Teledyne Technologies Incorporated v. YU LU
Claim Number: FA2001001878913
Complainant is Teledyne Technologies Incorporated (“Complainant”), represented by David J. Zoetewey of Teledyne Technologies Incorporated, California, United States. Respondent is YU LU (“Respondent”), Alabama, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <telediyne.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 14, 2020; the Forum received payment on January 14, 2020.
On January 16, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <telediyne.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 January 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2020 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@telediyne.com. Also on January 16, 2020, 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 February 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that it is a well-respected, publicly traded, international company that serves multiple markets that require advanced technology and high reliability and asserts that its products are sold to customers in over one hundred (100) countries, and in 2018 Complainant reported total sales in excess of two billion (2,000,000,000) U.S. dollars worldwide. Complainant operates through more than sixty (60) principal operating facilities across the United States and internationally.
Complainant submits that through its predecessor-in-interest, Complainant has continuously owned and used the TELEDYNE mark in commerce throughout the United States since at least as early as 1951 and in jurisdictions around the world in connection with its goods and services since at least as early as 1968.
Complainant submits that the disputed domain name <telediyne.com> is confusingly similar to its TELEDYNE trademark and service mark, alleging that the misspelling of the TELEDYNE mark does not mitigate the risk of confusion. See Nintendo of America Inc. v. Max Maximus, D2000-0588 (WIPO August 1, 2000) (finding GAMEB0Y.com, spelled with the number zero in place of the letter "o", confusingly similar to Nintendo’s GAME BOY® trademark).
Complainant argues that <telediyne.com> mimics the TELEDYNE mark and that the only logical reason to register that domain name is to trade off the enormous goodwill Complainant has built and enjoys in the TELEDYNE mark by confusing and misdirecting consumers. Complainant asserts that the mark TELEDYNE has no meaning other than to serve as an identifier of Complainant and its goods and services.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, asserting Complainant has never granted Respondent any license or other rights to use the mark in commerce for any purpose; that upon information and belief, Respondent is not commonly known by any name related to TELEDYNE; and that the WHOIS information for the disputed domain confirms this fact.
Complainant moreover submits that Respondent is not currently using the disputed domain name to host an active webpage, but instead, the disputed domain name resolves to a blank page. Respondent refers to a screenshot of the webpage to which the disputed domain name resolves, annexed to the Complaint. Complainant argues that Respondent is not engaging, and has not engaged, in a bona fide offering of goods or services under, or a fair use of, the disputed domain name, which as noted above, resolves to a blank page. Complainant submits that nonuse or passive holding of a domain name is not a bona fide offering of goods or services. See, e.g., Guess? IP Holder L.P. & Guess?, Inc. v. Donald Guess, FA1732916, (Forum June 29, 2017); Oracle Int’l Corp. v. Mbaeri Anselam/Marcos PLC, FA1653946 (Forum Jan. 28, 2016).
Complainant submits that Respondent clearly did not, and still does not, have a legitimate interest or reason to register and/or use the disputed domain name and that Respondent is therefore engaging in a textbook case of cybersquatting in an attempt to profit off the goodwill Complainant created in the TELEDYNE mark and to disrupt Complainant’s business.
Complainant submits that the disputed domain name was registered and is being used in had faith, asserting that through its predecessor-in-interest it has used the TELEDYNE mark in the United States for almost seventy (70) years; that it has obtained eighteen (18) United States trademark registrations for the TELEDYNE mark; that the TELEDYNE mark has no meaning other than as an identifier of Complainant and its goods and services. Accordingly, there can be little doubt that the disputed domain name was registered with Complainant, and its marks in mind. See Black Hills Ammunition, Inc. v. Wall, FA1541570 (Forum Mar. 17, 2014) (finding actual knowledge because there was no legitimate reason for Respondent “to register a domain name containing ‘Black Hills Amo’ other than to trade on Complainant’s trademark rights and that ‘Black Hills Amo’ means nothing other than Complainant’s trademark”).
Complainant further argues that Respondent’s bad faith is also supported by Respondent’s failure to host active (and non-infringing) webpages at the disputed domain name address. See Diners Club Int’l Ltd. v. Earick Allen/Allen & Assocs., FA1650644 (Forum Jan. 6, 2016); Oracle Int’l Corp. v. Mbaeri Anselam/Marcos PLC, FA1653946 (Forum Jan. 28, 2016).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a publicly traded, international company that serves multiple markets that include deep water oil and gas exploration and production, oceanographic research, air and water quality environmental monitoring, factory automation and medical imaging and is the owner of the following portfolio of registered trademarks:
· United States registered trademark TELEDYNE, registration number 885,775, registered on June 6, 1970 on the Principal Register for goods in international class 9.
· United States registered trademark TELEDYNE, registration number 637,429, registered on November 20, 1956 on the Principal Register for goods in class 26.
· United States registered trademark TELEDYNE, registration number 1,035, 647, registered on March 16, 1976 on the Principal Register for goods in international class 7;
· United States registered trademark TELEDYNE, registration number 1,027, 815, registered on December 23, 1975 on the Principal Register for goods in international class 9;
· United States registered trademark TELEDYNE, registration number 1,545,047, registered on June 27, 1989 on the Principal Register for goods in international classes 1, 5, 6, 7, 9, 11, 12, 16 and 20.
· United States registered trademark TELEDYNE, registration number 1,769, 780, registered on May 11, 1993 on the Principal Register for goods in international class 9;
· United States registered trademark TELEDYNE, registration number 2, 068, 209, registered on June 10, 1997 on the Principal Register for goods in international classes 9, 12 and 13;
· United States registered trademark TELEDYNE, registration number 4,782 564, registered on July 28, 2015 on the Principal Register for goods in international class 12;
· United States registered trademark TELEDYNE, registration number 4 782 571, registered on July 28, 2015 on the Principal Register for goods in international class 1;
· United States registered trademark TELEDYNE, registration number 4,849,919, registered on November 10, 2015 on the Principal Register for goods in international class 10;
· United States registered service mark TELEDYNE, registration number 5,061,002 registered on October 11, 2016 on the Principal Register for services in international class 41;
· United States registered trademark TELEDYNE, registration number 5152,289 registered on February 28, 2017 for goods in international class 8.
The disputed domain name was registered on December 17, 2020 and is inactive. It resolves to a webpage with the following message: “ This site can’t be reached telediyne.com’s server could not be found * Did you mean http://teledyne.com ? * search for teledyne ERR_NAME_NOT- RESOLVED”.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the Registrar’s response to the Forum’s enquiry requesting details of the registration of the disputed domain name in the course of this Complaint proceeding.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has adduced uncontested evidence of its rights in the TELEDYNE trademark and service mark acquired through its abovementioned trademark registrations and at common law by its long and international use of the mark on its products and services.
The disputed domain name <telediyne.com> is almost identical to Complainant’s TELEDYNE trademark. Each letter of Complainant’s trademark is reflected in the disputed domain name with no change in their order. The only difference between the disputed domain name and Complainant’s trademark is the addition of the letter “I” between the letters “d” and “y.” In appearance the disputed domain name and mark are almost identical and in pronunciation would be identical as the additional letter would be silent, placed as it is immediately before the letter “y.” In the circumstances of this Complaint the gTLD <.com> extension has no significance and may be ignored for the purpose of comparison.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s TELEDYNE trademark and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, asserting Complainant has never granted Respondent any license or other rights to use those marks in commerce for any purpose; that upon information and belief, Respondent is not commonly known by any name related to TELEDYNE; that the WHOIS information for the disputed domain confirms this fact; that Respondent is not currently using the disputed domain name to host an active webpage, but instead, the disputed domain name resolves to a blank page; that Respondent is not engaging, and has not engaged, in a bona fide offering of goods or services under, or a fair use of, the disputed domain name; and that Respondent’s nonuse or passive holding of a domain name in such circumstances is not a bona fide offering of goods or services.
In such circumstances, the burden of production shifts to Respondent. Respondent has not submitted any Response and therefore has failed to discharge the burden of production. This Panel finds therefore that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name is almost identical to Complainant’s unique trademark. Complainant has averred that the trademark TELEDYNE has no meaning except as its trademark and service mark. It is improbable that the disputed domain name was chosen and registered for any reason other than with Complainant’s mark in mind because of the marks distinctive character and the disputed domain name’s confusing similarity to it. This Panel finds that the disputed domain name was therefore registered in bad faith and its registration and use is, on the balance of probabilities, an exercise in typosquatting by Respondent.
On the evidence adduced, Respondent is passively holding the disputed domain name. This Panel finds that in the circumstances of this Complaint said passive holding is compelling evidence that the disputed domain name was registered and is being used in bad faith: In making this finding this Panel takes into account that on the balance of probabilities the disputed domain name was registered for the purpose of typosquatting to take advantage of its confusing similarity with Complaint’s trademark; the strength of Complainant’s rights in the TELEDYNE mark acquired though a long-established and international reputation having customers in over one hundred (100) countries with reported total sales in 2018 in excess of two billion (2,000,000,000) U.S. dollars worldwide; and that Respondent has failed to respond to this Complaint.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. Complainant has therefore established the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <telediyne.com> domain name be TRANSFERRED from Respondent to Complainant.
________________________
James Bridgeman SC
Panelist
Dated: February 7, 2020
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