Rockwell Automation v. WIS INC
Claim Number: FA1907001850448
Complainant is Rockwell Automation (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is WIS INC (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rockwellautomationwebex.com> (‘the Domain Name’), registered with eNom, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 1, 2019; the Forum received payment on July 1, 2019.
On July 1, 2019, eNom, LLC confirmed by e-mail to the Forum that the <rockwellautomationwebex.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 July 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2019 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@rockwellautomationwebex.com. Also on July 8, 2019, 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 August 2, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.
A. Complainant
The Complainant is the owner of the mark ROCKWELL AUTOMATION, registered, inter alia, in the United States for industrial automation related products and services with first use recorded as 1945.
The Domain Name registered in 2017 is confusingly similar to the Complainant’s trademark containing in its entirety and adding the third party trademark WEBEX. The Complainant has a meeting space at rockwellautomation.webex.com hosted by Cisco Systems who has a partnership with the Complainant.
The Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.
The Domain Name has been linked to third party commercial pay per click links. The website currently attached to the Domain Name redirects Internet users to random third party web sites offering various information or commercial services such as gambling. These uses are not a bona fide offering of goods or services or a noncommercial legitimate or fair use. It is registration and use in bad faith diverting Internet users for commercial gain. The similarity to the Complainant’s url for its virtual meeting space shows the Respondent is aware of the Complainant and its business. There is also evidence that the Respondent is involved in widespread cybersquatting and typosquatting activities.
The Domain Name has been offered for sale generally for a sum in excess of out of pocket expenses: £3829.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark ROCKWELL AUTOMATION, registered, inter alia, in the United States for industrial automation related products and services with first use recorded as 1945. It has a virtual meeting space at rockwellautomation.webex.com.
The Domain Name registered in 2017 has been offered for sale for £3829 and has been pointed to third party commercial sites and used for pay per click links. The Respondent has registered other typosquatting and cybersquatting domain names which contain the well-known marks of third parties.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical or Confusingly Similar
The Domain Name consists of a typosquatted version of a url used by the Complainant for a virtual meeting place rockwellautomation.webex.com. As such it contains the Complainant’s ROCKWELL AUTOMATION mark (registered, inter alia in the USA for industrial automation related products and services with first use recorded as 1945) and the third party CISCO mark WEBEX that the Complainant uses under license in its partnership with CISCO. Use of a disputed domain name that fully contains a mark and adds a third party mark does not prevent confusing similarity between the domain name from that first mark. See Panera, LLC and Pumpernickel Associates, LLC v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation, FA 1760812 (Forum Jan. 8, 2018) (finding confusing similarity where the domain name included the complainant’s mark, plus the addition of the third-party mark WORKDAY, which belonged to a provider of salary and other services used by Complainant).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sep. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The web site to which the Domain Name redirects pointed, inter alia, to pay per click links and third party commercial web sites. It is commercial use so cannot be a legitimate noncommercial fair use. It does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such, it cannot amount to the bona fide offering of goods and services. See McGuireWoods LLP v. Mykhailo Loginov/Loginov Enterprises doo, FA1412001584837(Forum Jan. 22, 2015) (‘The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links .. is not a bona fide offering of goods or services pursuant to 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy 4(b)(iii)’); see also Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs., FA 958542 (Forum May 29, 2007) (respondent's use of the disputed domain name to advertise commercial services not connected with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those businesses competing for the attention of Internet users and was therefore evidence of bad faith and use).
The Respondent has attempted to sell the Domain Name generally on the Internet for £3829, much more than the actual cost of a domain name. Attempts to sell a disputed domain name for more than out of pocket costs of acquisition of a domain name may be evidence that respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017).
Typosquatting, the practice of registering a domain name containing common typing errors in a complainant’s mark, can indicate a lack of rights and legitimate interests in a domain name under Policy ¶ 4(a)(ii). See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
As such, the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing a sign confusingly similar to the Complainant’s mark and use it for third party services in what appears on the face of it to be a typosquatting registration close to the Complainant’s url for its virtual web meeting place rockwellautomation.webex.com. Use of this similar url indicates knowledge of and disrupts the Complainant and its business. Typosquatting itself is evidence of relevant bad faith registration and use. See Diners Club int'l Ltd. v. Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name which entirely incorporates a misspelling of a mark in the hope that Internet users will mistype the Complainant’s mark and be taken to the Respondent’s site is registration and use in bad faith).
In the opinion of the Panelist, the use which has been made of the Domain Name in relation to the site and pay per click links is confusing and disruptive in that visitors to the site might reasonably believe the links on it are connected to or approved by the Complainant as they offer services under a sign confusingly similar to the Complainant’s mark as well as containing links related to the Complainant itself. The site has also been directed to third party commercial sites such as gambling sites. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site or products or services on it likely to disrupt the business of the Complainant. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA 1760954 (Forum Jan. 8, 2018) and Capital One Financial Corp DN Manager/Whois-Privacy.net Ltd, FA1504001615034 (Forum June 4, 2015); see also Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs., FA 958542 (Forum May 29, 2007).
Offering a domain name for sale for a sum in excess of out of pocket expenses, as the Respondent has done here, is registration and use in bad faith . See DIRECTTV, LLC v michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018).
The Respondent has registered other typosquatting and cybersquatting domain names which contain the well-known marks of third parties. Bad faith may be established through a pattern of registration and use of domain names. See Stevens v. Modern Ltd. -Cayman Web Dev., FA 250005 (Forum May 17, 2004).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under ¶¶¶ 4(b)(i), (ii), (iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rockwellautomationwebex.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: August 5, 2019
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