Komatsu America Corp. v. Frank Eusebio / Bryjus LLC
Claim Number: FA2104001943237
Complainant is Komatsu America Corp. (ďComplainantĒ), represented by Christopher Dolan of Barnes & Thornburg LLP, Illinois, USA.† Respondent is Frank Eusebio / Bryjus LLC (ďRespondentĒ), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <komatsupart.com>, registered with 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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 28, 2021; the Forum received payment on April 28, 2021.
On April 29, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <komatsupart.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the ďPolicyĒ).
On May 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondentís registration as technical, administrative, and billing contacts, and to email@example.com.† Also on May 4, 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 Respondents registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 24, 2021.
The Additional Submission was received on June 1, 2021
On May 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael A. Albert 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 be transferred from Respondent to Complainant.
Complainant contends that the disputed domain name is confusingly similar to Complainantís KOMATSU mark. Respondentís domain name entirely incorporates the Complainantís mark with the addition of the generic word ďpartĒ and the generic gTLD ď.com.Ē The addition of generic terms does not differentiate the domain names from the registered trademark.
Respondent lacks rights or legitimate interests in the disputed domain name because Respondent is not affiliated with, licensed, or otherwise authorized to use the KOMATSU mark and has not used the disputed domain name for any bona fide offering of goods or services. Respondentís website is an attempt to pass Respondent off as Complainant to sell goods as authentic KOMATSU goods without approval of Complainant. Respondentís disclaimer is insufficient to distinguish itself because it is displayed in fine print and at the bottom of the website. Respondent offers parts for sale that compete directly with Complainantís business indicating a lack of legitimate noncommercial or fair use.
The disputed domain name was registered and is being used in bad faith. The disputed domain is confusingly similar to the Complainantís mark; Respondent had knowledge of the Complainantís mark; and Respondent is using the Complainantís mark to attract Internet uses for Respondentís own financial gain.
Respondent argues that it is not passing itself off as Complainant, but rather clearly selling aftermarket parts. Respondent provides multiple descriptions and disclaimers to differentiate itself from Complainant, and states repeatedly across its website that it is selling ďaftermarket parts.Ē †Respondent does not disrupt Complainantís business because Complainant does not sell parts on its website. Respondent has not acted in bad faith because Respondent has not listed or offered its domain for sale.
C. Additional Submissions
Complainant contends that Respondentís response fails to establish any mitigation of the confusion caused by Respondentís website. The two statements that appear on Respondentís website do not resolve the confusion caused by the prominent display of Complainantís mark and color scheme that appear similar to those on Complainantís website. Respondent incorrectly alleges that Complainant does not sell or promote goods on the web.
Complainant is a wholly owned subsidiary of Komatsu Limited (ďKLĒ), an equipment manufacturer and distribution company established in 1920. Complainant has an exclusive license to use the KOMATSU and KOMATSU-formative marks in the United States and in various other countries in connection with construction, mining, utility and related equipment and services. Complainant makes use of the KOMATSU mark in its ďKOMATSU America WebsiteĒ that enables Internet uses to access information regarding Komatsuís products and services. Respondent is an e-commerce business that sells aftermarket and replacement parts that may be used in Complainantís products.
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.
The disputed domain name is confusingly similar to Complainantís mark KOMATSU because it contains the entirety of the Complainantís mark, adding only the generic word ďpartĒ and the generic gTLD ď.com.Ē Numerous panels deciding cases under the Policy have held that the incorporation of a complainantís well-known mark in full in a disputed domain name is a compelling factor in favor of a finding of confusing similarity, and that addition of generic terms does not alleviate such confusion. See Komatsu America Corp. v. Komatsu Book / Space, FA1703001719972 (Forum April 11, 2017).
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
Respondent has no rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy.
Respondent is not commonly known by Complainantís mark. Complainant has not licensed or otherwise authorized Respondent the use of KOMATSU mark. Nothing in the record rebuts Complainantís contention that Complainant has never authorized or licensed Respondent to use the KOMATSU mark.† Absent such authorization or common usage, Respondent does not appear to have rights or legitimate interests in the disputed domain. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018).
Respondent is not using the disputed domain name for any bona fide offering of goods or services. The panel agrees that respondent appears to be attempting to pass off its parts as Complainantís. See Dell Inc. v. Devesh Tyagi, FA 1785301. Complainant provides screenshots of Respondentís website which prominently displays Complainantís KOMATSU mark and a blue and yellow color scheme similar to Complainantís KOMATSU America website. The Panel agrees that the descriptive phrases ďpremium aftermarket partsĒ and ďa division of Bryjus LLCĒ included in the header fail to eliminate the risk of confusion. The small text is included under the prominent use of the KOMATSU mark and use Complainantís blue and yellow color scheme.
Respondentís use of a disclaimer in small print placed at the bottom of the website does not prevent likelihood of confusion. See NCS Pearson, Inc. and Regents of the University of Minnesota v. Nana Boonkoom, FA2005001894832 (June 1, 2020). Additionally, Respondentís use of two statements that appear on the website are ambiguous and its use of the phrase ďCertified Premium Komatsu PartsĒ further contributes to the confusion that Complainant has authorized the parts for sale.†
Respondent also sells Complainantís competitorsí parts, and that does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. see General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016).
The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The disputed domain name was registered and is being used in bad faith.
Panel finds Respondent acted with bad faith because it had actual knowledge of Complainantís right in the KOMATSU mark. This knowledge is evident from Respondentís use of the mark, Complainantís well-known presence in the relevant sector of goods, and communications between Complainant and Respondent implying Respondentís knowledge of Complainantís mark.
Panel finds Respondent has acted in bad faith because Respondent has intentionally attempted to attract, for commercial gain, customers by creating a likelihood of confusion. The domain name, <komatsuparts.com>, is nearly identical to <komatsuparts.com> which Complainant uses to redirect to its KOMATSU America Website. Respondent is disrupting Complainantís business by directing Internet users to Respondentís website.
Respondent is incorrect in asserting that Complainantís business is not disrupted because Complainant does not sell or promote parts on its website. The panel finds that Complainant does sell parts on its KOMATSU America website, but even if Complainant did not sell parts, Respondentís use of the mark is still damaging to Complainant by creating the erroneous perception that Respondentís parts are affiliated with the Complainant. This risk is particularly problematic in that Respondent is also selling parts made by competitors of Complainantís.
Lastly, Respondent errs in suggesting that it cannot have acted in bad faith because it did not try to sell its domain name. That is only one example of a circumstance that can give rise (along with other facts) to a finding of bad faith.† Different grounds support a finding of bad faith in this case.
The Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
Accordingly, it is Ordered that the <komatsupart.com> domain name be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated:† June 10, 2021
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