Rockwell Automation v. Thomas John / None
Claim Number: FA1706001735949
Complainant is Rockwell Automation (“Complainant”), Wisconsin, USA. Respondent is Thomas John / None (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roclkwellautomations.com>, registered with Tucows Domains Inc..
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 the Forum electronically on June 15, 2017; the Forum received payment on June 15, 2017.
On June 15, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <roclkwellautomations.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 June 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2017 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 email@example.com. Also on June 15, 2017, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On July 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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.
Complainant states that it is the world’s largest company dedicated to industrial automation. Its flagship Allen-Bradley brand and business was established in 1903 and then acquired in 1985 when Complainant (then dba Rockwell International) purchased Allen-Bradley, which even then was the leading North American manufacturer or industrial automation equipment, for nearly $1.7B. Today, Rockwell Automation and Allen-Bradley products are offered and recognized across the world, and Complainant serves customers in more than 80 countries worldwide. Many of these global customers are served through an extensive network of authorized distributors that is carefully selected and maintained. Complainant achieved global sales of $6.3B in 2015, and it employs about 22,000 people globally. Complainant uses the ROCKWELL AUTOMATION mark to promote its goods and services. Complainant has rights in the ROCKWELL AUTOMATION mark based upon registration in the United States in 2011. The mark is also registered elsewhere around the world.
According to Complainant, the disputed domain name is confusingly similar to its mark as it contains the mark in its entirety—in a pluralized form—and differs by just one letter (the addition of the letter “l” before “k”) and the addition of a generic top-level-domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the ROCKWELL AUTOMATION mark. Respondent failed to use the disputed domain name in connection with a bona fide offer of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name in an attempt to pass off as an agent of Complainant’s business through the sending of fraudulent emails. Specifically Respondent has sent emails impersonating Complainant’s Finance Manager in the UK region to fool unsuspecting email recipients into believing they are corresponding with Complainant through the sending of fraudulent purchase inquiry emails from the disputed domain name. In these emails, Respondent attempts to initiate a business relationship with the email recipient to get product on credit. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. It committed typosquatting and, as noted above, it uses the disputed domain name to send emails impersonating an employee of Complainant. Further, Respondent had actual knowledge of Complainant’s rights in the ROCKWELL AUTOMATION mark prior to registering the disputed domain name. Complainant cites UDRP precedents to support its position.
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark ROCKWELL AUTOMATION dating back to at least 2011.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent uses the disputed domain name in an attempt to pass off as an agent of Complainant’s business through the sending of fraudulent emails.
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 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 (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.”).
The disputed domain name is confusingly similar to Complainant’s mark as it contains the mark in its entirety—in a pluralized form—and differs by just one letter and the addition of a gTLD: “.com.” The intentional misspelling of a complainant’s mark to form a domain name does not adequately distinguish the resulting domain name from the original mark per Policy ¶ 4(a)(i); likewise, the addition of the letter “s” and a gTLD does not remove a domain name from the realm of confusing similarity. See Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also Paperless Inc. v. ICS Inc, FA 1629515 (Forum Aug. 17, 2015) (establishing a confusing similarity between the <paperlessspost.com> domain name and the PAPERLESS POST trademark in part because the domain name contained the entire mark and added an additional “s”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel therefore finds the disputed domain name to be confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to register a domain name reflecting the ROCKWELL AUTOMATION mark. Respondent is not commonly known by the disputed domain name. In the absence of a Response, WHOIS information can substantiate a finding that a respondent is not commonly known by a disputed domain name; likewise, lack of record of a complainant’s authorization of use further supports a finding that a respondent is not commonly known by a disputed domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also 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). The WHOIS information of record names “Thomas John” as the registrant. As such, the Panel finds that Respondent is not commonly known by the disputed domain name.
Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because Respondent is using the name as an email suffix to pass itself off as an affiliate of Complainant. Such use cannot be construed as bona fide offerings of goods or services or legitimate noncommercial or fair use of a domain name. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is used to deceive the recipients of fraudulent emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Therefore, the Panel finds that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
In addition, the Panel notes that the disputed domain name is a typosquatted version of Complainant’s ROCKWELL AUTOMATION mark. Typosquatting is the practice of taking advantage of Internet users’ misspellings or typographical errors and is evidence that a respondent lacks rights and legitimate interests in a domain name. See indyMac Bank F.S.B. v. Ebeyer, FA 175292 (Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”). As such, the Panel finds that Respondent’s typosquatting is evidence of its lack of rights and interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its registration of Complainant’s. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent is using the disputed domain to send emails passing off as an affiliate of Complainant. Such use is evidence of bad faith under Policy ¶ 4(a)(iii). See SHUAA Capital psc v. SHUAA CAPITAL, FA 1581256 (Forum Oct. 29, 2014) (“Respondent’s registration of a domain name obviously intended to create confusion with Complainant, together with its use of that domain name in connection with a fraudulent scheme involving email messages sent to third parties in an attempt to exploit such confusion, is indicative of bad faith”); see also Coldwell Banker Real Estate LLC v. piperleffler piperleffler, FA 1529565 (Forum Dec. 27, 2013) (finding that use of an email address that used the contested domain name as the extension was found to be in bad faith because respondent used the fraudulent emails to pose as complainant in a fraudulent scheme to defraud); see also National Oilwell Varco, L.P. v. Craig Wood/NOV, FA 1575951 (Forum Sept. 22, 2014) (finding bad faith where respondent fraudulently attempted to induce wire transfers by sending e-mails purporting to be from complainant’s President and CEO). Therefore, the Panel finds that Respondent is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel also notes that Respondent’s use of typosquatting is evidence of bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As such, the Panel again finds that Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <roclkwellautomations.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 11, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page