Delta Fire Systems, Inc. v. Delta Fire Systems / deltafireinc
Claim Number: FA1803001776386
Complainant is Delta Fire Systems, Inc. (“Complainant”), represented by Brendan Lillis of Phillips Lytle LLP, New York, USA. Respondent is Delta Fire Systems / deltafireinc (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deltafireinc.com>, registered with Wild West Domains, 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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 16, 2018; the Forum received payment on March 16, 2018.
On March 19, 2018, Wild West Domains, LLC confirmed by e-mail to the Forum that the <deltafireinc.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 March 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2018 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@deltafireinc.com. Also on March 26, 2018, 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 April 18,2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 owns and operates a fire protection and alarm business which offers installation, maintenance, and inspection related goods and services. Complainant has rights in the DELTA FIRE SYSTEMS INC. mark through its trademark application with the United States Patent and Trademark Office (“USPTO”) (e.g., Ser. No. 8,763,510, filed Oct. 3, 2017). See Compl. Annex A. Respondent’s <deltafireinc.com> domain name is identical to Complainant’s DELTA FIRE SYSTEMS INC. mark as Respondent deletes the term “system” in the mark and adds a “.com” generic top level domain (“gTLD”) to the mark.
Respondent has no rights or legitimate interests in the <deltafireinc.com> domain name. For instance, Respondent is not authorized to use Complainant’s DELTA FIRE SYSTEMS INC. mark and is not commonly known by the disputed domain name. In fact, Respondent registered the disputed domain name using Complainant’s information. Additionally, Respondent attempts to impersonate Complainant and redirect users from the disputed domain name to Complainant’s website.
Respondent registered and is using the <deltafireinc.com> domain name in bad faith. Respondent disrupts Complainant’s business and diverts users to the disputed domain name as Respondent impersonates Complainant through email requests for quotations (“RFQs”) and purchase orders (“POs”). Furthermore, Respondent has failed to respond to Complainant’s calls and cease and desist letters.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name, <deltafireinc.com>, was registered on January 29, 2018.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting common law trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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.”).
The Panel finds that the disputed domain name, <deltafireinc.com>, is confusingly similar to Complainant’s valid and subsisting common law trademark, DELTA FIRE SYSTEMS INC. Complainant has applied to register this mark with the United States Patent and Trademark Office (USPTO). This mark was published for opposition on February 28, 2018. As no objection to its registration was received by the USPTO before March 28, 2018, the mark should issue in due course; however, it has not yet issued. As such, a non-issued trademark application is insufficient grounds to base rights in this proceeding.
However, Complainant, without specifically expressing it in trademark terms, does go into a great amount of detail explaining its common law rights in and to this the trademark DELTA FIRE SYSTEM INC., starting in 1963. As such, it adequately pleads its common law rights in and to this trademark.
Respondent arrives at the disputed domain name by merely deleting the world “systems” and adding the g TLD “.com” to the end of the mark. This is insufficient to distinguish the disputed domain name from Complainant’s common law mark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s common law mark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no rights, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name.
Most importantly, Complainant does not make a specific argument addressing whether Respondent is making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, it does argue that Respondent passes itself off in furtherance of a phishing scheme. In fact, the evidence in Annex C shows that Respondent has used Complainant’s trademark to impersonate Complainant and divert customers from Complainant to Respondent. This is does not show that Respondent has any rights or legitimate interests in or to the disputed domain name.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant argues Respondent registered and is using the <deltafireinc.com> domain name in bad faith because Respondent disrupts Complainant’s business and diverts users to the disputed domain name. Additionally, Complainant contends Respondent is attempting to impersonate Complainant through emails. Passing off as a complainant through emails may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Complainant provides copies of invoices, emails, RFQs, and POs sent from Respondent’s email address. See Compl. Annexes C-G. Complainant argues that Respondent registered the disputed domain name using Complainant’s physical address and false phone number and email address. See Compl. Annex B. Therefore, the Panel finds that Respondent’s attempts to pass off as Complainant constitute bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Further, given the long duration of use of the trademark DELTA FIRE SYSTEMS INC and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s prior rights and interests in this trademark.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <deltafireinc.com> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: April 21, 2018
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