Electrolux Home Care Products, Ltd. v. Mrs Jello, LLC c/o Domain Admin
Claim Number: FA0511000599041
Complainant is Electrolux Home Care Products, Ltd. (“Complainant”), represented by Deborah A. Wilcox, of Baker & Hostetler LLP, 1900 E. 9th Street, Suite 3200, Cleveland, OH 44114. Respondent is Mrs Jello, LLC c/o Domain Admin (“Respondent”), represented by John Berryhill, 4 West Front Street, Media, PA 19063.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <beam.com>, registered with Enom, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Tyrus Atkinson, Alan Limbury and Joel Grossman, Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 17, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 21, 2005.
On November 18, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <beam.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 28, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 19, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on December 19, 2005.
On December 27, 2005 Complainant timely filed an additional submission. On January 2, 2006, Respondent timely filed an additional submission.
On January 3, 2006, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Tyrus Atkinson, Alan Limbury and Joel Grossman, Chair, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant first contends that it has held a registered trademark since 1957 in the word BEAM, in reference to vacuum cleaners. Complainant contends that the domain name <beam.com> is identical to its mark, save only for the generic top-level domain “.com” which may be disregarded for purposes of this matter. Complainant next asserts that Respondent has no rights or legitimate interests in the domain name, noting that Respondent is not known by the name BEAM and does not use the name for a bona fide offering of goods or services. Finally, Complainant contends that the domain name was registered and is being used in bad faith. Complainant points out that originally the website was solely devoted to vacuum cleaners, and only later (after Respondent received a cease and desist letter from Complainant) was the site expanded to include construction and other kinds of beams. Complainant asserts that Respondent not only had constructive knowledge of Complainant’s mark, it had actual knowledge. This is evidenced by the fact that the website was devoted originally solely to vacuum cleaner systems, and therefore that the word BEAM was not used in its dictionary sense but in the highly specific reference to Complainant’s BEAM brand vacuum cleaner systems. Thus, Complainant asserts that Respondent’s purpose in registering and using the name was in bad faith, since Complainant clearly intended to divert users the seeking information about Complainant’s products to Respondent’s website, where members of the public were in fact offered the opportunity to purchase products from Complainant’s competitors.
Respondent acknowledges Complainant’s mark, but contends that its domain name uses the word BEAM only in its dictionary sense, and not in reference to vacuum cleaners. It claims that Complainant has no monopoly in the common word BEAM, and that it is free to use the word as a descriptive search term to retrieve and display results from a pay-per-click database, an activity that has been held legitimate in similar cases. Third, Respondent contends that it did not register the domain name in bad faith. In fact, it paid $25,000 for the domain name, and it would never had done so only to use it for improper reasons and have it taken away in a UDRP proceeding such as this. To the extent that advertisers offering competing vacuum systems have paid to have links to their websites placed in search results on the word BEAM, Respondent submits that this is neither its doing nor its responsibility. Additionally, Respondent claims that an exhibit presented by Complainant was misleading. This exhibit purports to be a printout of a page from Respondent’s website. Yet, Respondent asserts that this page, presented as Exhibit 4 in Complainant’s submission, was created by Complainant’s counsel to mislead the panel. Respondent notes that on this Exhibit the word “handcrafted” appears, suggesting that the Exhibit wasn’t simply printed out by Complainant’s counsel but instead was created by Complainant’s counsel to deceive the Panel.
C. Additional Submissions
In its additional submission, Complainant responds to Respondent’s contention that Exhibit D to the Complaint was somehow created by Complainant’s counsel. Complainant attaches an affidavit from a private investigator averring that the investigator visited the website, printed out a page, and the word “handcrafted” appeared as a footer on the printout. (It is noted that a member of the Panel also visited the website and printed out a page, and the word “handcrafted” appeared as a footer on the printout as well). Complainant also attacks Respondent’s claim that it uses the word BEAM in its dictionary sense. Complainant notes that the term was used in its dictionary sense only after getting Complainant’s cease and desist letter. Originally, the website was all about vacuum cleaners, and the homepage itself (as distinct from any paid links displayed on that page) referred to “Beam Central Vacuums.” This demonstrates Respondent’s intent to target and divert users looking for Complainant’s BEAM brand vacuum cleaner systems. Moreover, even after being changed, the website homepage continues to display its own link titled “Beam Central Vacuums,” leading to advertising (by others) of Complainant’s and its competitors’ products.
In Respondent’s additional submission it notes that Complainant has not offered to reimburse Respondent for its out-of-pocket costs in exchange for transfer of the domain name. Again, Respondent poses the question of why it would have spent $25,000 for the domain name if there were a chance that a panel would later transfer it to Complainant for no compensation.
The Panel finds the following:
1. The domain name <beam.com> is identical to, or confusingly similar to, Complainant’s mark.
2. Respondent has no rights or legitimate interests in respect of the domain name.
3. The domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
It is undisputed that Complainant has owned a mark in the word BEAM since 1957 in connection with vacuum cleaners. The addition of the top level domain name “.com” is irrelevant for purposes of this matter. See Nev. State Bank v. Modern Ltd—Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003).
Respondent is not known by the domain name, and does not sell goods or services by using this domain name. Further, Respondent’s use of the domain name was not a bona fide offering of goods or services, or a legitimate fair use or noncommercial use. Rather Respondent derives income from the service of allowing others to advertise their goods and services through its <beam.com> website. Further, Respondent is not a licensee of Complainant. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail.”); see also Charles Jourdan Holding AG v AAIM, D2000-0403 (WIPO June 27, 2000) (holding that a respondent has no rights or legitimate interests in a domain name when (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the mark precede the respondent’s registration; and (3) the respondent is not commonly known by the domain name in question). Further, as noted below, by displaying on its website homepage the words “Beam Central Vacuums,” Respondent has itself used the domain name as a trademark in relation to vacuum systems, and not as a dictionary word.
Therefore the Panel concludes that Respondent has no legitimate rights or interests in the domain name.
Complainant asserts, and Respondent does not refute, that the website as originally formulated was devoted only to vacuum cleaner systems, and made no reference to wooden or steel building beams. The Panel determines that under these circumstances, especially having regard to the reference to “Beam Central Vacuums” on the <beam.com> homepage, there is no doubt that Respondent’s initial intent, and initial use of the domain name, was to divert web users looking for Complainant’s BEAM brand vacuum cleaner systems. This is a clear case of bad faith registration and use. See G.D. Searle & Co. v. Celebrex Drugstore, FA123933 (Nat. Arb. Forum Nov. 21, 2002); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000). As already mentioned, the Panel rejects Respondent’s contention that it used the word BEAM only in its dictionary sense. Rather, it is clear that the word was used in its trademark sense referring to Complainant’s vacuum cleaner systems. Even after Complainant sent a cease and desist letter and Respondent modified its website to focus on beams for log cabins or other buildings, and other kinds of beams, the website continued to refer to Complainant’s brand by name. This would continue to divert users searching for Complainant’s products. Indeed, the links hosted on the website have specific references to Complainant’s competitors in the vacuum cleaner business. Advertisers would not have paid to place those links there unless they expected to derive income from traffic diverted by Respondent from Complainant, since the word BEAM is distinctive of Complainant’s vacuum systems. Respondent cannot escape responsibility for this. For these reasons the Panel determines, in the terms used in the policy, that Respondent registered and used the domain name in bad faith because it intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <beam.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus Atkinson, Alan
Limbury, and Joel Grossman, Chair,
Dated: January 10, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum