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <intermec-technologies.com>
is registered with Tucows Inc. and that Respondent is the current registrant of
the name. Tucows Inc. has verified that
Respondent is bound by the Tucows 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
June 21, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 11, 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@intermec-technologies.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
July 17, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (Ret.) 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 <intermec-technologies.com> domain name is confusingly
similar to Complainant’s INTERMEC mark.
2. Respondent does not have any rights or
legitimate interests in the <intermec-technologies.com>
domain name.
3. Respondent registered and used the <intermec-technologies.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Intermec Technologies Corporation, offers data processing and recording
systems. Complainant has used the
INTERMEC mark in commerce since 1968.
Complainant owns several trademark registrations with the (“USPTO”) for
the INTERMEC mark (Reg. No. 917,643 issued August 3, 1971; Reg. No. 1,172,942
issued October 13, 1981; Reg. No. 1,286,004 issued July 17, 1984; and Reg. No.
1,467,053 issued December 1, 1987).
Respondent
registered the <intermec-technologies.com>
domain name on January 21, 2005.
Respondent’s domain name resolves to a website that offers computer
hardware and other computer technologies.
Respondent’s <intermec-technologies.com> domain
name links to a website that features Complainant’s Logo displayed at the top
of the web page.
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. 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 (Nat. Arb. 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.").
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 through extrinsic proof in this proceeding that it has rights in
the INTERMEC mark through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
Secondly, Respondent’s <intermec-technologies.com> domain
name is confusingly similar to Complainant’s INTERMEC mark, as the domain name
fully incorporates the mark in its entirety and merely adds a hyphen and the
term “technologies, which is descriptive of Complainant’s business. ” See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23,
2003) (“The addition of a hyphen to Complainant's mark does not create a
distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly
similar analysis.”); see also Health
Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003)
(“[T]he addition of punctuation marks such as hyphens is irrelevant in the
determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Am. Int’l Group, Inc. v. Ling Shun
Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition
of the term “assurance,” to the complainant’s AIG mark failed to sufficiently
differentiate the name from the mark under Policy ¶ 4(a)(i) because the
appended term related directly to the complainant’s business).
Furthermore, the
addition of the top-level domain “.com” is irrelevant in determining whether
the <intermec-technologies.com> domain
name is confusingly similar to Complainant’s mark. See Blue Sky Software Corp.
v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the
domain name <robohelp.com> is identical to the complainant’s registered
ROBOHELP trademark, and that the "addition of .com is not a distinguishing
difference"); see also Busy Body,
Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that
"the addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
submitted a prima facie case to the
Panel that Respondent lacks rights and legitimate interests, 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 names. See 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); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar.
9, 2000) (finding that by not submitting a response, respondent has failed to
invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name).
Secondly,
Respondent has not established rights or legitimate interests in the <intermec-technologies.com> domain
name pursuant to Policy ¶ 4(c)(ii), as Respondent has been passing itself off
as Complainant by using Complainant’s mark on its website. See
Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003)
(finding that the respondent attempts to pass itself off as the complainant
online, which is blatant unauthorized use of the complainant’s mark and is
evidence that the respondent has no rights or legitimate interests in the
disputed domain name); see also Crow v. LOVEARTH.net,
FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings
[sic] of goods or services, nor an example of a legitimate noncommercial or
fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name,
confusingly similar to a registered mark, attempts to profit by passing itself
off as Complainant . . . .”).
Thirdly,
Respondent has offered no evidence, and there is no proof in the record
indicating that Respondent is commonly known by the <intermec-technologies.com> domain name. Thus, Respondent has not established rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat.
Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or
legitimate interests in domain names because it is not commonly known by the
complainant’s marks and the respondent has not used the domain names in
connection with a bona fide offering of goods and services or for a legitimate
noncommercial or fair use); see also
Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that the respondent does not have rights in a domain name when
the respondent is not known by the mark); see
also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because the respondent was not
commonly known by the disputed domain name nor was the respondent using the
domain name in connection with a legitimate or fair use).
Moreover,
Respondent is using the <intermec-technologies.com>
domain name to redirect Internet users to a website featuring products and
services that are similar to those offered by Complainant. Respondent’s use of a domain name that is
confusingly similar to Complainant’s INTERMEC mark to redirect Internet users
interested in Complainant’s products to a website featuring goods and services
similar to those offered by Complainant is not a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Am. Online,
Inc. v. Advanced Membership Servs., Inc.,
FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use
of the <gayaol.com> domain name with the intent to divert Internet users
to Respondent's website suggests that Respondent has no rights to or legitimate
interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”);
see also Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to
divert Internet users seeking Complainant's website to a website of Respondent
and for Respondent's benefit is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and used the <intermec-technologies.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii), as Respondent has
been holding itself out as Complainant and a source of Complainant’s
goods. See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the
website, offering Usag products, together with the domain name may create the
(incorrect) impression that Respondent is either the exclusive distributor or a
subsidiary of Complainant, or at the very least that Complainant has approved
its use of the domain name.”); see also
AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002)
(“[U]se of domain names to sell Complainant’s goods and services without
Complainant's authority . . . is bad faith use of a confusingly similar domain
name.”); see also Nintendo of Am., Inc.
v. Pokemonplanet.net, D2001-1020 (WIPO Sept. 25, 2001) (“By using the [<pokemonplanet.net>]
Domain Names [sic] to sell Complainant’s [POKEMON]
products, Respondents have shown bad faith in use of the Domain Name.”).
Secondly,
Respondent registered and used the disputed domain name in bad faith under
Policy ¶ 4(b)(iii), as Respondent is using the domain name <intermec-technologies.com> to offer similar products and
services as Complainant, thereby disrupting Complainant’s business. See Lambros v. Brown, FA
198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered
a domain name primarily to disrupt its competitor when it sold similar goods as
those offered by the complainant and “even included Complainant's personal name
on the website, leaving Internet users with the assumption that it was
Complainant's business they were doing business with”); see also Hewlett Packard Co. v. Full Sys.,
FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the respondent registered
and used the domain name primarily for the purpose of disrupting the business
of the complainant by offering personal e-mail accounts under the domain name
<openmail.com> which is identical to the complainant’s services under the
OPENMAIL mark).
Thirdly,
Respondent registered and used the disputed domain name in bad faith under
Policy ¶ 4(b)(iv), as Respondent is using the domain name <intermec-technologies.com> to intentionally attract Internet
users seeking Complainant’s well known mark, by creating a likelihood of
confusion as to Complainant’s affiliation with the resulting website. See
H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8,
2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and
use of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using the complainant’s famous marks and likeness);
see also State Fair of Texas v.
Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith
where the respondent registered the domain name <bigtex.net> to infringe
on the complainant’s goodwill and attract Internet users to the respondent’s
website).
Furthermore,
Respondent registered the <intermec-technologies.com>
domain name with actual and constructive knowledge of Complainant’s rights in
the INTERMEC mark due to Complainant’s registration of the mark with the USPTO
and the obvious connection between Complainant’s business and the products and
services offered under Respondent’s domain name. Registration of a domain name that is confusingly similar to
another’s mark despite actual or constructive knowledge of the mark holder’s
rights in the mark is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith,
when the respondent reasonably should have been aware of the complainant’s
trademarks, actually or constructively.”); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“[T]he 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 Exxon Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and
constructive knowledge of Complainant’s EXXON mark given the worldwide
prominence of the mark and thus Respondent registered the domain name in bad
faith); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the
complainant’s mark and the content advertised on the respondent’s website was
obvious, the respondent “must have known about the Complainant’s mark when it
registered the subject domain name”).
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 <intermec-technologies.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
July 28, 2005
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