Donaldson
Company, Inc. v.
Claim Number: FA1005001323559
Complainant is Donaldson
Company, Inc. (“Complainant”), represented by Joel D. Leviton, of Fish & Richardson P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <donaldsondefense.com>, registered with Compana.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 7, 2010.
On May 8, 2010, Compana confirmed by e-mail to the National Arbitration Forum that the <donaldsondefense.com> domain name is registered with Compana and that Respondent is the current registrant of the name. Compana has verified that Respondent is bound by the Compana 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 11, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2010 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@donaldsondefense.com. Also on May 11, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <donaldsondefense.com> domain name is confusingly similar to Complainant’s DONALDSON mark.
2. Respondent does not have any rights or legitimate interests in the <donaldsondefense.com> domain name.
3. Respondent registered and used the <donaldsondefense.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Donaldson Company, Inc., is a worldwide provider of filtration systems dating back to 1915. Complainant has business locations in 37 countries and provides its filtration solutions, including dust collection, power generation, specialty filtration and compressed air purification products and services in more than 80 countries. Complainant holds multiple trademark registrations for its DONALDSON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 902,587 issued November 17, 1970).
Respondent, Texas International Property Associates - NA NA, registered the disputed domain name on January 17, 2006. The disputed domain name resolves to a website displaying links to commercial websites advertising and promoting filtration products, many of which compete with Complainant’s products.
Respondent has been a respondent in multiple prior UDRP
proceedings that resulted in the transfer of domain names from Respondent to
the respective complainants. See Skyhawke Tech., LLC v.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 argues it has established rights in its
DONALDSON mark through its multiple trademark registrations with the USPTO (e.g., Reg. No. 902,587 issued November
17, 1970). The Panel agrees with
Complainant and holds that Complainant has established rights in its DONALDSON
mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing
Complainant alleges that Respondent’s <donaldsondefense.com>
domain name is confusingly similar to Complainant’s DONALDSON mark. The disputed domain name combines
Complainant’s entire DONALDSON mark with the generic term “defense” and the
generic top-level domain (“gTLD”) “.com.”
The Panel finds the additions of a generic term and a gTLD both fail to
adequately distinguish the disputed domain name from Complainant’s mark. See Jerry Damson, Inc. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <donaldsondefense.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <donaldsondefense.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant claims that Respondent is not commonly known by the <donaldsondefense.com> domain name. The WHOIS information identifies the domain name registrant as “Texas International Property Associates,” which the Panel determines is not similar to the disputed domain name. Complainant contends that Respondent is not licensed or authorized to utilize Complainant’s DONALDSON mark. Respondent has failed to present any evidence that would support a finding that Respondent is commonly known by the disputed domain name. Consequently, the Panel finds that Respondent is not commonly known by the <donaldsondefense.com> domain name pursuant to Policy ¶ 4(c)(ii) based on the evidence in the record. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent uses the <donaldsondefense.com> domain name to resolve to a website featuring links to commercial websites that advertise or sell filtration products that compete with Complainant’s filtration products. The Panel finds Respondent’s use of the confusingly similar disputed domain name for this purpose is not evidence of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <donaldsondefense.com> domain name pursuant to Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges Respondent’s use of the <donaldsondefense.com>
domain name is a part of a pattern
of bad faith use and registration. Respondent
has been a respondent in multiple prior UDRP proceedings that resulted in the
transfer of domain names from Respondent to the respective complainants. See Skyhawke
Tech., LLC v.
Complainant asserts that Respondent’s <donaldsondefense.com> domain name resolves to a website that contains hyperlinks to third-party websites that feature filtration products in competition with Complainant’s products. Internet users interested in Complainant’s filtration products may purchase Complainant’s competitors’ filtration products due to Respondent’s use of the confusingly similar disputed domain name. The Panel agrees with Complainant that Respondent’s use of the <donaldsondefense.com> domain name disrupts Complainant’s business, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Moreover, Complainant alleges, and the Panel presumes, that Respondent receives click-through fees from the aforementioned hyperlinks contained on the resolving website. Complainant argues that Internet users may become confused as to Complainant’s affiliation with and sponsorship of the disputed domain name and resolving website because of Respondent’s use of a confusingly similar disputed domain name to feature competing products. Respondent is attempting to profit from this confusion. The Panel determines that Respondent’s use of the <donaldsondefense.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <donaldsondefense.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 21, 2010
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