Emerson Electric Co. v. domain admin / domain registration
Claim Number: FA1711001759527
Complainant is Emerson Electric, Co. (“Complainant”), represented by Joseph E. Walsh of Harness, Dickey & Pierce, PLC., Missouri, USA. Respondent is domain admin / domain registration (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <whiterodgerscontrols.com>, registered with Key-Systems GmbH.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 21, 2017; the Forum received payment on November 21, 2017.
On Nov 22, 2017, Key-Systems GmbH confirmed by e-mail to the Forum that the <whiterodgerscontrols.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 November 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 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@whiterodgerscontrols.com. Also on November 30, 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 December 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Emerson Electric Co., is the owner of the WHITE RODGERS mark, which it licenses for use in connection with furnace controls, gas valves, cooling and heat pump controls, water heater valves and controls, as well as thermostats. Complainant has rights in the WHITE RODGERS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (WHITE-RODGERS—Reg. No. 691,193, registered Jan. 12, 1960). Respondent’s <whiterodgerscontrols.com> domain name is confusingly similar to Complainant’s WHITE RODGERS mark, as the domain name contains the mark in its entirety—less the space—and adds the generic word “controls,” which describes Complainant’s business, and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <whiterodgerscontrols.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the WHITE RODGERS mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the page resolves to a page of “related links.” The resolving website also contains a banner link stating “Buy this Domain.”
Respondent registered and is using the <whiterodgerscontrols.com> domain name in bad faith. Respondent’s general offer to sell the domain name is evidence of its bad faith. Additionally, Respondent’s use of the domain name to host a page of pay-per-click hyperlinks is a diversionary use from which Respondent benefits.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Emerson Electric Co., is the owner of the WHITE-RODGERS mark, which it licenses for use in connection with furnace controls, gas valves, cooling and heat pump controls, water heater valves and controls, as well as thermostats. Complainant has rights in the WHITE-RODGERS mark based upon registration with the USPTO (Reg. No. 691,193, registered Jan. 12, 1960). Respondent’s <whiterodgerscontrols.com> domain name is confusingly similar to Complainant’s WHITE-RODGERS mark, as the domain name contains the mark in its entirety—less the hyphen—and adds the generic word “controls,” which describes Complainant’s business, and the “.com” generic top-level domain (“gTLD”).
Respondent, domain admin / domain registration, registered the <whiterodgerscontrols.com> domain name on May 8, 2017.
Respondent has no rights or legitimate interests in the <whiterodgerscontrols.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the WHITE-RODGERS mark. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, domain name resolved to a web page that shows a list of “Related Links,” which consisted primarily of links to heating and cooling control providers and to heating and cooling repair service sites.
Respondent registered and is using the <whiterodgerscontrols.com> domain name in bad faith. Additionally, Respondent’s use of the domain name to host a page of pay-per-click hyperlinks is a diversionary use from which Respondent benefits.
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.”).
Complainant owns rights in the WHITE-RODGERS mark under Policy ¶ 4(a)(i) based upon registration with the USPTO. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <whiterodgerscontrols.com> domain name is confusingly similar to the WHITE-RODGERS mark, as the name contains the mark in its entirety—less the hyphen—and adds the generic word “controls,” which describes Complainant’s business, and the “.com” gTLD. Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in <whiterodgerscontrols.com>. Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use the WHITE-RODGERS mark. A privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. As a result, the WHOIS information of record identifies the domain name registrant as “domain admin / domain registration.”
Where a response is lacking, the WHOIS information can support a finding that a respondent is not commonly known by a disputed domain name, 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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name).
Additionally, lack of evidence in the record to indicate that a respondent had been authorized to register a domain name using a complainant’s mark supports a finding that 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).
Respondent has failed to use the <whiterodgerscontrols.com>domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Respondent uses the domain name to link to competing third party websites, from which Respondent presumably commercially gained through receipt of click-through fees. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Respondent’s general offer to sell the <whiterodgerscontrols.com> domain name provides additional evidence Respondent does not have rights or legitimate interests in the domain name per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name).
Respondent’s bad faith under Policy ¶¶ 4(b)(iv) is shown by its use of the <whiterodgerscontrols.com> domain name to link to competing third party websites, from which Respondent presumably received click-through fees. See Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
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 <whiterodgerscontrols.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 3, 2018
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