Altec Industries, Inc. v. Austin Stephenson
Claim Number: FA1903001835596
Complainant is Altec Industries, Inc. (“Complainant”), represented by Morris Richardson of Weinburg, Wheeler, Hudgins, Gunn and Dial, Alabama, USA. Respondent is Austin Stephenson (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <altecair.com>, registered with Domain.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 25, 2019; the Forum received payment on March 26, 2019.
On March 25, 2019, Domain.com, LLC confirmed by e-mail to the Forum that the <altecair.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 March 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 2019 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@altecair.com. Also on March 29, 2019, 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 April 17, 2019.
Complainant’s Additional Submission was received on April 22, 2019, and it was timely and in compliance with Supplemental Rule 7.
Respondent did not submit an Additional Submission.
On April 23, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, 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.
Complainant requests that the domain name <altecair.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading provider of products and services to the electric utility, telecommunications, tree care, lights and signs, and contractor markets. Complainant has rights in the ALTEC mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 849,304, registered May 21, 1968). See Compl. Ex. 3. Respondent’s <altecair.com> domain name is confusingly similar to Complainant’s mark as it merely adds the generic term “air” and the generic top-level domain (“gTLD”) “.com” to Complainant’s fully-incorporated mark.
Respondent has no rights or legitimate interests in the <altecair.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant given Respondent permission to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent does not make active use of the disputed domain name as it does not resolve to a website containing any goods or services.
Respondent registered and uses the <altecair.com> domain name in bad faith. Respondent registered the disputed domain name with intent to sell, rent, or otherwise transfer the domain name to Complainant or a competitor of Complainant. Additionally, Respondent registered the domain name to disrupt Complainant’s business by preventing Complainant from reflecting its mark in a domain name connected to its provided services in the air drying industry. Moreover, Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the ALTEC mark.
B. Respondent
Respondent is using the <altecair.com> domain name to operate a heating, air conditioning and HVAC business since April 04, 2014, under the name of Altec Air, LLC. Respondent purchased the <altecair.com> domain name on February 14, 2019. Respondent claims that the Complaint is a bully tactic to get the <altecair.com> domain name.
Respondent is currently developing a website located at the disputed domain name to promote its services offered under its business name. Respondent’s intended use of the <altecair.com> domain name is for services unrelated to Complainant, and Respondent does not wish to sell the domain name, or to disrupt Complainant’s business.
C. Additional Submission of Complainant
Respondent has failed to provide any supporting documentation to further any of its claims. Further, there is no entity currently in business under the name “Altec Services, LLC” in Arkansas. See Compl. Add. Sub. Ex. 1. Additionally, Respondent’s claim that it had no intention to sell the domain name is contradicted by the fact that Respondent did offer to sell the domain name directly to Complainant, first for $40,000, then for $10,000, and finally for $5,000. See Compl. Add. Sub. Ex. 2.
(1) the domain name <altecair.com> 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 <altecair.com>; and
(3) the domain name <altecair.com> 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.
Complainant asserts rights in the ALTEC mark based on registration with the USPTO (e.g. Reg. No. 849,304, registered May 21, 1968). See Compl. Ex. 3. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the ALTEC mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <altecair.com> domain name is confusingly similar to Complainant’s mark as Respondent adds the generic term “air” and the gTLD “.com” to Complainant’s fully incorporated mark. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel therefore finds that the <altecair.com> domain name is confusingly similar to the ALTEC mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant convincingly argues that Respondent lacks rights or legitimate interest in the <altecair.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant given Respondent permission to use the mark.
WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name).
Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the disputed domain name lists the registrant as “Austin Stephenson,” and there is no other evidence provided to suggest that Respondent was authorized by Complainant to use the ALTEC mark.
Further, Complainant notes in its Additional Submission that there is no entity currently in business under the name “Altec Services, LLC” in Arkansas. See Compl. Add. Sub. Ex. 1. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent lacks rights or legitimate interest because Respondent fails to make an active use of the <altecair.com> domain name. Panel notes that Respondent has not submitted any evidence in support of his claim that the disputed Domain Name was being used under an Arkansas entity identified as ALTEC Services, LLC. (See Resp. ¶¶ 2, 3[a], [b], [b]II, [b]IV; [c](ii).) Moreover, the alleged entity, ALTEC Services, LLC, was not identified by the Arkansas Secretary of State as a registered entity at the time that ALTEC filed its Complaint in this matter. Inactive holding of a domain name can demonstrate a lack of rights or legitimate interests in the name per Policy ¶¶4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays the message “Forbidden You don’t have permission to access / on this server.” See Compl. Ex. 15. Therefore, the Panel finds that Respondent’s non-usage of the domain name, provides conclusive evidence of Respondent’s lack of rights and legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
The Panel notes that Respondent has not submitted any evidence in support of his claim that the disputed Domain Name was being used under an Arkansas entity identified as ALTEC Services, LLC. (See Resp. ¶¶ 2, 3[a], [b], [b]II, [b]IV; [c](ii).). Moreover, the alleged entity, ALTEC Services, LLC, was not identified by the Arkansas Secretary of State as a registered entity at the time that ALTEC filed its Complaint in this matter.
Complainant has thus made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Respondent subsequently failed to offer credible evidence to shoulder its shifting burden to show that it does have rights or legitimate interests in the <altecair.com> domain name. The Panel therefore finds that Respondent has no rights or interests in the <altecair.com> domain name under the Policy.
Respondent registered the <altecair.com> domain name on February 14, 2019 (Ex. 2), with at least constructive knowledge of ALTEC’S rights in the ALTEC trademark by virtue of Altec’s prior registration of its word mark, ALTEC, with the United States Patent and Trademark Office (“USPTO”) on May 21, 1968. (Ex. 3). The Trademark “ALTEC” is not a common term. See Digi Int’l v. DDI Sys., FA 124506 (Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Forum Oct. 4, 2002). Registration of a confusingly similar domain name with such constructive knowledge is evidence of a bad-faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii).
Respondent also registered the <altecair.com> domain name in bad faith because Respondent’s subsequent actions evidence a prior intent to have registered the disputed domain name to sell, rent, or otherwise transfer the domain name registration to Complainant or to a competitor of Complainant or otherwise to prevent Complainant from use of its ALTEC mark.
Although Respondent claimed (Resp. ¶[3][c](1) that he was not selling the domain name <altecair.com>, Complainant provides convincing evidence (See Compl. Add. Sub. Ex. 2. Ex. 2) that, in telephone and in e-mail correspondence, Respondent attempted to sell the disputed domain name to ALTEC for sums of $40,000, then $10,000, and finally $5,000. Panel rules that this cybersquatting activity by Respondent is bad faith, in accordance with Policy ¶ 4(b)(i).
Registering a disputed domain name with the intent to sell said domain name can demonstrate bad faith per Policy ¶ 4(b)(i). See Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere failure to make an active use of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale). Here, the disputed domain name of <altecair.com> resolves to an error page. See Compl. Ex. 15.
Accordingly, the Panel finds that Respondent’s offer to sell the domain name indicates it registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Further, Respondent’s usage of the <altecair.com> domain name was in bad faith because its usage disrupted the business of ALTEC by preventing registration of natural line extensions of ALTEC’S products. Here, the Complainant, ALTEC, was prevented from using the mark for its intended use of the mark in International Class 011 for “air drying units for commercial and industrial use” (see ¶ 6(c)(1) and (3) of the Complaint).
Respondent also claims, without providing any supporting evidence, that he is not capitalizing on ALTEC’s brand because he is using the Domain Name for “heating and air conditioning [sic] work or HVAC work.” (Resp. [3][a].) However, Respondent’s use of ALTEC’S mark is likely to cause confusion for ALTEC’S customers in the general construction industry.
To the contrary, the evidence does show that Respondent’s use of the disputed Domain Name is an attempt to capitalize on ALTEC’S brand and goodwill so as to cause customers to be directed to Respondent’s business, and/or to assume that there is some connection with ALTEC’S and Respondent’s business. Panel therefore rules that Respondent has registered and has used the <altecair.com> domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <altecair.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: May 7, 2019
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