Smiths Group plc v. Kevin Daste
Claim Number: FA0603000662360
Complainant is Smiths Group plc (“Complainant”), represented by Brian P. Kinder, of Foley & Lardner LLP, 2029 Century Park East, Suite 3500, Los Angeles, CA 90026. Respondent is Kevin Daste (“Respondent”), 847A East Boyd Dr., Apt. D, Baton Rouge, LA 70808.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smithdetection.com>, registered with GoDaddy.com.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 20, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 20, 2006.
On March 20, 2006, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <smithdetection.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 March 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 17, 2006 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 24, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <smithdetection.com> domain name is confusingly similar to Complainant’s SMITHS DETECTION mark.
2. Respondent does not have any rights or legitimate interests in the <smithdetection.com> domain name.
3. Respondent registered and used the <smithdetection.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Smiths Group plc, is a diverse technological manufacturing company based in the United Kingdom. Smiths Group plc is organized into four distinct operating sectors. One of Complainant’s divisions, Smiths Detection, develops and manufactures technologically advanced security solutions to detect and identify explosives, chemical and biological agents, weapons and contraband.
Complainant’s Smiths Detection division was formally established in 2003, and currently has offices throughout the world, including the United States, Canada, Europe, and Asia. Similarly, Complainant’s Smiths Detection division operates globally, offering security solutions and equipment, including trace detection, X-ray systems, millimeter wave, and other inspection systems. In connection with its business, Complainant operates a website located at the <smithsdetection.com> domain name.
Respondent registered the <smithdetection.com> domain name on March 20, 2005. Respondent’s disputed domain name resolves to a website featuring links to third-party websites that offer products in competition with Complainant’s business, as well as links containing the trademarks and brand names of several of Complainant’s products. The disputed domain name also features pop-up advertisements whenever an Internet user clicks on one of the links provided by Respondent’s website.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 Panel finds that Complainant has demonstrated common law rights in the SMITHS DETECTION mark pursuant to Policy ¶ 4(a)(i). Complainant has consistently used the SMITHS DETECTION mark in connection with its offering of security and detection products since 2003. Moreover, Complainant’s business operates throughout the world and its SMITHS DETECTION mark is globally recognized with respect to Complainant’s products. Thus, Complainant has established secondary meaning in the SMITHS DETECTION mark, and demonstrated rights in the mark under Policy ¶ 4(a)(i) that predate Respondent’s registration of the <smithdetection.com> domain name by at least two years. See Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Furthermore, the Panel finds that Respondent’s <smithdetection.com> domain name is confusingly similar to Complainant’s SMITHS DETECTION mark. Respondent’s disputed domain name incorporates Complainant’s mark in its entirety, with the omission of a space and the second letter “s,” and the addition of the generic top-level domain “.com.” Consequently, the Panel finds that Respondent’s minor alterations to Complainant’s mark do not negate the confusing similarity between Respondent’s domain name and Complainant’s SMITHS DETECTION mark pursuant to Policy ¶ 4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark); see also Am. Airlines, Inc. v. Data Art Corp., FA 94908 (Nat. Arb. Forum July 11, 2000) (finding <americanairline.com> "effectively identical and certainly confusingly similar" to the complainant's AMERICAN AIRLINES registered marks); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant must initially bear the burden of establishing that Respondent lacks rights and legitimate in the domain name. However, once Complainant establishes a prima facie case, the burden of proof shifts to Respondent to demonstrate that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests in the domain name under Policy ¶ 4(c).
Respondent’s <smithdetection.com> domain name resolves to a website offering links to third-party websites in competition with Complainant’s business, and featuring pop-up advertisements to Internet users. Moreover, Respondent’s disputed domain name offers links using the trademarks and brand names of several of Complainant’s detection products. In light of the confusing similarity between Respondent’s <smithdetection.com> domain name and Complainant’s SMITHS DETECTION mark, the Panel finds that Respondent registered the disputed domain name with the intention of diverting Internet users from Complainant’s website to the website of Respondent. Therefore, Respondent’s use of the disputed domain name does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a noncommercial or fair use under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Party Night Inc. FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that the respondent’s use of “confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements” was not a bona fide offering of goods or services); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Furthermore, the evidence on record does not indicate that Respondent is commonly known by the <smithdetection.com> domain name. Complainant has asserted that it has not authorized Respondent to register and use the disputed domain name, which features a confusingly similar derivative of Complainant’s mark. Moreover, the WHOIS information indicates that Respondent conducts business as “Kevin Daste.” Therefore, the Panel finds that Respondent has not demonstrated rights or legitimate interests with respect to any of the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent registered and used the disputed domain name to operate a website featuring links to third-party websites that directly compete with Complainant’s security and detection device business. Consequently, Respondent is taking advantage of the likelihood of confusion between Respondent’s domain name and Complainant’s SMITHS DETECTION mark, and is likely benefiting from the goodwill associated with Complainant’s mark by attracting Internet users to a website featuring pop-up advertisements. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the respondent used a misspelling of the complainant’s famous mark to attract Internet users to a series of advertisements).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <smithdetection.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 5, 2006
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