CHEMETRICS, INC. v. Robert Richardson
Claim Number: FA1708001746051
Complainant is CHEMETRICS, INC. (“Complainant”), represented by Timothy R. Kroboth of Kroboth Law Office, North Carolina, USA. Respondent is Robert Richardson (“Respondent”), represented by Randy Michels of Trust Tree Legal, P.C., Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chemetrics.net> and <chemetrics.biz>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 24, 2017; the Forum received payment on August 24, 2017.
On August 25, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <chemetrics.net> and <chemetrics.biz> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 2017 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@chemetrics.net and postmaster@chemetrics.biz. Also on August 28, 2017, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Chemetrics Inc., uses the CHEMETRICS mark to provide and market its products and services. Complainant has rights in the CHEMETRICS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,509,716, registered Oct. 25, 1988). Additionally, Complainant registered the CHEMETRICS mark with government trademark entities in China, Korea, and the UK. Respondent’s <chemetrics.net> and <chemetrics.biz> domain names are identical or confusingly similar, as they contain Complainant’s CHEMETRICS mark in its entirety, merely adding the generic top level domain (“gTLD”) “.net.” or “.biz.”
ii) Respondent does not have rights or legitimate interests in the <chemetrics.net> and <chemetrics.biz> domain names. Respondent is not commonly known by the disputed domain names. Complainant has not granted Respondent permission or license to use the CHEMETRICS mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the disputed domain names in order to trade upon Complainant’s global reputation.
iii) Respondent has registered and used the <chemetrics.net> and <chemetrics.biz> domain names in bad faith. The disputed domain names are inactive with no demonstrable intent to use the websites. Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the CHEMETRICS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the disputed domain name was created on May 10, 2017.
Complainant established that it had rights in the mark contained in the disputed domain names. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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.
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(f), 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 (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.”).
Identical and/or Confusingly Similar
Complainant claims rights in the CHEMETRICS mark based upon its registration with the USPTO (e.g., Reg. No. 1,509,716, registered Oct. 25, 1988). Registration with USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Additionally, Complainant claims it registered the CHEMETRICS mark with government trademark entities in China, Korea, and the UK. Panels have determined that registrations with multiple government entities are sufficient to show rights in a mark. See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has established sufficient rights in the CHEMETRICS mark per Policy ¶ 4(a)(i).
Complainant asserts that <chemetrics.net> and <chemetrics.biz> are identical or confusingly similar to the CHEMETRICS mark, as they contain the mark in its entirety, merely adding the gTLDs “.net” and “.biz”. The addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that <chemetrics.net> and <chemetrics.biz> do not contain changes that would sufficiently distinguish them from the CHEMETRICS mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)
(“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant argues that Respondent has no rights or legitimate interests in <chemetrics.net> and <chemetrics.biz>, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the CHEMETRICS mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain names, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The Panel notes that the WHOIS information of record identifies Respondent as “Richard Robertson.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that a respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). As such, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to make a bona fide offering of goods or services, as Respondent is using the infringing Domain Names to trade upon Complainant’s global reputation. Using a mark to trade off of the reputation of a complainant is not considered a bona fide offering of goods or services. See Bloomberg L.P v. Bloomberg Realty (India) Private Limited, NAF Decision FA 1204001439263. (“Use of a domain name which intentionally trade on the fame of another cannot constitute a bona fide offering of goods and services”). Complainant’s use of the CHEMETRICS mark in the global sale of goods and services for nearly 50 years evinces the strong good will and reputation associated with the mark. The Panel agrees with Complainant, finding that Respondent registered the domain names for the purpose of trading off of Complainant’s reputation, failing to make a bona fide offering of goods or services pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant argues that Respondent registered and is using the <chemetrics.net> and <chemetrics.biz> domain names in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. Commercially benefiting via initial interest confusion can evince bad faith registration and use. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Complainant further argues that Respondent registered the confusingly similar domain names to gain Internet traffic by users seeking Complainant’s business. Complainant contends that the disputed domain names resolved to parked web pages with no demonstrable intent to make use of the sites. Panels have found bad faith where the respondent made no use of the domain name in question and there were no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000); see also Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). Therefore, the Panel concludes that Respondent registered and is using <chemetrics.net> and <chemetrics.biz> bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant argues Respondent had actual knowledge of Complainant’s CHEMETRICS mark and business. Complainant also contends that in light of the fame, notoriety, and long-standing use of Complainant's CHEMETRICS mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Furthermore, Complainant provides evidence that Respondent communicated to Complainant’s President praising the “wonderful product line” but hiding the fact that he had registered confusingly similar domain names. Thus, the Panel determines that Respondent had actual knowledge of Complainant and its rights to the CHEMETRICS mark when it registered <chemetrics.net> and <chemetrics.biz>.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chemetrics.net> and <chemetrics.biz> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 29, 2017
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