FLSmidth A/S v. W. D. G. Ltd.
Claim Number: FA1010001351236
Complainant is FLSmidth A/S (“Complainant”), represented by Mike Rodenbaugh of Rodenbaugh Law, California. Respondent is W. D. G. Ltd. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <flsmith.com>, <flsmith.net>, and <flsmith.org>, registered with Tucows, Inc.
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.
Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 8, 2010; the National Arbitration Forum received payment on October 8, 2010.
On October 8, 2010, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <flsmith.com>, <flsmith.net>, and <flsmith.org> domain names are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 October 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@flsmith.com, postmaster@flsmith.net, and postmaster@flsmith.org. Also on October 18, 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 November 15, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 (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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <flsmith.com>, <flsmith.net>, and <flsmith.org> domain names are confusingly similar to Complainant’s FLSMIDTH mark.
2. Respondent does not have any rights or legitimate interests in the <flsmith.com>, <flsmith.net>, and <flsmith.org> domain names.
3. Respondent registered and used the <flsmith.com>, <flsmith.net>, and <flsmith.org> domain names in bad faith.
4. B. Respondent failed to submit a Response in this proceeding.
Complainant, FLSmidth, is a global engineering company based in Denmark. Complainant provides the cement and mineral industries with plants, machinery, and like services. Complainant maintains trademarks registered across the globe in this field. These include with China’s State Intellectual Property Office (“SIPO”) (Reg. No. G996056 issued October 10, 2008) and the European Union’s Office for Harmonization for the Internal Market (“OHIM”) (Reg. No. 0996056 issued May 18, 2009).
Respondent, W.D.G. Ltd., registered all three domain names in dispute, <flsmith.com>, <flsmith.net>, and <flsmith.org>, on October 11, 2010. All three domain names resolve to a list of links under the heading “related searches.” The displayed links transfer a viewer to unrelated third party websites.
Respondent has been a party in two previous disputes in which domain names have been transferred. See Brian Renner v. W.D.G. Ltd., FA 1345100 (Nat. Arb. Forum Oct. 23, 2010); see also Cabela's, Inc. v. Domain Administration c/o W. D. G. Ltd., FA 1302327 (Nat. Arb. Forum Feb. 22, 2010).
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.
This Panel finds that Complainant has established rights in the FLSMIDTH mark. Complainant has registered the mark with numerous authorities. These include SIPO (Reg. No. G996056 issued on October 10, 2008) and OHIM (Reg. No. 0996056 issues on May 18, 2009). These registrations sufficiently demonstrate rights in the mark. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s FLSMIDTH mark. In all the disputed domain names, Respondent has merely omitted the letter “d” and added a generic top level domain “.com”, “.net”, or “.org.” The Panel finds these differences insufficient to distinguish the domain names from Complainant’s mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
For these reasons the Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent has no rights or legitimate interests in the disputed domain names. The Panel will, however, examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
In light of Policy ¶ 4(c), the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not commonly known by any of the domain names and is in the practice of diverting users away from Complainant’s mark.
The Respondent’s WHOIS information reveals a name that does not match the disputed domain names. There is also a lack of evidence in the record suggesting that the Respondent is known by any of the domain names. This difference evidences a lack of rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent also appears to be using the confusingly similar domain names to divert Internet users away from the FLSMIDTH mark. When Internet users arrive at the disputed domain names, the pages resolve to a list of links. These links are unrelated to the Complainant’s mark. This redirection indicates a lack of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The Panel notes the previous disputes in which a domain name was ordered to be transferred from Respondent to a mark holder. See Brian Renner v W.D.G. Ltd., FA 1345100 (Nat. Arb. Forum Oct. 23, 2010); Cabela's, Inc. v Domain Administration c/o W. D. G. Ltd., FA 1302327 (Nat. Arb. Forum Feb. 22, 2010). These previous instances of conduct similar to the alleged conduct here provide evidence of bad faith. These examples illustrate a pattern of bad faith, which weighs in favor of finding bad faith pursuant to Policy ¶ 4(b)(ii). See Société Air France v. Mert, D2004-0759 (WIPO Dec. 3, 2004) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the complainant provided evidence of a pattern of registration of “numerous other domain names” by the respondent); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
The Panel also finds that the Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv). The use of the websites indicate that the confusingly similar domain names are being used to attract Internet users using Complainant’s mark for Respondent’s gain. The Panel presumes that Respondent is benefiting from the links on the websites in some fashion, whether it be through advertising or click-through revenue. The use of a confusingly similar domain name for this type of gain is evidence of bad faith. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Therefore, the Panel finds that Policy ¶ 4(a)(iii) is 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 <flsmith.com>, <flsmith.net>, and <flsmith.org> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 18, 2010
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