Rockwell Automation v. Darrien Rovelto
Claim Number: FA2112001977277
Complainant is Rockwell Automation (“Complainant”), represented by CSC Digital Brand Services Group AB, Sweden. Respondent is Darrien Rovelto (“Respondent”), West Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allenbradleycontrollogix.com>, registered with NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 16, 2021; the Forum received payment on December 16, 2021.
On December 16, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <allenbradleycontrollogix.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2022 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@allenbradleycontrollogix.com. Also on December 17, 2021, 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 January 11, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Rockwell Automation, offers automation services.
Complainant has rights in the ALLEN-BRADLEY and CONTROLLOGIX marks based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <allenbradleycontrollogix.com> domain name is confusingly similar to Complainant’s ALLEN-BRADLEY and CONTROLLOGIX marks, merely combining them and adding the generic top-level domain (“gTLD”) “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <allenbradleycontrollogix.com> domain name. Respondent is not licensed or authorized to use Complainant’s ALLEN-BRADLEY and CONTROLLOGIX marks and is not commonly known by the at-issue domain name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to host links to third-party marketplace websites where Complainant’s products are for sale.
Respondent registered and uses the <allenbradleycontrollogix.com> domain name in bad faith. Respondent uses the at-issue domain name’s confusing similarity to Complainant’s marks to redirect would-be customers away from Complainant and towards Respondent’s website where it offers links to competing goods. Additionally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the ALLEN-BRADLEY and CONTROLLOGIX marks based on the incorporations of the marks into the at-issue domain name and Respondent’s offering of Complainant’s products for sale at the resolving website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ALLEN-BRADLEY and CONTROLLOGIX marks.
Complainant’s rights in ALLEN-BRADLEY and CONTROLLOGIX existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademarks.
Respondent’s at-issue domain name addresses a commercial website listing a variety of Complainant’s products along with links to third party marketplace websites where the respective products are offered for sale.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations as well as Complainant’s other registrations for its ALLEN-BRADLEY and CONTROLLOGIX marks worldwide is sufficient to establish Complainant’s rights in such marks for the purposes of Policy ¶ 4 (a)(I). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”).
The at-issue domain name consists of Complainant’s ALLEN-BRADLEY trademark less its hyphen followed by Complainant’s CONTROLLOGIX trademark, with all followed by the top level domain name “.com.” The differences between <allenbradleycontrollogix.com> and Complainant’s ALLEN-BRADLEY and/or CONTROLLOGIX trademarks are insufficient to distinguish the domain name from Complainant’s trademarks for the purposes of the Policy. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent’s <allenbradleycontrollogix.com> domain name is confusingly similar to each of Complainant’s ALLEN-BRADLEY and CONTROLLOGIX trademarks. See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶ 4(a)(i).”); see also Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”).
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 the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “Darrien Rovelto” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known either by the <allenbradleycontrollogix.com> domain name or by either ALLEN-BRADLEY or CONTROLLOGIX. The Panel therefore concludes that Respondent is not commonly known by the <allenbradleycontrollogix.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same).
Respondent uses the <allenbradleycontrollogix.com> domain name to address a website featuring hyperlinks ultimately related to Complainant products. The commercial website lists an array of Complainant’s products and proffers links to third party marketplace websites where the such products are offered for sale. Complainant’s use of the <allenbradleycontrollogix.com> domain name in this manner fails to indicate either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Caterpillar Inc. v. Huth, FA 169056 (Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
As discussed below without limitation circumstances are present which allow the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First and as mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain name to address a commercial website listing a variety of Complainant’s products along with links to third party marketplace websites where the respective products are offered for sale. Respondent’s use of the at-issue domain name in this manner shows Respondent’s bad faith under Policy ¶ 4(b)(iii) and under Policy ¶ 4(b)(iv). Notably, such usage is disruptive to Complainant’s business and demonstrations that Respondent is attempting to attract internet users for commercial gain by trading off Complainant’s trademarks via the confusingly similar <allenbradleycontrollogix.com> domain name. See Caterpillar Inc. v. Vine, FA 97097 (Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”); see also Hewlett-Packard Co. v. Ali, FA 353151 (Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the ALLEN-BRADLEY and CONTROLLOGIX marks when it registered <allenbradleycontrollogix.com> as a domain name. Respondent’s actual knowledge is evident given the Respondent’s combination of two of Complainant’s trademarks in the at-issue domain name and given Respondent’s use of the domain name to present links to third parties that offer Complainant’s products for sale. Respondent’s registration of the at-issue confusingly similar domain names with knowledge of Complainant’s trademark rights therein shows Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allenbradleycontrollogix.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 12, 2022
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