Camfil Farr, Inc. v.
Industrial Air Consultants
Claim Number: FA0710001089766
PARTIES
Complainant is Camfil Farr, Inc. (“Complainant”), represented by Edward
A. Sokolski, 3868 Carson Street, Suite 105, Torrance, CA, 90503. Respondent is Industrial Air Consultants (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hemipleat.com>, registered with Network
Solutions, Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically October 5, 2007; the
National Arbitration Forum received a hard copy of the Complaint October 9, 2007.
On October 9, 2007, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <hemipleat.com> domain name is
registered with Network Solutions, Inc.
and that Respondent is the current registrant of the name. Network
Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement
and thereby has agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On October 16, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 5, 2007, 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 postmaster@hemipleat.com by
e-mail.
A timely Response was received and determined to be complete November 5, 2007.
On November 12, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Preliminary Issue:
A disputed issue in this case is
whether or not Respondent can be considered a former employee of Complainant at
the time Respondent registered a domain name containing in its entirety a mark
in which Complainant had filed for and ultimately received protected rights in from
the USPTO. It is irrelevant in this case
whether or not Respondent registered the <hemipleat.com>
domain name before or after Complainant terminated Scott Stockton’s employment.
Respondent may be an assignee of every
right that
A dispute also exists over whether Complainant offered to buy or Respondent offered to sell the disputed domain name. Respondent concedes that Respondent registered the domain name with an intent to promote and sell Complainant’s products, although Complainant denies any transfer of rights to Respondent to do so. Respondent produced no evidence to support this claim that Complainant permitted Respondent to register the domain name and use it to promote Complainant’s products.
Some Panels have held that a contract dispute between the two parties is outside the parameters of the UDRP. See Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007) (finding that the dispute was outside the scope of the UDRP because the respondent could not be characterized as a cybersquatter or individual who registered and used the domain names at issue in bad faith where the respondent had been hired by the complainant to register and develop the disputed domain names); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Jan. 2, 2007) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
Having reviewed the record, the
Panel finds that those cases do not apply to the facts here. The parties here raise no issue to show that
any contract dispute exists between them other than a dispute over the domain
name, a controversy that is within the parameters of the UDRP. This Panel finds that the Panel has sufficient
information before it to properly decide the case, and that the matter does
fall within the parameters of the UDRP. See Weber-Stephen
Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000)
(“Like any other tribunal, however, this Panel can determine whether it has
jurisdiction only from the facts and arguments presented to it. In this case,
Complainant did allege bad-faith use and registration of the domain name at
issue. Had Complainant proved those
allegations, there would be no proper question as to this Panel’s
jurisdiction.”); see also Draw-Tite, Inc. v. Plattsburgh Spring Inc.,
D2000-0017 (WIPO Mar. 14, 2000) (“This Panel well recognizes that its
jurisdiction is limited to providing a remedy in cases of ‘the abusive
registration of domain names,’ or ‘Cybersquatting’ … Like any other tribunal,
however, this Panel can determine whether it has jurisdiction only from the
facts and arguments presented to it. In this case, Complainant did allege
bad-faith use and registration of the domain name at issue. Had Complainant
proved those allegations, there would be no proper question as to this Panel’s
jurisdiction.”).
The
Panel finds that it has jurisdiction to resolve this dispute.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations
in this case:
1. Respondent registered a domain name that is
identical to or confusingly similar to a mark in which Complainant has rights.
2. Respondent has no rights to or legitimate
interests in the domain name at issue.
3. Respondent registered and used the domain
name in bad faith.
B. Respondent asserts the following points:
1. Respondent registered the domain name January
16, 2006, and Complainant acquired a registration of its mark May 22, 2007.
2. The domain name and mark are not confusingly
similar.
3. Respondent does not intend to use the domain
name in a way that will confuse others as to the sponsorship of the domain name
and has assured Complainant that Respondent will not use the domain name with
relation to industrial air filters.
4. That Respondent was an employee of
Complainant January 16, 2006, when Respondent registered the domain name.
5. Complainant offered to buy and Respondent
refused to sell the domain name registration.
6. Respondent intended at the time of
registration to use the domain name to sell Complainant’s products, and
7. Respondent did not act in any of the listed
elements of bad faith registration and use.
FINDINGS
Complainant established rights in the HEMIPLEAT mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,245,354 issued May 22, 2007).
Complainant’s rights in the mark date back to the date that Complainant filed its application with the USPTO, namely June 24, 2004.
Respondent registered the disputed domain name January 16, 2006.
Respondent concedes that Complainant has rights in the HEMIPLEAT mark.
Respondent knew of Complainant’s use of the mark in commerce at the time Respondent registered and planned a use for the domain name.
Respondent did not make a showing of any effort made to use the domain name or costs or labor expended in that regard.
Respondent contends he was still an employee of Complainant when he registered the disputed domain name. Respondent is an entity and Respondent offered no proof of being an assignee of any employee of Complainant.
Even if Respondent had
been an employee at the time Respondent registered the domain name, any rights
that Respondent acquired would have been derivative of Complainant’s rights in
the mark. Complainant denies giving Respondent
rights and Respondent offered no proof of any grant of rights in Complainant’s mark.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 Complainant to 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(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 established rights in the HEMIPLEAT mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,245,354 issued May 22, 2007). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant’s rights in the mark
date back to the date that Complainant filed its application with the USPTO,
namely June 24, 2004. See Phoenix
Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The
effective date of Complainant's federal rights is . . . the filing date of its
issued registration. Although it might be possible to establish rights prior to
that date based on use, Complainant has submitted insufficient evidence to
prove common law rights before the filing date of its federal registration.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002)
(holding that the effective date of Complainant’s trademark rights date back to
the application’s filing date).
Complainant argues that the <hemipleat.com> domain name is identical to its HEMIPLEAT mark because it simply appends the mark with the generic top-level domain (“gTLD”) “.com,” which the Panel finds is insufficient to distinguish the disputed domain name from the HEMIPLEAT mark.
The Panel finds that the disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Additionally, some panels have
found that Complainant’s rights in the HEMIPLEAT mark need not predate the
registration of the <hemipleat.com>
domain name for the purposes of Policy ¶ 4(a)(i), though predating is an issue
to be considered under Policy ¶ 4(a)(iii).
See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP
Policy does not require a complainant to have registered its trademark prior to
the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶
4(a)(iii)); see also Javacool Software Dev., LLC v. Elbanhawy
Invs., FA
836772 (Nat. Arb. Forum Jan. 2, 2007) (holding that a complainant need not show
that its rights in its mark predate the respondent’s registration of the
disputed domain name in order to satisfy Policy ¶ 4(a)(i)).
Respondent does not dispute Complainant’s rights in the HEMIPLEAT mark. Respondent argues, however, that at the time Respondent registered the disputed domain name on January 16, 2006, Complainant had not acquired an official registration with the USPTO. Therefore, Respondent argued, Complainant did not have rights in the HEMIPLEAT mark prior to registration of the disputed domain name. Although Respondent’s registration of the disputed domain name predates the USPTO’s Registration of Complainant’s mark, two factors defeat Respondent’s argument. First, Complainant’s application preceded Respondent’s date of registration of the domain name. Second, Respondent attempts to urge that Respondent, an entity, was an employee of Complainant. Respondent offered no proof to support that the Respondent entity was an employee of Complainant. Moreover, this admission shows instead that Respondent had full knowledge of Complainant’s use of and interest in the mark at the time Respondent registered the domain name.
The
Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations that Respondent has no rights to or legitimate interests in the domain name that contains in its entirety Complainant’s protected mark, the burden shifts to Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent cannot show rights because it has made no active use of the disputed domain name but is passively holding the name so that Complainant cannot register it. The Panel finds that Respondent’s alleged activity in registering the disputed domain name but then failing to make an active use of the disputed domain name cannot be 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). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”); see also Nasaco Elecs. Pte Ltd. v. A&O Computer AG, D2000-0374 (WIPO July 14, 2000) (finding that the respondent has no rights or legitimate interests in the domain name where the respondent’s former employee registered the domain name and transferred it to the respondent, who has since made no use of the domain name). Respondent concedes that Respondent registered the domain name with an intent to use it to promote Complainant’s products. Respondent does not come forward with proof of permission to use Complainant’s protected mark in that manner.
Complainant further contends
that Respondent is an entity owned by Scott Stockton, who was once an employee
of Complainant and that neither of them holds rights or legitimate interests in
the disputed domain name. Complainant
urges that after Complainant terminated of Mr. Stockton’s employment with
Complainant, Respondent, through Scott Stockton, registered the disputed domain
name. Complainant
also implies that Respondent “Industrial Air Consultants” is not commonly known by the
<hemipleat.com> domain name.
The Panel finds that Respondent failed under Policy ¶ 4(c)(ii) to counter Complainant’s allegations by showing rights to or legitimate interests in the domain name that contains in its entirety Complainant’s protected mark. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”). Even if the Panel assumed for purposes of argument that Scott Stockton had rights as an employee, which the Panel expressly does not find, no document of transfer of any rights to Respondent is contained within the record.
The Panel also finds
that Respondent’s status as an entity owned by a former employee of Complainant
does not provide any evidence upon which to make an inference that Respondent
has rights or legitimate interests in the disputed domain name under Policy ¶
4(a)(ii). See Vinidex Pty Ltd. v. Auinger, AF-0402
(eResolution Oct. 18, 2000) (finding that respondent lacked rights and
legitimate interests in the domain name because it did not resolve to a
developed website and the respondent, a former employee of the complainant, had
constructive knowledge of the complainant’s rights in the mark); see also Savino Del Bene Inc. v. Gennari,
D2000-1133 (WIPO Dec. 12, 2000) (finding that a former employee does not
acquire rights or legitimate interests in a domain name identical to the former
employer's trademark).
Respondent supported the argument that Respondent
was an employee of Complainant at the time Respondent registered the disputed
domain name by providing a paycheck stub of Scott Stockton dated January 27,
2006, alleging payment by Camfil Farr Inc.
All this does for Respondent is to show that Scott Stockton was paid “regular
earnings” on that date and that Scott Stockton may have been an employee on
that date. Yet, if Scott Stockton
registered this disputed domain name using his employer’s protected mark, he
did so in favor of another entity and not his employer, who owned the mark.
Further, Respondent apparently urges that
The Panel find that Complainant satisfied ICANN
Policy ¶ 4(a)(ii).
Complainant alleges that Respondent acted in bad faith in registering and
using or passively holding a domain name containing Complainant’s protected
mark in its entirety. Complainant also contends
the disputed domain name generates a strong likelihood of confusion in the
marketplace in regards to its HEMIPLEAT mark because Respondent seeks to be a
direct competitor of Complainant in the air filter sales industry, although
Respondent contends that it has assured Complainant that it will not use the
disputed domain name in the industrial air filter market.
Respondent’s evidence shows that Complainant
offered to buy the disputed domain name from Respondent for $1000 on March 22,
2007, as a way of avoiding legal action. Respondent declined the offer, urging
the offer was less than the “documented out-of-pocket costs directly related to
the domain name.” This offer to purchase
the domain name in order to avoid the cost of litigation does not constitute a
transfer of rights. The Panel finds that it is obvious from the
documents and assertions that Respondent made in this case, that Respondent
registered the disputed domain name with knowledge of Complainant’s rights in
the mark and with an intent to either opportunistically take advantage of the
commerce centered around Complainant’s products or to use the disputed domain
name to disrupt Complainant’s business by confusing Internet users seeking
Complainant’s products. Under Policy ¶
4(b)(iii), this evidence is sufficient to support
findings of bad faith registration and use.
See Surface Prot. Indus., Inc. v. Webposters,
D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive
relationship between the complainant and the respondent, the respondent likely
registered the contested domain name with the intent to disrupt the
complainant's business and create user confusion); see also Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly
similar to Complainant's mark to divert Internet users to a competitor's
website. It is a reasonable inference that Respondent's purpose of registration
and use was to either disrupt or create confusion for Complainant's business in
bad faith pursuant to Policy ¶¶ 4(b)(iii) [and]
(iv).”).
Complainant also contends that
Respondent made no active use of the disputed domain name but has held it
“hostage” so that Complainant cannot register a domain name that incorporates
its mark. Respondent’s failure to make
an active use of the disputed domain name also supports findings of bad faith
registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314
(Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the
domain name or website that connects with the domain name, and that failure to
make an active use of a domain name permits an inference of registration and
use in bad faith); see also Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that,
despite the respondent’s decision to not make an active use of the disputed
domain name, “Respondent has made its intention clear and the continuing threat
hanging over the Complainant’s head constitutes bad faith use”).
Complainant claims that
Respondent’s unauthorized registration of the disputed domain name is likely to
cause Internet users confusion as to Complainant’s affiliation with the
disputed domain name. Further,
Complainant maintains that Respondent registered and is using the disputed
domain name to attract Internet users seeking Complainant’s products for the
sole purpose of commercial gain as both Respondent and Complainant are
allegedly in the business of selling air filters. Respondent’s registration and use of the
disputed domain name is representative of bad faith registration and use as
contemplated by Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”); see also State
Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000)
(finding bad faith where the respondent registered the domain name
<bigtex.net> to infringe on the complainant’s goodwill and attract
Internet users to the respondent’s website).
Complainant
also makes note of the fact that Respondent, an entity owned by a former employee
of Complainant, shows that Respondent knowingly used Complainant’s protected
mark without right in the disputed domain name. The registration took place only after Complainant
terminated Scott Stockton, according to Complainant. However, whether or not Scott Stockton was an
employee at the time Respondent registered the disputed domain name, neither Respondent nor Stockton has shown a right to
use Complainant’s protected mark in this manner. Under these circumstances, Respondent’s
conduct is further evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See MBS Computers Ltd. v.
Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding bad faith
use and registration where a disgruntled former employee registered an
infringing domain name to open an online business that competed with the
complainant); see also Arab Bank for Inv. & Foreign Trade v.
Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and
use where the respondent was formerly employed by the complainant, was fully
aware of the name of her employer, and made no use of the infringing domain
name).
The
Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hemipleat.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 28, 2007.
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