Honeywell International Inc. v. Domain Deluxe
Claim Number: FA0405000269166
Complainant is Honeywell International Inc. (“Complainant”), represented by Peter S. Sloane, of Ostrolenk, Faber, Gerb & Soffen, LLP, 1180 Avenue of the Americas, New York, NY 10036. Respondent is Domain Deluxe (“Respondent”), General Post Office Box 7628, Central, Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <honyewell.com> and <homeywell.com>, registered with The Registry At Info Avenue d/b/a IA Registry and Enom, respectively.
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.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 7, 2004; the Forum received a hard copy of the Complaint on May 10, 2004.
On May 7, 2004, The Registry At Info Avenue d/b/a IA Registry confirmed by e-mail to the Forum that the domain name <honyewell.com> is registered with The Registry At Info Avenue d/b/a IA Registry and that Respondent is the current registrant of the name. The Registry At Info Avenue d/b/a IA Registry has verified that Respondent is bound by the The Registry At Info Avenue d/b/a IA Registry 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 May 7, 2004, Enom confirmed by e-mail to the Forum that the domain name <homeywell.com> is registered with Enom and that Respondent is the current registrant of the names. Enom has verified that Respondent is bound by the Enom 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 May 13, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 2, 2004 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 and firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <honyewell.com> and <homeywell.com> domain names are confusingly similar to Complainant’s HONEYWELL mark.
2. Respondent does not have any rights or legitimate interests in the <honyewell.com> and <homeywell.com> domain names.
3. Respondent registered and used the <honyewell.com> and <homeywell.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a leading manufacturer of aerospace products and services, control technologies for buildings, homes and industry, automotive products, power generation systems, specialty chemicals, fibers, plastics and advanced materials. Over the past 90 years, Complainant has used the name and mark HONEYWELL to identify its goods and services. In this period of time, Complainant registered its HONEYWELL mark with governments throughout the world, including the United States Patent and Trademark Office (“USPTO”), such as registration numbers 520,350 (issued Jan. 31, 1950 for thermostatic regulating and controlling switches), 810,725 (issued 810,725 for a variety of goods including mixing valves, manually operated electric switches, thermostatic regulating and controlling switches, and pilot burners), and 929,818 (issued Feb. 22, 1972 for “training and instruction of others in the servicing and maintenance of controlling, indicating, measuring, security, switching, data processing, aerospace, and photographic equipment”).
Complainant operates its online activities at the domain names <honeywell.com>, <honeywell.com.au>, <honeywell.com/china>, and <honeywell.com/uk>.
Respondent registered the disputed domain names <honyewell.com> and <homeywell.com> on October 2, 2003 and June 30, 2003, respectively. Respondent uses the domain names to host nearly identical websites that feature links to a variety of third party businesses, as well as advertisements for businesses such as “Cheap Tickets,” “Verizon,” and “T-Mobile.”
The website attached to the <honyewell.com> domain name contains the following statement at the top of the page: “This domain is for sale at Domain Deluxe.” Complainant has provided a printout of Respondent’s website at the domain name <domaindeluxe.com> and has included a request for an offer for the purchase of the domain name <honyewell.com>. Specifically, the language from Respondent’s website states:
If you wish to submit an offer for honyewell.com, you must first register for a free DomainDeluxe.com account. You need an account to submit offers. The current selling prices for most of our domain names range from US$1,500 to US$10,000.
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.
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.
Complainant’s numerous registrations for its HONEYWELL mark throughout the world and specifically with the USPTO establish Complainant’s rights in the HONEYWELL mark under the Policy. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption; see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”).
The domain name <honyewell.com> is confusingly similar to Complainant’s HONEYWELL mark because Respondent has merely transposed the letters “e” and “y” in Complainant’s mark to form an incoherent word, specifically “honyewell.” The transposition of two letters in Complainant’s mark does not significantly differentiate Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Pier 1 Imp., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) finding that the domain name <peir1.com> is confusingly similar to Complainant's PIER 1 mark; see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) finding that the domain name <geociites.com> is confusingly similar to Complainant’s GEOCITIES mark.
The domain name <homeywell.com> is confusingly similar to Complainant’s HONEYWELL mark because Respondent has merely exchanged the letter “n” in Complainant’s mark with the letter “m,” the effect of which is to form another incoherent word, specifically “homeywell.” Merely changing a single letter in a third party’s mark to another letter is also insufficient under the Policy to overcome the confusing similarity inherent in the adoption of nearly the exact mark of the third party. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) finding the domain names <tdwatergouse.com> virtually identical to Complainant’s TD WATERHOUSE name and mark; see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) finding the domain name <belken.com> confusingly similar to Complainant's BELKIN mark because the name merely exchanged the letter “i” in Complainant's mark with the letter “e”.
Therefore, Complainant has established that the disputed domain names <honyewell.com> and <homeywell.com> are both confusingly similar to Complainant’s HONEYWELL mark under Policy ¶ 4(a)(i).
The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names; see also Vert. Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true; see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) finding that failing to respond allows a presumption that Complainant's allegations are true unless clearly contradicted by the evidence.
The only evidence in the record that relates to the Panel’s determination of whether Respondent is commonly known by the disputed domain names is the WHOIS registration information for the respective domain names. However, the WHOIS information for both domain names lists the domain name registrant as Domain Deluxe, not “honyewell” or “homeywell.” Therefore, the Panel finds that the evidence fails to indicate that Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply; see also Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) relying on the WHOIS information in stating, “[g]iven the WHOIS contact information for the disputed domain, one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”; see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2002) suggesting that there is a correlative association between the fame of a complainant’s mark and the necessary strength of the evidence that a respondent must exhibit to prove it is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
In the case of the domain name <honyewell.com>, Respondent is attempting to sell its rights to the domain name registration, as evidenced by its own statement posted on the attached website. Likewise, by its own online statement, Respondent is actively seeking to dispense of its rights in the disputed domain name for a value between $1,500 and $10,000. Past panels have found that the willingness of a respondent to dispense of its rights in a domain name registration does not evidence a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name; see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights.
Nevertheless, both disputed domain names are confusingly similar to Complainant’s mark and are used to host virtually identical websites that feature advertisements and links to unrelated third-party businesses. Such use has consistently and frequently been found not to be a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”; see also Bank of Am. Corp. v. Northwest Free Community 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).”).
Therefore, Complainant has established Policy ¶ 4(a)(ii).
As previously stated, Respondent has manifested its intent to sell the <honyewell.com> domain name registration for a price well in excess of any out-of-pocket expenses it may have incurred in relation to the domain name. Given the long-standing use of the HONEYWELL mark and the fame associated with the mark in the public’s mind, it is more likely than not that Respondent’s future sale of the domain name registration was aimed at the deep pockets of Complainant’s business. Without the benefit of a response, the Panel finds that the circumstances sufficiently indicate that Respondent acquired the domain name primarily to sell the registration of the domain name to Complainant for a value in excess of its out-of-pocket expenses directly related to the domain name pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”; see also Neiman Marcus Group, Inc. v. Achievement Tec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) finding respondent’s offer to sell the domain name for $2000 sufficient to find that respondent “acquired the disputed domain name primarily for the purpose of selling the domain name registration to Complainant for valuable consideration in excess of Respondent's out-of-pocket costs, which is evidence of bad faith registration and use under Policy ¶ 4(b)(i)”.
Moreover, both disputed domain names are used to direct Internet users to advertisements and third-party businesses, which is evidence of Respondent’s commercial motivations in registering and using the domain names. Bad faith is established under Policy ¶ 4(b)(iv) if a respondent uses a domain name intentionally in an attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with a complainant’s mark. The fact that Respondent registered domain names that are confusingly similar to Complainant’s HONEYWELL mark and merely contain incoherent words evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website; see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) finding that, if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) finding that Respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name.
Complainant has established 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 <honyewell.com> and <homeywell.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: June 29, 2004
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