Shorai Inc. v. Advanced Domain Solutions / Chuck Topkinson / Advanced Domain Solutions
Claim Number: FA1110001409937
Complainant is Shorai Inc. (“Complainant”), represented by Tom Moore, California, USA. Respondent is Advanced Domain Solutons / Chuck Topkinson / Advanced Domain Solutions (“Respondent”), represented by Woodrow H. Pollack, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shoraibattery.com> and <shoraibatteries.com>, registered with eNom, Inc.
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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2011; the National Arbitration Forum received payment on October 3, 2011.
On October 3, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <shoraibattery.com> and <shoraibatteries.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 October 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 2011 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@shoraibattery.com and postmaster@shoraibatteries.com. Also on October 5, 2011, 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 October 26, 2011.
On October 31, 2011, Complainant submitted an Additional Submission, which was considered.
On November 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle as Panelist.
On November 7, 2011, Respondent submitted a Response to Complainant’s Additional Submission, which was considered.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant operates under the Trademarked name of Shorai in the production, marketing and distribution of lithium based batteries. Respondent operates as a competitor to Complainant. Respondent has registered domain names including the Trademarked term Shorai under Respondent’s name. Respondent has also included the term “battery” and “batteries”, thereby creating an extremely high likelihood of consumer confusion.
Respondent does not operate business under the trade name Shorai. Complainant has conducted business since 2010 under the Trademarked name of Shorai in direct competition with Respondent. Respondent has registered domain names to block Complainant from use of domain names and to create consumer confusion. Respondent has registered referenced domain names as referral based sites to obtain benefit of Complainants brand recognition.
Respondent has acted in bad faith due to its registration of domain names to prevent Complainant from utilizing Trademarked name owned by Complainant. Respondent has disrupted business of competitor (Complainant) by purchasing domain names with Complainant’s Trademarked name AND business category (“Battery”, “Batteries.” Respondent has no legitimate business use for Trademarked term “Shorai.” Respondent has published website utilizing domain names in order to financially benefit, and is creating consumer confusion.
B. Respondent
The trademark identified in the Complaint is “Shorai.” Complainant purports to own the trademark via assignment from its principal David J. Radford (but no assignment record confirming such assignment is included in the record, other than evidence of recording some document with the USPTO). Complainant’s purported first use in commerce of the “Shorai” mark is December 1, 2010, less than three weeks before Respondent registered the subject domains.
Respondent has not concluded how it intends to use the disputed domains. Respondent may maintain them as sites to allow the public to comment. Alternatively, it is not uncommon in the battery industry for manufacturers to use resellers. Should Respondent become a reseller of Complainant, Respondent may utilize the disputed domains for such reselling activity. Respondent has maintained only parked pages at the disputed domains and has never used the disputed domains to misleadingly divert Complainant’s customers or to tarnish any intellectual property rights of Complainant. Respondent does not currently control or benefit from any advertising on the parked pages. Respondent has no intention to profit from the disputed domains by selling the registrations, by selling advertising products on the websites to unsuspecting customers, or by using the domain names in any other way to obtain a profit. There is no bad faith intent to profit, and Complainant’s Complaint should be denied.
Respondent has no intent to profit off of Claimant’s intellectual property, and certainly has no bad faith intent to do so. It has no current plans, other than to leave the blank webpage. Respondent is not attempting to divert consumers away from Complainant, is not attempting to harm Complainant’s good will, is not offering to transfer, sell, or assign the domain name for financial gain and is not attempting to disrupt Complainant’s business.
C. Complainant’s Additional Submission
The true respondent, Braille Battery, Inc. (“Braille Battery”), is one of Shorai’s competitors. At a trade show in February 2011, Shorai learned that its batteries were going to be favorably reviewed in the April issue of Motocross Action Magazine, but that the reviewer had incorrectly listed Shorai’s website as “shoraibattery.com.” Shorai immediately sought to register that domain name, only to learn that Braille Battery had not only previously registered “shoraibattery.com” but “shoraibatteries.com” as well.
Mr. Radford and Mr. Riley tried to register the domain name shoraibattery.com so that they could redirect potential customers to shoraipower.com. They learned, however, that the domain name had already been registered to a direct competitor, Braille Battery, and that Braille Battery had also registered shoraibatteries.com. In February 2011, Mr. Radford sent an e-mail to Braille Battery asking that the domain names be transferred to Shorai. On or about February 28, 2011, Mr. Radford received a response from Woodrow H. Pollack, counsel for Braille Battery. In that letter, Mr. Pollack asserted that “registering and maintaining a domain – just so a competitor could not have it – was acceptable.” Mr. Pollack denied any intent on Braille Battery’s part to profit from the domain name, but he also stated that Braille Battery would entertain “a reasonable business proposition” from Shorai for transferring the two domain names.
Braille Battery registered and used domain names that were identical or confusingly similar to Shorai’s strong trademark, the Japanese word for “the future.” Braille Battery did so despite its complete lack of a right or legitimate interest in the disputed domain names. Braille Battery’s registration and use of the disputed domain names was done in bad faith because it sought to disrupt the business of a competitor, it evidenced a pattern of seeking to block Shorai from registering a combination of “shorai” plus “battery” and it sought valuable consideration for a transfer.
C. Respondent’s Additional Submission
The Panel should not discredit the case law cited by the Respondent in its
initial Response, which stood for the proposition that it is not bad faith for a party to hold onto a domain name to prevent a competitor from using it. See Southern Grouts & Mortars, Inc. v. 3M Co., 575 F.3d 1235 (11th Cir. 2009).
Should Respondent become a reseller, it would have a valid interest in using the registered domain names, which is a common industry practice. Registering the domain names with the intent to potentially use them for this purpose does not constitute bad faith. Respondent may use the domain names to allow the public to comment. This usage does not indicate bad faith intent and does not indicate any intent to profit, because Respondent clearly would not profit from using the disputed domain names in this manner.
(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.
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.
A printout from the USPTO website shows that the SHORAI mark is registered with the USPTO (Reg. No. 4,010,489 filed September 17, 2010; registered August 9, 2011). A Trademark Assignment Abstract of Title from the USPTO shows that the rights in the SHORAI mark were transferred to Complainant on September 22, 2011. The SHORAI mark is used “in the production, marketing and distribution of Lithium based batteries.” The Panel finds that Complainant has Policy ¶ 4(a)(i) rights in the SHORAI mark through its trademark registration of the mark with the USPTO and that such rights date back to its filing date with the USPTO of September 17, 2010. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
The Panel notes that Complainant does not present the traditional “confusingly similar” analysis under Policy ¶ 4(a)(i). However, Complainant does contend that Respondent’s inclusion of the terms “battery” and “batteries” in the domain names creates confusion with its mark. The Panel finds that the <shoraibattery.com> and <shoraibatteries.com> domain names are confusingly similar to Complainant’s SHORAI mark under Policy ¶ 4(a)(i), where the domain names contain Complainant’s entire mark while adding descriptive terms and the generic top-level domain (“gTLD”) “.com.” See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).
The Panel notes that the WHOIS information identifies “Advanced Domain Solutions / Chuck Topkinson” as the registrant of both of the domain names at issue. The Panel finds that Respondent is not commonly known by the disputed domain names under 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 Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant alleges that Respondent is a competitor to Complainant in the battery industry. Complainant submits a screen-shot of the resolving website which displays a search engine and various clickable links under headings, such as “Battery,” “Cell Phone Battery,” “Laptop Battery,” and “The Battery,” among others. The Panel finds that Respondent’s use of the disputed domain name to host a series of hyperlinks, under headings that appear to be competing with Complainant’s battery offerings, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Respondent registered the disputed domain name in order to prevent Complainant from using its trademark in a domain name and that Respondent acted in bad faith under Policy ¶ 4(b)(ii). See Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
Complainant also argues that Respondent purchased, and is using, the domain names in a manner that disrupts Complainant’s business. The Panel finds that such use of the <shoraibattery.com> and <shoraibatteries.com> domain names is evidence of bad faith registration and use under Policy ¶ 4(b)(iii), where Respondent is in the business of producing batteries. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant has submitted evidence to show that Respondent’s resolving website features many clickable link headings that reference Complainant’s products. The Panel finds that such use results in Respondent’s commercial gain through the receipt of click-through or affiliate fees and that such use is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Complainant, having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shoraibattery.com> and <shoraibatteries.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: November 14, 2011
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