Oneida Air Systems, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2101001930193
Complainant is Oneida Air Systems, Inc. (“Complainant”), New York, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oneidaair.com>, registered with Media Elite Holdings Limited.
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 January 29, 2021; the Forum received payment on January 29, 2021.
On January 29, 2021, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <oneidaair.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 February 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2021 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@oneidaair.com. Also on February 3, 2021, 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 March 1, 2021, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant has rights in the ONEIDA AIR SYSTEMS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,034,420, registered Oct. 4, 2011). See Compl. Annex 4. Respondent’s <oneidaair.com> domain name is identical or confusingly similar to Complainant’s ONEIDA AIR SYSTEMS mark as it includes the ONEIDA AIR SYSTEMS trademark in its entirety, merely removing the world “systems” and adding the most common gTLD, “.com.”
Respondent lacks rights or legitimate interests in the <oneidaair.com> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the ONEIDA AIR SYSTEMS mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name disrupt Complainant’s business by offering goods or services that have no relation to Complainant.
Respondent registered and uses the <oneidaair.com> domain name in bad faith. Complainant has attempted to purchase the disputed domain name from Respondent with no success or response.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is an industry leader in dust collection.
2. Complainant has established its trademark rights in the ONEIDA AIR SYSTEMS mark by means of its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,034,420, registered Oct. 4, 2011).
3. Respondent registered the <oneidaair.com> domain name on September 4, 2005.
4. Respondent uses the disputed domain name to disrupt Complainant’s business by offering goods or services that have no relation to Complainant.
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 asserts rights in the ONEIDA AIR SYSTEMS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,034,420, registered Oct. 4, 2011). See Compl. Annex 4. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per 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).”). Therefore, the Panel finds Complainant has demonstrated rights in the ONEIDA AIR SYSTEMS mark per Policy ¶ 4(a)(i).
The Panel notes that Complainant’s website shows that it has been in its present business and under its present name since 1993.The Panel also notes that the records of Complainant’s ONEIDA AIR SYSTEMS trademark show a first use of the mark and a first use of the mark in commerce in 1993. On that basis the Panel finds that Complainant has established its common law trademark rights to the ONEIDA AIR SYSTEMS mark and that it has had those rights since 1993, well prior to the registration of the disputed domain name.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ONEIDA AIR SYSTEMS mark. Complainant submits that the domain name is confusingly similar to Complainant’s ONEIDA AIR SYSTEMS mark as it includes the mark in its entirety, merely removing the world “systems” and adding the most common gTLD, “.com.” Registration of a domain name that contains a mark in its entirety with a portion of the mark removed and an added gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per 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 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ONEIDA AIR SYSTEMS mark and to use it in its domain name deleting only the word “systems” which does not negate the confusing similarity between the domain name and the mark;
(b) Respondent registered the <oneidaair.com> domain name on September 4, 2005;
(c) Respondent uses the disputed domain name to disrupt Complainant’s business by offering goods or services that have no relation to Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <oneidaair.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the ONEIDA AIR SYSTEMS mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also 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 “Domain Administrator / Fundacion Privacy Services” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the ONEIDA AIR SYSTEMS mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name disrupt Complainant’s business by offering goods or services that have no relation to Complainant. Use of a disputed domain name to offer goods or services with no relation to a complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant argues that Respondent uses the <oneidaair.com> domain name to offer products and services that are unrelated to Complainant’s business. The Panel has looked at Complainant’s website and at the website to which the disputed domain name resolves and finds that Respondent’s website contains advertisements for businesses that are clearly not Complainant’s business, but which offer the same and related dust collection services as Complainant but with the intention of giving the false impression that they either are Complainant’s business, related to it or approved by it, all of which are patently false. The advertisements are for a wide range of businesses that are clearly competitors of Complainant. One of those advertisements advertises Oneida Air Systems Dust Deputy, phraseology which is obviously a direct copy from Complainant’s website and invoking a direct competitor of Complainant. There are many such similar advertisements on Respondent’s website. Therefore the Panel finds Respondent’s actions cannot give rise to a right or legitimate interest in the domain name on the part of Respondent.
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 does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent uses the <oneidaair.com> domain name to offer products and services that are unrelated to Complainant’s business. The Panel has looked at Complainant’s website and at the website to which the disputed domain name resolves and finds that Respondent’s website contains advertisements for businesses that are clearly not Complainant’s business, but which offer the same and related dust collection services as Complainant but with the intention of giving the false impression that they either are Complainant’s business, related to it or approved by it, all of which are patently false. The advertisements are for a wide range of businesses that are clearly competitors of Complainant. One of those advertisements advertises Oneida Air Systems Dust Deputy, phraseology which is obviously a direct copy from Complainant’s website and invoking a direct competitor of Complainant. There are many such similar advertisements on Respondent’s website. Therefore the Panel finds Respondent’s actions and its website show that it has used the domain name in bad faith. The Panel also draws the inference that this evidence shows that Respondent’s intention on registering the domain name was also to try to deceive internet users into believing that the advertisements that would be put on the website were either advertisements for Complainant’s business, related to it or approved by it, all of which are patently false. Such conduct leads to one conclusion, namely that Respondent registered and used the disputed domain name in bad faith.
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ONEIDA AIR SYSTEMS mark and in view of the deceptive conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements 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 <oneidaair.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 2, 2021
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