DECISION

 

LACO Industries, LLC v. Pointer Angelina

Claim Number: FA2505002153820

 

PARTIES

Complainant is LACO Industries, LLC ("Complainant"), represented by Jennifer Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is Pointer Angelina ("Respondent"), Denmark.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tempil.com> ("Domain Name"), registered with Gname 184 Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on May 5, 2025; Forum received payment on May 5, 2025.

 

On May 10, 2025, Gname 184 Inc confirmed by e-mail to Forum that the <tempil.com> domain name is registered with Gname 184 Inc and that Respondent is the current registrant of the name. Gname 184 Inc has verified that Respondent is bound by the Gname 184 Inc 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 May 14, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2025 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@tempil.com. Also on May 14, 2025, 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.

 

On June 4, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.

 

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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a designer and manufacturer of a range of temperature indication technologies for industrial manufacturing. Complainant has rights in the TEMPIL mark based upon registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,802,281, registered January 6, 2004). Respondent's <tempil.com> domain name is identical to Complainant's TEMPIL mark because it entirely incorporates the mark and simply adds a generic top-level domain ("gTLD").

 

Respondent does not have rights or legitimate interests in the <tempil.com> domain name. Respondent is not licensed or authorized to use Complainant's TEMPIL mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to display gambling advertising or to link to a third party website with no connection to the Domain Name.

 

Respondent registered and uses the <tempil.com> domain name in bad faith. Respondent uses the Domain Name to divert Internet traffic away from Complainant to display pornographic content and advertisements. Additionally, Respondent registered the Domain Name after Complainant inadvertently allowed its registration to lapse.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the TEMPIL mark.  The Domain Name is identical to Complainant's TEMPIL mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant has rights in the TEMPIL mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 2,802,281, registered January 6, 2004). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) ("Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.").

 

The Panel finds that the <tempil.com> Domain Name is identical to the TEMPIL mark as it fully incorporates the TEMPIL mark, merely adding a gTLD (being the ".com" gTLD).  The addition of a gTLD to a wholly incorporated trade mark does not distinguish a disputed domain name from a mark. See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) ("Complainant asserts Respondent's <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names."). The Panel holds that Complainant has made out a prima facie case.

        

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the TEMPIL mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists "Pointer Angelina" as registrant of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name has resolved to websites offering gambling advertising and has been used to redirect visitors to third party websites with no obvious connection to the Domain Name. In the absence of an explanation for why the Domain Name is used in this manner, the use of the Domain Name for unrelated advertising is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent's use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services).  

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the date of registration of the Domain Name, February 27, 2025, Respondent had actual knowledge of Complainant's TEMPIL mark. The Complainant has used the TEMPIL Mark since 1941 and had formerly owned the Domain Name, before it was highjacked by third parties. In the absence of rights or legitimate interests of its own registration with knowledge of Complainant's mark demonstrates registration in bad faith under Policy ¶ 4(a)(iii). Given that the TEMPIL mark is a coined mark and in the absence of an alternative explanation, Respondent's conduct strongly suggests registration in bad faith per Policy ¶ 4(a)(iii). See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Forum Jan. 16, 2003) (finding that the respondent's registration of the <jobfinance.com> domain name "immediately after Complainant failed to timely renew the domain name registration" was evidence of bad faith).

        

The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant's TEMPIL Mark for commercial gain by using the confusingly similar Domain Name to divert internet traffic away from Complainant to advertise various third-party goods and services (be it gambling or other unrelated services). Use of a confusingly similar domain name to redirect Internet users to websites containing advertisements and linking to third party websites for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA 1575815 (Forum Sept. 18, 2014) (finding that the respondent's use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv));  see also Bang & Olufsen a/s v. Chris Albano / BlueHost.com- INC, supra (bad faith found where the disputed domain was used "as part of a scheme to generate click through revenue by Internet users who visit the site, believing it to be associated with the Complainant, then clicking through to eBay listings of the Complainant's products for sale").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tempil.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: June 4, 2025