Tyco Safety Products Canada Ltd. v. Ayhan Yaman / Data Güvenlik
Claim Number: FA2303002037363
Complainant is Tyco Safety Products Canada Ltd. (“Complainant”), represented by Jason J. Mazur of ArentFox Schiff LLP, District of Columbia. Respondent is Ayhan Yaman / Data Güvenlik (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dscalarm.net>, registered with Google LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on March 26, 2023; Forum received payment on March 26, 2023.
On March 27, 2023, Google LLC confirmed by e-mail to Forum that the <dscalarm.net> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2023 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@dscalarm.net. Also on March 27, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default. Respondent did however send an email to the Forum, see below.
On April 21, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
On April 21, 2023, the Panel issued a procedural order, requesting both parties to provide certain information, see below.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 states that it offers electronic security goods and services, including alarm systems. It is a subsidiary of Johnson Controls International plc, a global diversified technology and multi-industrial leader that is publicly listed on the New York Stock Exchange and serves a wide range of customers in more than 150 countries. Complainant, together with its affiliated and related companies (collectively, “Johnson Controls”), employs approximately 100,000 people in 2,000 locations around the world, including in the United States and Turkey. Sales of products and services by Johnson Controls in 2021 alone amounted to over US $23 billion. Complainant asserts rights in the DSC mark based upon its registration in the United States in 1994 and in Turkey in 2014.
Complainant alleges that the disputed domain name is confusingly similar to its DSC trademark because it wholly incorporates the mark and merely adds the descriptive or generic word “alarm” and the generic top-level domain name (“gTLD”) “.net”.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s DSC mark and is not commonly known by the disputed domain name. The resolving website “offers the sale of DSC-branded security and alarm products and related content. Respondent’s website at the Disputed Domain Name is very likely to confuse and mislead consumers into believing falsely that Respondent is Complainant and that Respondent’s website and the products and services offered on the website are affiliated with, or sponsored or endorsed by, Complainant.” Text on the resolving website is neither sufficiently prominent nor clear enough to satisfy the requirements for nominative fair use (Oki Test).
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent creates a likelihood of confusion with Complainant for commercial gain. Respondent had actual knowledge of Complainant’s rights in the DSC mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its email to Forum, Respondent states, in pertinent part: “Hello, first of all, I'm sorry, my English is not good, I translate. We have been using the domain name for about 8 years. There was no objection when using domain name in 8 years because domain was always low and not displayed. We sell and install DSC products in Turkey, we did not try to make a profit under this name, we tried to grow this brand. Turkey has a distributor of these products, we buy and sell from her, no one has said not to use this name until now, but we transferred the domain name to another domain.”
C. Additional Submissions
Complainant
In its reply to the Panel’s request for additional information, Complainant confirms that its translation of the resolving website at the time the Complaint was filed was correct.
Complainant states that the resolving website was changed after the Complaint was filed: the disputed domain name was redirected to a new website that prominently displays the following header:
DSC is a trademark of Tyco Safety Products in Canada. We are one of the companies that sells the product of this brand and provides its service. The products we use are original Tyco Safety Products DSC production products. We certainly do not use or sell counterfeit, non-replica Tyco Safety Products DSC products. We are proud and honored to serve you with our experience in the DSC brand, which we have been serving for years.
Complainant alleges that neither the new website, nor the website at the time the Complaint was filed, satisfy condition (iii) of the Oki Test[1], namely that the site must accurately and prominently disclose the registrant’s relationship with the trademark holder. And this because:
Regarding the website at the time the Complaint was filed
Text that might be considered to be a disclaimer is not sufficiently clear (it refers to “us” and “we”) nor prominent (it appears on the “About Us” page) to satisfy the Oki Test. The key portion of the text in question is reproduced below:
The About Us page displays the following:
An Unrivaled Combination of Technology and Experience
…
Our company, which became a DSC alarm dealer in 2000, …
DSC Alarm is made in Canada and is a world brand. …
Nor does the text on the home page satisfy the Oki Test. The relevant portion of that text is reproduced below.
What is DSC Alarm System?
DSC Alarm is a world-renowned quality Canadian alarm system. …
Regarding the new website
It is still prominently branded with Complainant’s DSC mark (including in the website favicon), and the heading does not clearly communicate that the operator of the website is not in fact the trademark owner. Indeed, Respondent fails to identify the “we” party that operates the website and sells the products, and thus the disclaimer does nothing to “accurately and prominently disclose” Respondent’s relationship or lack of it with Complainant. Instead, visitors will continue falsely to believe that the website at the disputed domain name is that of Complainant, and thus Respondent is continuing to use Complainant's DSC mark in a manner that is likely to mislead consumers.
Further, says Complainant, citing UDRP precedents, “a respondent’s post hoc change to a website at a disputed domain name, done to try and defeat a complainant’s UDRP complaint, demonstrates a lack of rights or legitimate interests … and does nothing to change the evidence of Respondent’s bad faith registration and use of the Disputed Domain Name”.
Complainant states that Respondent is not an authorized dealer of Complainant’s DSC products, and that there is no relationship between Respondent and Complainant.
Regarding Respondent’s allegation that it offers only authentic DSC products, which it acquires legally from an authorized distributor of Complainant’s products, Complainant states that it has no practical way to confirm whether all DSC products Respondent purports to sell on its website are authentic DSC products originating from Complainant. Complainant’s only official distributor in Turkey said that Respondent had only purchased 16 panels and some sensors, whereas the resolving website purports to offer the sale of far more DSC-branded products than this.
Regarding the delay between the 2015 registration of the disputed domain name and the filing of the instant Complaint, Complainant states that it was not aware of the existence of the disputed domain name until October 2022, when, through its trademark watch service, it discovered that Respondent had filed in July 2022 a trademark application in Turkey for the mark DSC ALARM. Complainant sent a cease and desist letter and Respondent withdrew the trademark application.
Finally, Complainant states that, by redirecting the disputed domain name to a new website, “Respondent is using the domain to drive traffic to a business unrelated to the trademark owner Complainant.”
Respondent
Respondent did not reply to the Panel’s request for additional information.
Preliminary issue: failure to reply to procedural order
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply to its procedural order as it considers appropriate. Those inferences are set forth below, as appropriate.
Preliminary issue: consent to transfer
In its Procedural Order, the Panel requested Respondent to indicate whether it consented to transfer the disputed domain name.
As Respondent did not reply to the procedural order, the Panel infers that that it does not consent to transfer the disputed domain name.
Preliminary issue: scope of the UDRP
In its reply to the Panel’s procedural order, Complainant states that Respondent, by redirecting the disputed domain name to a new website, is using the domain to drive traffic to a business unrelated to the trademark owner Complainant. This would appear to be an allegation regarding infringement of Complainant’s 2013 Turkish trademark.
Such an allegation is outside the scope of the UDRP, and any challenges in that respect should be presented to national courts. See Happy State Bank d/b/a GoldStar Trust Company v. Ronny Yakov / CrowdPay.us, Inc. FA 1802648 (Forum Sept. 27, 2018); see also Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else).
Indeed, as stated in National Alliance for the Mentally Ill Contra Costa v. Mary Rae Fouts, FA0310000204074 (Forum, Nov.28, 2003):
This Panel takes the view that the goals of the Policy are limited. Domain name registrations are basically first-come-first-served, and the purpose of the Policy is limited to rectifying cases of obvious cyber-squatting.
The closest equivalent to a legislative history for the Policy can be found in the 30 April 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy (available online at: http://wipo2.wipo.int/process1/report/doc/report.doc ). This report states at paragraph 135:
In view of the weight of opinion against mandatory submission to an administrative procedure in respect of any intellectual property dispute arising out of a domain name registration, the final recommendations of the WIPO Process contain two major changes in respect of the suggested administrative dispute‑resolution procedure:
(i) First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith.
(ii) Secondly, the notion of an abusive domain name registration is defined solely by reference to violations of trademark rights and not by reference to violations of other intellectual property rights, such as personality rights.
And the WIPO Report states at 153:
… The scope of the procedure would be limited to cases of abusive registrations (or cybersquatting), as defined below, and would not be available for disputes between parties with competing rights acting in good faith.
And at 166:
The first limitation would confine the availability of the procedure to cases of deliberate, bad faith abusive registrations.
For the reasons set forth below, the Panel finds that the allegations set forth in the original Complaint are within the scope of the UDRP.
Preliminary issue: independent research
According to paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), a Panel may conduct limited factual research regarding disputed domain names:
Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.
This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.
The Panel has consulted both the current resolving website, and, through the Internet Archive, previous versions of the resolving website. The resulting findings are set forth below.
Complainant owns the mark DSC and uses to market alarm systems, including in Turkey.
Complainant’s rights in its mark date back to 1994 in the USA and to at least 2014 in Turkey.
The disputed domain name was registered in 2015.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website explicitly refers to Complainant; it displays Complainant’s mark and offers to sell Complainant’s products. Text on the resolving website is neither sufficiently prominent nor clear enough to disclose the lack of relationship between Complainant and Respondent.
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 disputed domain name wholly incorporates Complainant’s DSC mark and merely adds the descriptive/generic term “alarm” and the gTLD “.net”. Adding or removing descriptive or generic terms and a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore the Panel finds that the <dscalarm.net> domain name is confusingly similar to Complainant’s DSC mark under Policy ¶ 4(a)(i).
Respondent is not licensed or otherwise authorized to use Complainant’s DSC mark and is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. 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). Here, the WHOIS information for the disputed domain name lists the registrant as “Ayhan Yaman / Data Güvenlik”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
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”).
Here, Complainant has made a prima facie case. In its email to the Forum, Respondent appears to invoke the doctrine of nominative fair use. As stated in Sub-Zero, Inc. v. Daniel Ellis / Joel Gonzalez / SEO Repair Shop / Elite Sub-Zero Repair, FA2210002014882 (Forum, Nov. 15, 2022):
The doctrine of nominative fair use was articulated by the Ninth Circuit Court of Appeals decisions in New Kids on the Block v. News American Publishing, Inc., 971 F.2d. 302 (9th Cr. 1992), and Toyota Motor Sales, U.S.A., Inc .v. Tabari, 610 F.3d. 1171 (9th Cir. 2010). In Tabari, the plaintiffs were auto brokers who registered and used the domain names <buy-a-lexus.com> and <buyorleaselexus.com.> The court in this case held that “momentary uncertainty” does not preclude the nominative use of another’s mark in a domain name, provided that a truthful use is being made to describe the domain name registrant’s business.” 610 F.2. at 1179.
These principles have been applied by UDRP panels. The leading decision is Oki-Data, referred to in 2.8 of the cited WIPO Jurisprudential Overview 3.0, in which the respondent was a reseller of the complainant’s OKIDATA products. The respondent registered and used the domain name <okidataparts.com> in connection with that business. The panel in that case concluded that this use could be a bona fide offering of goods or services within the meaning of the Policy if the following conditions were satisfied:
· The respondent must actually be offering the goods or services at issue,
· The respondent must use the site to sell only the trademarked goods (otherwise there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods),
· The site itself must accurately disclose the respondent’s relationship with the trademark owner, and
· The respondent must not try to ‘corner the market’ in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
Other panels have concluded that applying the nominative fair use doctrine could also be appropriate in cases other than those involving a reseller of branded parts, provided that the respondent operated a business genuinely revolving around the trademark owner’s goods or services, see National Association for Stock Car Auto Racing, Inc. v. Racing Connection/The Racin’ Connection, Inc., D2007-1524 (WIPO January 28, 2008) and YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC. FA 1675141 (Forum July 11, 2016). The Oki Data test has also been applied for registrants offering repair services, see General Motors LLC v. Flashcraft, Inc DBA Cad Company D2011-2117 (WIPO January 30, 2012).
In the instant case Complainant does not allege that conditions (i), (ii), or (iv) of the Oki Test are violated. It does allege that condition (iii) is violated, in particular because the disclaimer text on the websites (whether when the Complaint was filed or subsequently) is not sufficiently prominent nor clear enough.
As a preliminary matter, the Panel notes that the determining website for the instant case is the website at the time the Complaint was filed. See MB Financial Bank, N.A. v. MBBANK, FA0602000644517 (Forum April 4, 2006) (finding bad faith and no legitimate interest after noting “that the proper record for review of this dispute should be based on the website and Domain Name as it existed on the date the Complaint was filed, not on the post hoc website that the Respondent created after the fact [without explanation]”); see also InfoSpace, Inc. v. Sunwave Communications c/o Donna McCole, FA0309000198015 (Forum Nov. 10, 2003) (finding that respondent’s alteration of a website following commencement of the UDRP was “contrived to prevent Complainant from succeeding, not to make a legitimate noncommercial or fair use of the domain name pursuant to Policy paragraph 4(c)(iii)”); see also American Airlines v. James Manley d/b/a Webtoast Internet Services, Inc., FA1006001330044 (Forum July 27, 2010) (“This panel’s proper focus is on the <americanway.com> website that was contemporary with the filing of the Complaint. That website does not show Respondent to be making a bona fide offering or [sic] goods or services or fair use of its domain name.”).
The Panel agrees with Complainant’s allegation that the disclaimer text on the resolving website at the time the Complainant was filed is neither sufficiently prominent, nor clear enough, to satisfy condition (iii) of the Oki Test. And this in particular because the website includes a page named “Dealership Application”, which states: “For Dsc dealership application, you must fill out the form below. After the form reaches us, it will be reviewed and you will be returned as soon as possible.” Such a page implies that Respondent is authorized to conclude dealership agreements on behalf of Complainant, which is not the case.
Thus the resolving website does not accurately disclose Respondent’s lack of relationship with Complainant.
While not dispositive for the instant case, the Panel also finds, obiter dictum, that, while the disclaimer text on the new resolving website is sufficiently prominent, it is not clear enough, in particular in light of the “Dealership Application” page referred to above (which is also found on the new resolving website).
Since Respondent provides no justification (other than acting as a distributor/reseller) for its use of the disputed domain name, the Panel finds, on the balance of probabilities and the preponderance of the evidence before it, that Complainant has fulfilled its burden of proving this element of the Policy.
Thus, for all the reasons given above, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
The disputed domain name was registered in 2015; the instant Complaint was filed eight years later. In its email to the Forum, Respondent appears to invoke the doctrine of laches.
The Panel considers it important to note that recent cases have begun to apply laches in contrast to earlier cases to the contrary, and the following cases have been considered in reaching this Panel’s determination regarding laches. See craigslist, Inc. v. Craig Solomon Online Services, FA 1445057 (Forum Aug. 13, 2012) (applying laches where local online operating business would be prejudiced by transfer after sophisticated Complainant’s unexplained delay); see also The New York Times Co. v. Name Admin. Inc. (BVI), FA 1349045 (Forum Nov. 17, 2010) (Finding that “[a] small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant”); cf., Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”); City Bank v. Domain Admin / Inavit, Inc. FA 1564337 (Forum July 21, 2014) (Laches not reached, but noting that lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name, or the respondent's alleged bad faith in registering and using the domain name);Tony Novak v. Marchex Sales, Inc / Brendhan Hight, FA 1418478 (Forum Mar. 1, 2012) (while not finding laches nine year delay in bringing complaint held not to establish bad faith); see generally, Mile, Inc. v. Michael Burg, D2010-2011 (WIPO, February 7, 2011) (The parties in the current proceeding are both located in the United States, where courts recognize the equitable doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims. However, in the United States, the defense of laches typically bars the recovery of damages incurred before the filing of a lawsuit, and courts have concluded that the rationale behind the doctrine of laches does not militate against injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace); but see Progman Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393 (“It is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy”); The E.W. Scripps Company v. Sinologic Indus., WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy's purposes); The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”); Tom Cruise v. Network Operations Center/ Alberta Hot Rods, WIPO Case No. D2006-0560 (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint).
Based on the foregoing, the Panel finds that although in appropriate cases the equitable defense of laches may apply, this is not one such case, in particular in light of Complainant’s explanation for the lapse of time between the registration of the disputed domain name and the filing of the Complaint, see above under Additional Submissions.
Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and explicitly refers to Complainant and its products. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
The Panel agrees with Complainant’s allegation that Respondent’s use of the disputed domain name creates a likelihood of confusion with Complainant for commercial gain. While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also State Fair of Texas v. Granbury.com, (FA0007000095288) Forum Sept. 12, 2000) (“Respondent has registered and used the name in bad faith. Respondent has intentionally attempted to attract for commercial gain Internet users to Respondent’s web site or other on-line location by creating a likelihood of confusion with the Complainant’s mark as to the source sponsorship affiliation or endorsement of Respondent’s website or location or of a product or service on Respondent’s web site or location.”). Therefore the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dscalarm.net> domain name be TRANSFERRED from Respondent to Complainant.
April 30, 2023 Panelist
Dated: Richard Hill
[1] See of 2.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”)
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