Pfeiffer Vacuum GmbH v. Artur Stencel / A&J Vacuum Services, Inc.
Claim Number: FA1308001514987
Complainant is Pfeiffer Vacuum GmbH (“Complainant”), represented by Jeremy T. Walker of McLane, Graf, Raulerson & Middleton, P.A., New Hampshire, USA. Respondent is Artur Stencel / A&J Vacuum Services, Inc. (“Respondent”), represented by Michael J. Feigin, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pfeiffer-balzers.com>, <pfeiffer-turbo.com>, and <pfeifferturborepair.com>, registered with GoDaddy.com, 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.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2013; the National Arbitration Forum received payment on August 15, 2013.
On August 16, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <pfeiffer-balzers.com>, <pfeiffer-turbo.com>, and <pfeifferturborepair.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 2013 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@pfeiffer-balzers.com, postmaster@pfeiffer-turbo.com, postmaster@pfeifferturborepair.com. Also on August 20, 2013, 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. On September 3, 2013, the Forum received from Respondent a request for an extension of time to respond to the Complaint on the grounds that the parties were then in settlement negotiations and Respondent’s attorney needed more time to respond in view of religious holidays. Complainant consented to this extension request, and the Forum granted Respondent’s request on September 4, 2013, setting a new deadline of September 30, 2013 by which Respondent could file a Response to the Complaint.
A timely Response was received and determined to be complete on September 12, 2013.
Complainant's additional submission was filed on September 17, 2013, while Respondent filed its additional submission on September 18, 2013 with the National Arbitration Forum. The Parties' additional submissions were timely filed and duly forwarded to the Panel.
On September 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Katalin Szamosi 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
i. Complainant, Pfeiffer Vacuum GmbH, has been engaged in the business of manufacturing, selling, and servicing vacuum technology and related parts and accessories for over 120 years.
ii. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the PFEIFFER VACUUM mark (Reg. No. 4,231,994, filed June 1, 2011, registered October 30, 2012).
iii. Complainant also has significant common law rights in the PFEIFFER VACUUM mark that date back well before its United States registration of the mark in 2012.
iv. Complainant owns trademark registrations with the German Patent and Trademark Office (“DPM”) (e.g., Reg. No. 39,655,378 registered January 13, 1998).
v. Each of the disputed domain names incorporates the dominant element of Complainant’s trademark—the word PFEIFFER. The secondary feature—the word VACUUM—has been disclaimed in Complainant’s trademark registration. Respondent added the words “balzers,” “turbo,” and “turborepair” to the word PFEIFFER to create the disputed domain names.
i. Respondent has no rights or legitimate interests in the domain names at issue.
ii. Respondent is not commonly known by the disputed domain names.
iii. The websites housed at the disputed domain names are essentially click-through sites to Respondent’s homepage. Respondent is using the disputed domain names to sell both Complainant’s trademarked goods and the goods or other vacuum manufacturers.
i. The disputed domain names have been registered and are being used in bad faith.
ii. Respondent has registered the domain names to prevent Complainant from reflecting its mark in corresponding domain names.
iii. Respondent’s registration of the disputed domain names was arguably for the purpose of disrupting the business of Complainant.
iv. Respondent is using the domain names intentionally to attract, for commercial gain, Internet users to Respondent’s website or other online locations, by creating a likelihood of confusion with 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 website or location.
v. At the time it registered the disputed domain names in October 2005, Respondent was well aware of Complainant and its products, and Complainant’s rights in the PFEIFFER VACUUM trademark.
B. Respondent
1. Policy ¶ 4(a)(i)
vi. Respondent makes no contentions with regard to Policy ¶ 4(a)(i).
2. Policy ¶ 4(a)(ii)
vii. Complainant argues that Respondent is not commonly known by the disputed domain names, and such an argument should be given no weight.
viii. Respondent has been in the business of selling and repairing commercial vacuum systems since at least as early as April 30, 2000.
ix. Respondent’s websites include disclaimers to further clarify that Respondent is not affiliated with Complainant.
3. Policy ¶ 4(a)(iii)
x. Complainant never alleges that it wanted to register another domain name since 1996.
xi. Complainant’s allegation “Respondent’s registration of the disputed domain names was arguably for the purpose of disrupting a competitor,” is nothing more than a naked allegation which fails to show bad faith.
4. Doctrine of Laches
xii. Respondent has been using the disputed domains since 2005 without complaint, more than seven full years. Complainant’s late claim is barred by laches.
5. The Panel notes that Respondent registered the <pfeiffer-balzers.com>, <pfeiffer-turbo.com>, and <pfeifferturborepair.com> domain names on October 15, 2005.
C. Additional Submissions
1. Complainant
i. Respondent admits many key facts that form the basis for Complainant’s claim that Respondent violated the UDRP, namely Respondent admits to the validity of Complainant’s PFEIFFER VACUUM trademark, admits to incorporating an identical or substantial portion of this mark into each of the disputed domain names, and admits to adding a so-called disclaimer to the disputed domain names following receipt of the Complaint.
ii. It is unlikely that laches applies in this case, as several FORUM NAF and WIPO panels have recognized that laches cannot be used as a defense under the UDRP. Moreover, although Respondent registered the disputed domain names in 2005, Complainant did not become aware of them until on or about the fall of 2012.
iii. Respondent ignores the distinction between using the mark in a referential manner in the websites’ content and using the mark in the domain names to attract internet users to those sites for the Respondents’ financial gain.
iv. Because it sells and services other manufacturers’ products, Respondent need not utilize domain names that incorporate only the Pfeiffer trademark.
v. Respondent ignores the fact that it has registered and used domain names that incorporate other vacuum manufacturers’ trademarks or service marks (varianpumprepair.com and leyboldpumprepair.com).
vi. Complainant commenced this dispute months after it first contacted Respondent about the issue, but Respondent added the so-called disclaimer language only after Complainant filed its Complaint.
2. Respondent
i. Respondent's sales are legitimate sales as customers would realize very quickly that they are on AJVS's website and not Pfeiffer's making for no likelihood of confusion.
ii. Even if there were legitimate sales in 2012 on the disputed domains themselves satisfying the fair use doctrine, then this cannot retroactively satisfy the prong of “no legitimate business purpose” for the UDRP based on a temporary down-sizing of a website.
iii. There is a pattern of conduct of registering domain names, but there is no evidence of bad faith, as (1) varianpumprepair.com – Varian is currently owned Agilent and they are aware and cooperate with Respondent, (2) leyboldpumprepair.com - Leybold has been bought out by Oerlikon and also cooperates and works closely with Respondent. There have never been any issue regarding using this domain name.
iv. There is a lack of evidence simply shows that Complainant has not met its burden of establishing the facts alleged in its complaint. Respondent lawfully sells products of multiple parties, including that of Complainant.
1. Complainant, Pfeiffer Vacuum GmbH, has been engaged in the business of manufacturing, selling, and servicing vacuum technology and related parts and accessories for over 120 years and has been present on the US market since 1996.
2. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the PFEIFFER VACUUM mark (Reg. No. 4,231,994, filed June 1, 2011, registered October 30, 2012). Complainant owns trademark registrations with the German Patent and Trademark Office (“DPM”) (e.g., Reg. No. 39,655,378 registered January 13, 1998).
3. Complainant established common law rights in the PFEIFFER VACUUM mark that date back well before its United States registration of the mark in 2012.
4. Respondent registered the <pfeiffer-balzers.com>, <pfeiffer-turbo.com>, and <pfeifferturborepair.com> domain names on October 15, 2005.
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 Panel finds that Complainant’s registration of the PFEIFFER VACUUM mark with the USPTO and the DPM sufficiently evidences its rights in the mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”). The Complainant’s DPM registration establish Complainant’s pre-existing rights in the PFEIFFER VACUUM mark for the purposes of Policy ¶ 4(a)(iii), as Complainant is not required to register its mark in the country of Respondent’s residence in order to establish rights in the mark. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The Panel finds that Complainant has also common law rights in the PFEIFFER VACUUM mark that date back well before its United States registration of the mark in 2012 and the registration of the disputed domain names in 2005, which also establishes Complainant’s rights in the PFEIFFER VACUUM mark for the purposes of Policy ¶ 4(a)(i) and 4(a)(iii).
The Panel accepts Complainant's contention that the “turbo” and “turborepair” terms relate to its business in servicing and repairing turbo pump vacuums. Accordingly, the Panel determines that adding descriptive terms to a portion of Complainant’s mark results in confusing similarity to the mark. See Am. Int’l Group, Inc. v. Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business).
The Panel notes that Complainant failed to provide sufficiently convincing evidence to support its contention that the word “balzers” described a company, Balzers AG, with whom Complainant once had collaborated to design a vacuum pump, as, according to the Panel's standpoint, Complainant would have been able to prove this circumstance with numerous evidence originating from independent sources, but this circumstance was only referred to in the affidavit of Complainant's controlling director.
At the same time, the Panel finds that the addition of the "balzers" mark (i.e. a third party mark) does not eliminate the visual impression that the disputed domain name is associated with Complainant’s mark See Pfizer, Inc. v. Martin Mktg., D2002-0793 (WIPO Nov. 15, 2002) ("The disputed domain name <viagra-nascar.com> directly incorporates Complainant’s mark as its lead term, and adds a hyphen and the trademark and service mark of a third party (as well as the gTLD ".com"). The addition of the third party mark does not eliminate the visual impression that the disputed domain name is associated with Complainant’s trademark.)
The Panel notes that each of the disputed domain names includes the generic top-level domain (“gTLD”) “.com.” and finds that these additions made to Complainant’s mark in the <pfeiffer-balzers.com>, <pfeiffer-turbo.com>, and <pfeifferturborepair.com> domain names render them confusingly similar to Complainant’s PFEIFFER VACUUM mark pursuant to Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”).
The Panel agrees with Complainant's contention that Respondent seemingly registered the domain names specifically to promote goods that are sold by Complainant but also to divert users to Respondent’s home website where Respondent sells competing vacuum products. The Panel therefore concludes that Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv) is shown by Respondent’s apparent attempt to make a commercial gain by confusing Internet users in order to increase traffic to its resolving website, where it sells competing products to those sold my Complainant. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
The Panel notes that Respondent only alleged but failed to provide any evidence showing that it had placed clear disclaimers as to its relationship to Complainant on the websites in question, therefore the Panels finds that Respondent failed to rebut Complainant's well-grounded contention that the use of Complainant's mark in the disputed domain names can confuse Internet users.
Doctrine of Laches
The Panel highlights that, while the doctrine of laches may have relevance when proving one's good faith and/or legitimate rights and interests in a disputed domain name, the doctrine itself does not constitute a defense under the Policy. Therefore, considering that Respondent failed to prove its legitimate rights or interests in the disputed domain names, the Panel finds that the doctrine of laches does not apply as a defense in the case. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pfeiffer-balzers.com>, <pfeiffer-turbo.com>, and <pfeifferturborepair.com> domain names be TRANSFERRED from Respondent to Complainant.
Dr. Katalin Szamosi, Panelist
Dated: September 30, 2013
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