Hubbell Incorporated v. Hubbell Incorporated
Claim Number: FA2003001886662
Complainant is Hubbell Incorporated (“Complainant”), represented by Kyoko Imai of Muncy, Geissler, Olds & Lowe, P.C., USA. Respondent is Hubbell Incorporated (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hubbellincorp.com>, registered with Tucows Domains Inc..
The undersigned certifies that has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 3, 2020; the Forum received payment on March 3, 2020.
On March 3, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <hubbellincorp.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 March 5, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2020 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@hubbellincorp.com. Also on March 5, 2020, 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 March 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant and its related companies manufacture and offer a wide range of residential and commercial electrical and electronic products including for the construction, industrial, commercial, communications, and utility industries. Complainant has rights in the HUBBELL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,018,779, registered Aug. 26, 1975). See Compl. Ex. 5. Respondent’s <hubbellincorp.com> domain name is confusingly similar to Complainant’s HUBBELL mark. Respondent incorporates Complainant’s mark in its entirety and adds “incorp,” the abbreviation of Incorporated, and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <hubbellincorp.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use its HUBBELL mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass off as Complainant.
Respondent registered and used the <hubbellincorp.com> domain name in bad faith as Respondent uses email addresses associated with the disputed domain name to impersonate Complainant and gain financial information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the manufacture and sale of a wide range of residential and commercial electrical and electronic products including for the construction, industrial, commercial, communications, and utility industries.
2. Complainant has established it trademark rights in the HUBBELL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,018,779, registered Aug. 26, 1975).
3. Respondent registered the <hubbellincorp.com> domain name on October 14, 2019.
4. Respondent has used the domain name to attempt to pass itself off as Complainant and to gain financial information.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the HUBBELL mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the HUBBELL mark (Reg. No. 1,018,779, registered Aug. 26, 1975). See Compl. Ex. 5. Therefore, the Panel finds that Complainant has adequately shown rights in the mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s HUBBELL mark. Complainant argues that Respondent’s <hubbellincorp.com> domain name is confusingly similar to Complainant’s HUBBELL mark. A disputed domain name that incorporates a mark in its entirety and adds an abbreviation related to the mark along with a gTLD may not be sufficient to distinguished a domain name from a complainant’s mark per Policy ¶ 4(a)(i). See Thomson Reuters Global Resources v. Richard Marsh / intach / Steven Szybillo / intach / Michael Wilczynski / intach / Gary Clarke / intach / James Saunders / intach / Paul Randolph/ intach / John Geisler / intach, FA 1516146 (Forum Oct. 2, 2013) (finding that the disputed domain names fully incorporate Complainant’s THOMSON REUTERS mark while merely adding the term “scie,” “ahci,” “sci,” or “ssci.” The Panel stated, “Each of these added terms constitutes an abbreviation of Complainant’s SCIENCE CITATION INDEX EXPANDED, ARTS & HUMANITIES CITATION INDEX, SCIENCE CITATION INDEX, or SOCIAL SCIENCES CITATION INDEX marks,” and held that such abbreviations constituted confusing similarity under Policy ¶ 4(a)(i)). Here, Complainant argues that Respondent incorporates Complainant’s mark in its entirety and adds “incorp,” the abbreviation of Incorporated, and the “.com” gTLD. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s HIUBBELL trademark and to use it in its domain name, adding the word “incorp,” the abbreviation of Incorporated which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <hubbellincorp.com> domain name on October 14, 2019;
(c) Respondent has used the domain name to attempt to pass itself off as Complainant and to gain financial information;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <hubbellincorp.com> domain name because Respondent is not authorized or permitted to use Complainant’s HUBBELL mark and is not commonly known by the disputed domain name. WHOIS information may be used to determine whether a respondent is has rights or legitimate interest in a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Where a respondent appears to be commonly known by a disputed domain name, the Panel may still find the respondent lacks rights or legitimate interest in the disputed domain name if the respondent lacks authorization to use the complainant’s mark and the respondent fails to provide affirmative evidence in support of this identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). The WHOIS information for the disputed domain name identifies the registrant as “Hubbell Incorporated” but Respondent provides no affirmative evidence in support of this identity and no evidence in the record suggests Respondent is authorized to use the HUBBELL mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).;
(f) Complainant further argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant. Use of a disputed domain name in an attempt to pass off as a Complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Here, Complainant has provided the Panel with a fake purchase order sent by Respondent that contains Complainant’s name, logo, and address with different email addresses. See Compl. Ex. 7.1. Therefore, the Panel agrees and find that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and used the <hubbellincorp.com> domain name in bad faith as Respondent uses email addresses associated with the disputed domain name to impersonate Complainant and gain financial information. Use by a registrant of a disputed domain name to pass itself off as a complainant to gain financial or personal information may be evidence of bad faith per Policy ¶ 4(b)(iv). See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods), see also Airbnb, Inc. v. JAMES GRANT, FA1760182 (Forum December 28, 2017) (“Using a misleading email address to defraud unwary customers certainly constitutes bad faith.”). Here, Complainant has provided the Panel with a fake purchase order sent by Respondent that contains Complainant’s name, logo, and address with different email addresses. See Compl. Ex. 7.1. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the HUBBELL mark and in view of the conduct that Respondent
has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hubbellincorp.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 28,2020
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