iRobot Corporation v. Jason Pomeroy / 1719301 Ontario Ltd. / Pomeroy and Company Inc.
Claim Number: FA2008001907483
Complainant is iRobot Corporation (“Complainant”), represented by Halle B. Markus of Venable LLP, United States. Respondent is Jason Pomeroy / 1719301 Ontario Ltd. / Pomeroy and Company Inc. (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <irobotparts.com>, <irobotbatteryusa.com>, <irobotbatterycanada.com>, <irobotroombabattery.com>, <irobotroombabatteryusa.com>, <robotbatteryusa.com>, and <robotbatterycanada.com>, registered with Godaddy.Com, Llc; 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 6, 2020; the Forum received payment on August 6, 2020.
On August 07, 2020, Godaddy.Com, Llc; GoDaddy.com, LLC confirmed by e-mail to the Forum that the <irobotparts.com>, <irobotbatteryusa.com>, <irobotbatterycanada.com>, <irobotroombabattery.com>, <irobotroombabatteryusa.com>, <robotbatteryusa.com>, and <robotbatterycanada.com> domain names are registered with Godaddy.Com, Llc; GoDaddy.com, LLC and that Respondent is the current registrant of the names. Godaddy.Com, Llc; GoDaddy.com, LLC has verified that Respondent is bound by the Godaddy.Com, Llc; 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 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@irobotparts.com, postmaster@irobotbatteryusa.com, postmaster@irobotbatterycanada.com, postmaster@irobotroombabattery.com, postmaster@irobotroombabatteryusa.com, postmaster@robotbatteryusa.com, postmaster@robotbatterycanada.com. Also on August 11, 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 September 2, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant, iRobot Corporation, is a consumer robotics company. Complainant has rights in the IROBOT and ROOMBA marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,831,865, registered Apr. 12, 2004; Reg. No. 2,772,676, registered Oct. 7, 2003). See Compl. Ex. F. Respondent’s domain names are substantially identical and/or confusingly similar to Complainant’s marks. The <irobotparts.com>, <irobotbatteryusa.com>, <irobotbatterycanada.com>, <irobotroombabattery.com>, and <irobotroombabatteryusa.com> domain names are confusingly similar to the marks because they wholly incorporate Complainant’s IROBOT and/or ROOMBA marks and merely add generic and/or descriptive terms and the “.com” generic top-level domain (“gTLD”). The <robotbatteryusa.com> and <robotbatterycanada.com> domain names are substantially identical to Complainant’s marks since they merely remove the letter “i” from Complainant’s IROBOT mark and add generic and/or descriptive terms and a gTLD.
Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant’s IROBOT or ROOMBA marks and is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to pass off as Complainant in order to divert users to Respondent’s own website to offer related goods.
Respondent registered and uses the disputed domain names in bad faith. Respondent attempts to attract Internet users to its competing website for commercial gain by misrepresenting association with Complainant. Further, Respondent’s registration of the <robotbatteryusa.com> and <robotbatterycanada.com> domain names constitute typosquatting. Finally, Respondent had actual knowledge of Complainant’s rights in the IROBOT and ROOMBA marks.
B. Respondent
Respondent failed to submit a Response in this 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the IROBOT and ROOMBA marks based upon registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of its marks with the USPTO (e.g., Reg. No. 2,831,865, registered Apr. 12, 2004; Reg. No. 2,772,676, registered Oct. 7, 2003). See Compl. Ex. F. Thus, the Panel finds that Complainant has rights in the IROBOT and ROOMBA marks under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s IROBOT and ROOMBA marks. Complainant argues that Respondent’s domain names are substantially identical and/or confusingly similar to Complainant’s marks. Specifically, Complainant submits that the <irobotparts.com>, <irobotbatteryusa.com>, <irobotbatterycanada.com>, <irobotroombabattery.com>, and <irobotroombabatteryusa.com> domain names are confusingly similar to the marks because they wholly incorporate Complainant’s IROBOT and/or ROOMBA marks and merely add generic and/or descriptive terms and the “.com” generic top-level domain (“gTLD”). Complainant claims that the <robotbatteryusa.com> and <robotbatterycanada.com> domain names are substantially identical to Complainant’s marks since they merely remove the letter “i” from Complainant’s IROBOT mark and add generic and/or descriptive terms and the “.com” gTLD. Addition of generic, descriptive, and/or geographic terms and a gTLD to a mark does not necessarily negate confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Additionally, removal of a single letter from a mark may be insufficient to overcome confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Myspace, Inc. v. Kang, FA 672160 (Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity). Complainant notes that the words added to Complainant’s marks include “parts,” “battery,” “USA,” and “Canada” which tend to exacerbate confusion due to their relation to Complainant’s business. As the Panel agrees with Complainant, the Panel finds that the disputed domain names are identical or confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), 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 names and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s IROBOT and ROOMBA trademarks and to use them in its domain names, adding generic and descriptive words which do not negate the confusing similarity between the domain names and the trademarks;
(b) Respondent registered the <irobotbatteryusa.com> and the <irobotbatterycanada.com> domain names on October 21, 2014, the <irobotroombabattery.com> domain name on April 18, 2016, the <irobotparts.com> domain name on October 5, 2016, the <robotbatteryusa.com> and <robotbatterycanada.com> domain names on April 19, 2017, and the <irobotroombabatteryusa.com> domain name on May 6, 2018;
(c) Respondent uses the disputed domain names to pass itself off as Complainant in order to divert users to Respondent’s own website to offer related goods.
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <irobotparts.com>, <irobotbatteryusa.com>, <irobotbatterycanada.com>, <irobotroombabattery.com>, <irobotroombabatteryusa.com>, <robotbatteryusa.com>, and <robotbatterycanada.com> domain names since Respondent is not licensed or authorized to use Complainant’s IROBOT or ROOMBA marks and is not commonly known by the disputed domain names. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. 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). The WHOIS information of record notes “Jason Pomeroy / Pomeroy and Company Inc.” as the registrant and no information suggests that Complainant has authorized Respondent to use the IROBOT or ROOMBA marks in any way. See Compl. Ex. A. Thus, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii);
(f) Complainant also argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the disputed domain names to pass itself off as Complainant in order to divert users to Respondent’s own website and offer related goods. Use of a domain name to offer unauthorized and/or competing products under a complainant’s mark is not considered a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant claims that Respondent uses the disputed domain names to sell parts and accessories for Complainant’s products. Complainant provides a screenshot of Respondent’s website which displays these products for sale in conjunction with Complainant’s marks and logos. See Compl. Ex. M. Complainant further notes that Respondent is not an authorized provider of products under Complainant’s marks. Therefore, the Panel agrees with Complainant that Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <irobotparts.com>, <irobotbatteryusa.com>, <irobotbatterycanada.com>, <irobotroombabattery.com>, <irobotroombabatteryusa.com>, <robotbatteryusa.com>, and <robotbatterycanada.com> domain names in bad faith since Respondent attempts to attract Internet users to its competing website for commercial gain by misrepresenting an association with Complainant. Use of a disputed domain name to pass off an affiliation with a complainant and sell competing or unauthorized products evidences bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant). As previously mentioned, Complainant provides a screenshot of Respondent’s webpage where parts and accessories for Complainant’s products are offered for sale and Complainant’s logos and marks are prominently displayed. See Compl. Ex. M. The Panel therefore agrees with Complainant that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent’s registration of the <robotbatteryusa.com> and <robotbatterycanada.com> domain names constitutes typosquatting. Typosquatting may act as independent evidence of bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Complainant submits that Respondent’s misspelling of the IROBOT mark in these domain names is an example of typosquatting and therefore evidences bad faith. As the Panel agrees that typosquatting is present, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent had actual knowledge of Complainant’s rights in the IROBOT and ROOMBA marks. Evidence that a respondent had actual knowledge of a complainant’s rights in its marks supports a finding of bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Complainant argues that Respondent’s actual knowledge is clear from the fame of Complainant’s marks and Respondent’s use of Complainant’s marks and logos on its website. As the Panel agrees that actual knowledge exists, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <irobotparts.com>, <irobotbatteryusa.com>, <irobotbatterycanada.com>, <irobotroombabattery.com>, <irobotroombabatteryusa.com>, <robotbatteryusa.com>, <robotbatterycanada.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 3, 2020
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