Honeywell International Inc. v. Celeris Controls
Claim Number: FA1010001351938
Complainant is Honeywell International Inc. ("Complainant"), represented by Peter S. Sloane of Leason Ellis, LLP, New York, USA. Respondent is Celeris Controls ("Respondent"), represented by Faisal Daudpota of Al Tamimi & Company, United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <celeriscontrols.com> and <celerisme.com>, registered with GoDaddy.com, Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 13, 2010; the National Arbitration Forum received payment on October 13, 2010.
On October 13, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <celeriscontrols.com> and <celerisme.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 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@celeriscontrols.com and postmaster@celerisme.com. Also on October 14, 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.
A timely Response was received and determined to be complete on October 28, 2010.
A timely Additional Submission was received on behalf of Complainant on November 2, 2010 in accordance with Supplemental Rule 7.
On November 4, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant is a large and well-established supplier of, among other things, control technologies for homes and industry. One of its specialties, through its subsidiary Phoenix Controls Corporation, is the design and manufacture of precision airflow control systems. This it does through three control platforms, one of which is named Celeris. CELERIS has been used as a trademark since 1999 and it was registered with the United States Patent and Trademark Office in the year 2000.The trademark is also registered in Canada and the European Union and the Complainant has applied to register it in the United Arab Emirates (UAE). The Complainant has made extensive use of the trademark CELERIS and the trademark and business name are widely known and respected in the indoor airflow control industry.
Complainant contends that the domain names <celeriscontrols.com> and
<celerisme.com> should be transferred to it because it can make out each of the three criteria prescribed under paragraph 4(a)(i)-(iii) of the Policy.
The essence of the Complainant’s case is that in 2008, then employees of the Complainant established a distribution business in the Middle East named Celeris Controls. Those employees were well aware of the Phoenix Controls business of Complainant and the Celeris products, for they were responsible for sales of the products within the Middle East. Without authorization from the Complainant, they chose Celeris Controls (FZE) as the name of their business so as to persuade customers that they, the customers, were dealing with a Honeywell entity and not a side business. The registration of the disputed domain names incorporating the Complainant’s CELERIS mark without permission is consistent with what the Complainant contends is the Respondent’s pattern of deceptive conduct.
Complainant maintains, first, that the domain names <celeriscontrols.com> and
<celerisme.com> are confusingly similar to Complainant’s registered trademarks for CELERIS registered with the United States Patent and Trademark Office (“USPTO”) and internationally (“the CELERIS mark”). Complainant contends that the domain names are confusingly similar to the CELERIS mark because they consist of the mark with the addition only, in the case of the first domain name of generic word “controls” that describes one of the well known products of Complainant, namely its controls and, in the case of the second domain name, of the letters “me”, which are widely understood to refer to the Middle East where the Complainant conducts its Celeris business , as well as in other regions.
Complainant then argues that Respondent has no rights or legitimate interests in the disputed domain names because Complainant registered the CELERIS mark many years before the Respondent registered the disputed domain names, Respondent is not a licensee of the Complainant or otherwise authorized by it to use the CELERIS mark, the Respondent has in effect been using an infringing business name in its business , the Respondent has not used or developed the domain names for any purpose since registering them and, finally, because it is clear that the domain names were registered to attract Internet users seeking to locate the Complainant and/or its goods.
Thirdly, Complainant contends that the disputed domain names were registered and are being used in bad faith because it is clear on the evidence that Respondent registered the domain names with the intention of misleading Internet user by diverting them to the Respondent’s websites. Moreover, there is no other reasonable purpose for registering the domain names combining the CELERIS mark and the word “controls” and the letters “me”. This amounts to opportunistic baiting. Also, the failure to use the domain names in a meaningful manner for two years is evidence of bad faith registration and use. The Respondent’s bad faith is further evidenced by its use of a privacy service for the registration of the domain names.
B. Respondent
The Respondent contends that:
(a) the Respondent was incorporated as Celeris Controls (FZE) on July 10,
2008 under the Laws of the United Arab Emirates.
(b) the Respondent company is owned and run by Ammar Mohammad Said Qasim.
(c) the Respondent registered the disputed domain names on August 4, 2008.
Copies of the WHOIS records as to the two domain names are attached to the Response as Exhibits B and C.
(d) on September 22, 2008, the Complainant entered into a business relationship with
the Respondent to develop business in the UAE and for the very same purpose the
company was organized in the UAE and as well the disputed domain names were registered by the Respondent. A copy of the Purchase Order dated 22nd September, 2008, from the Respondent to Complainant, as well as the “End User Customer Questionnaire” dated 18th October, 2008, as exchanged between the Respondent and the Complainant are attached as Exhibits ‘D’ and ‘E’ to the Response.
(e) the business relationship between the Respondent and the Complainant has
continued ever since 22nd September, 2008, so much so that the latest
payment/correspondence between the two occurred as of 24th April, 2010. A copy of
the latest payment related correspondence dated April 18 and 24, 2010, are attached as
Exhibit ‘F’ and ‘G’ to the Response.
(f) the Complainant dealt with the Respondent both in the capacity of a Purchaser from
the Respondent, also as a Supplier to the Respondent. It is an undisputed fact that
the Complainant worked together on various projects with the Respondent as the
Respondent has a team of highly trained, highly competent professional engineers, as
evident by the class A projects they have completed. In some of these projects the
Respondent was the primary contractor and in others the Respondent was a subcontractor on behalf of the Complainant. Some of these projects have been for the clients, such as:
Masdar Research Institute Labs, Abu Dhabi, UAE and American Hospital Laboratories
and Isolation Rooms, Dubai, UAE. The Respondent’s expertise range from HVAC to
testing, and balancing of air supply systems, as well as control systems and integration
with third party Building Management Systems. These areas of expertise are not limited
to the Complainant. Further, with the start of the relationship the Respondent sent its lead
technical engineer to be trained at the Complainant’s facilities at the Respondent’s
expense. Before, during, and after the training the lead engineer for some projects has
been from the Respondent. Thus, the Complainant has always known that Respondent
carries the necessary technical and administrative know how as to the relevant
mechanical engineering to carry out and deliver products satisfactorily to customers jointly serviced by the Respondent and Complainant.
(g) during the course of relationship the Complainant corresponded
with the Respondent extensively at <celeriscontrols.com> by sending emails to the email addresses <sales@celeriscontrols>, <support@celeriscontrols.com>,
<khalid@celeriscontrols.com> and <accounts@celeriscontrols.com>, extensively
communicated with third parties to deal with the Respondent at its aforementioned email
addresses of related to <celeriscontrols.com> and, thus, with full knowledge endorsed
Respondent’s legitimate use of the email addresses based on <celeriscontrols.com>.
Copies of various business correspondence dated September 23, 2010, May 3,
2010; December 23, 2009, June 2, 2009, June 22, 2009, April 18, 2010, as
between the Respondent and the Complainant through using email addresses based on
<celeriscontrols.com> are attached as Exhibits ‘H’, ‘I’, ‘J’,‘K’, ‘L’ and ‘M’ to this
Response.
(h) by using the emails associated with the domain name <celeriscontrols.com>, the
Respondent has made demonstrable preparations to use the domain names
<celeriscontrols.com> and <celerisme.com>.The respondent has been continuously using the emails associated with the given domain name <celeriscontrols.com> since it was registered. This is in full knowledge of the Complainant. The Web site explaining that “This Web site is Coming Soon” is an automatically generated placeholder put up by the registrar of the domain that is not yet attached to an active Web site. This page replaces the ‘Not Found’ error pages and notifies visitors that a Web site is coming soon.
(i)as it is important to bring all the relevant facts to the notice of this Panel , on
June 22, 2010, the Complainant, through its Dubai based lawyers, Rouse & Co. International Limited, issued a legal notice to the Respondent with some yet to be proven allegations as to trade name infringement. A copy of the Complainant’s legal notice dated June 22, 2010 is attached here as Exhibit ‘N’ to the Response.
(j) owing to long term business relationship as between the parties, the Respondent, in
good faith, through its lawyers, Al Tamimi & Company, forthwith asked to the
Complainant’s lawyers to resolve the issues as between the parties through discussions.
The Respondent acknowledged the receipt of Complainant’s legal notice through an
interim reply of its lawyer’s letter dated June 27, 2010. A copy of the Respondent’s
lawyer’s interim reply dated 27th June 2010 is attached here as Exhibit ‘O’ to the
response.
(k) however, the Complainant for three and a half months avoided replying to the
Respondent’s good faith outreach to resolve disputes amicably, and on 13th October 2010
replied that it is unwilling to consider discussions towards settlement. A copy of the
Claimant’s lawyer’s reply dated 13th October, 2010, is attached here as Exhibit ‘P’ to the
response. The Respondent had been expecting resolution of the matter through amicable
discussions and would have only wanted to reply substantively if the discussions had not
produced any results – which they did not ultimately. Thus, the next steps for the
Respondent would have been to respond to the Complainant’s allegations substantively,
however, ironically, the Complainant, on the very same day, i.e., October 13, 2010
surreptitiously initiated this domain name dispute before the instant Panel.
(l) as regards the contents of paragraph [a] on pages 3 and 4 of the Complaint, it is
obvious that the word CELERIS or CELERIS CONTROLS is not registered in the UAE
where the Respondent is incorporated. That in fact the goodwill in the word CELERIS in
the UAE is shared as between the Respondent and the Complainant as it is an undisputed
fact that were it not for the Respondent the mark CELERIS would not have become
known in the UAE and that at present the joint customers in the UAE identify the
Respondent as to source of goods and services under the mark CELERIS.
(m) as regards the content of paragraph [b] on page 4 of the Complaint, the Respondent
categorically denies that any of the Complainant’s employees has anything to do with the
establishment and running of Respondent company. That the owner of the Respondent
company has never been an employee of the Complainant. That it is obvious that the
Complainant is not disclosing the business relationship as between the Respondent and
the Complainant and instead is attempting to mislead the Panel with the baseless and
unproved allegation of involvement of its own employees in setting up of the Respondent
company and registration of the domain names in question.
Complainant’s Failure to Demonstrate Confusing Similarity As Between the
Complainant’s Mark and Respondent’s Domain Names
Rule 3(b)(ix)(1); UDRP ¶ 4(a)(i).
The Complainant has admitted (in the second paragraph on page 5 of the Complaint) the
fact that the domain names in question are different from the Complainant’s mark in, at
the least, the following ways:
• <celeriscontrols.com> is not made up of a reproduction of the mark CELERIS but is
the use of a compound word of CELERISCONTROLS.
• <celerisme.com> is not made up of a reproduction of the mark CELERIS but is the
use of a compound word of CELERISME.
The assertion of the Complainant as addition of the word “controls” to the word “celeris”
in the domain name <celeriscontrols.com> should be considered as confusingly similar
for the purposes of Rule 4(a)(i) of the UDRP Policy is not correct. The supporting case
law cited by the Complainant does not apply to the facts of the instant matter and does
not provide the complete overview of the applicable jurisprudence. The counterbalancing
case law defeating and nullifying Complainant’s arguments and cited
precedents is as follows: Diners Club International Ltd. v. Mark Jenkins, FA0906001266752 (Nat. Arb.Forum Jul. 27, 2009) ,attached here as Exhibit ‘Q’ to the response, (“Simply noting that a generic term was added to a trademark is thus insufficient to show that the at-issue domain name and trademark are confusingly similar under the Policy.”(“There is no litmus test from which the Panel may divine “confusing similarity” between the second-level domain name and the at-issue trademark (the “top level”, here “.com,” is irrelevant under 4(a)(i) ) therefore absent guidance in the
form of extrinsic evidence of confusion this Panel engages to review and weigh
several fundamental points of comparison between the at-issue domain name and
Complainant’s mark. The net weight of these factors, as well as others factors not
articulated herein form the basis of the Panel’s conclusion regarding whether or
not the at-issue domain name is more likely than not to give an impression in the
mind of the public rendering the domain name “confusingly similar” to
Complainant’s trademark pursuant to Policy ¶4(a)(i). To wit the Panel, inter alia
considers:
• Trademark strength. The strength of Complainant’s mark;
• Congruence. Whether or not the at-issue domain name contains all or a portion
of the trademark and whether; (1) the visual overlap, and/or (2) the verbal overlap
between the two, is substantial or slight. But note that the addition of a generic
term or arbitrary text to a trademark, cannot be a touchstone for confusing
similarity, more is required. …
• Spelling. Whether or not the at-issue domain name is a common or predicable
misspelling of the at-issue trademark or whether or not the domain name contains
a common or predicable misspelling of the at-issue mark; this factor considers
that a misspelling might be recognized as referencing the trademark.
• Similarity of meaning. Whether and to what extent the Respondent’s addition
to the trademark is vestigial and to what extent it alters the overall meaning of the
trademark. Vestigial terms do little or nothing to alter the trademark’s meaning.
An example might be XEROX12 or XXEROXX where although the mark is
visually different and different in sound from the XEROX mark, the domain
name nevertheless unambiguously conveys the XEROX mark. On the other hand,
MYNEWXEROXPRINTER would be less likely to be to confused with the
trademark XEROX, while XEROXSUPPORT might be more confusing.
• Suggestive reference. Whether or not and to what extent the differentiating text
apart from its use in the domain name suggests or describes the services or goods
covered by the trademark, or the trademark holder.
• Alternative reference. Whether or not the domain name predominantly appears
to reference something other than the trademark.
• Context. Whether or not the domain name appears to be used in a trademark
sense or in a descriptive sense in light of the domain names linking to material
which may or may not suggest or describe the services or products covered by
Complainant’s trademark.”
Thus, the Claimant must establish all the above elements in order to establish confusing
similarity for the purposes of the instant matter. So far the Claimant has not made out its
case under these thresholds as established by latest UDRP jurisprudence.
Also, see Novell, Inc v. Novell Consulting, FA099758 (Nat Arb. Forum October 29,
2001) [Attached here as Exhibit ‘R’ to the response],(“Although Respondent uses the Complainant's registered mark in his domain name, it is used in conjunction with the word "Consulting" to describe Respondent's business and as such, is not identical nor is it confusingly similar to Complainant's mark”).
It is also important to note that the Claimant (in the third paragraph on page 6 of the
complaint) is citing its own presumption that the letters “me” as included in the
<celerisme.com> domain name should stand for the geographical regional of the “Middle East” . Exhibit H as relied upon by the Claimant itself lists dozens of word
combinations that stand for the letters ME. The Claimant has no factual basis to claim
that the letters ‘me’ stand for the ‘Middle East’ in the instant context. The UDRP does not provide that disputes are decided upon presumptions, rather it the substantiated facts that must form the basis of a Complaint and in the instant issues, the Complainant has failed to substantiate any facts the as to why this Panel must consider ‘me’ as equivalent of the’ Middle East’ when there are numerous word combinations that can be attributed to ‘me’, many examples of which the Respondent provides.
Further, Exhibit I that highlights the (.me) ccTLD in relation to Montenegro is a self
contradicting assertion and evidence by the Complainant. On the one hand the
Complainant is ‘presuming’ that ‘me’ stands for ‘Middle East’ and on the other hand the
Claimant is simultaneously citing the ccTLD of Montenegro as equivalent of the ‘me’ in
the Respondent’s domain name.
In the light of this analysis of Complainant’s presumption and selfcontradicting
evidence, the cited case law as to geographical acronyms is distinguishable,
irrelevant and should be considered as unconvincing to this Panel.
[b] Respondent’s Rights and Legitimate Interests in the Domain Names
Rule 3(b)(ix)(2); UDRP ¶
Respondent has extensive experience in the relevant industry and registered the given
domain names in good faith with the intention of using them for his business venture,
Celeris Controls FZE. Respondent’s demonstrable preparations to use the domain names
for a bona fide business constitute a legitimate interest under Section 4(c)(i) of the
UDRP. See, Fleetstar Information Systems Ltd. v. Stephen Morris (WIPO D2001-0518)
finding respondent, who registered the domain name <fleetstar.com> “as a result of his background in the fleet-management industry for seven years,” had a legitimate interest in the domain name because he made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services before any notice of the dispute; IKB Deutsche Industriebank AG v. Bob Larkin (WIPO D2002-0420) , finding respondent had a legitimate interest in the domain name <ikb.com>
because he made demonstrable preparations to use the domain name before any notice of
the dispute.
Respondent is not, as Complainant suggests, required under the UDRP to actively use the
domain names for his own website in order to demonstrate a legitimate interest in the
domain names. There is no use requirement for domain name registrants under the
UDRP or otherwise. Rather, the UDRP specifically allows registrants to prove a
legitimate interest in the disputed domain name by showing preparations to use the
domain name, as Respondent has done here. See, Planet Earth, Inc. v. Planetary
Solutions, Inc., FA94362 (Nat Arb. Forum April 29, 2001) ( the UDRP “does not require operation of a web site to prove good faith. Nor does it require a domain name to be a company name or to appear on any hard goods to be a valid filing.)
In the light of the foregoing analysis of Complainant’s cited case law as to lack of
legitimate interest is distinguishable, irrelevant and should be considered as unconvincing
to the Panel.
[c.] Complainant’s Failure to Demonstrate That Respondent’s Domain Names Were
Registered in Bad Faith
Rule 3(b)(ix)(3); UDRP ¶
Categorically speaking, the Complainant has failed to prove that the disputed domain names were registered in bad faith, given that there exists a business relationship between the Complainant and Respondent (which the Complainant has not disclosed to this Panel) in the memo of the Complaint. The Respondent has use the domain name for a bona fide
business and that such email use amounts to demonstrable preparations towards launch of
the Web site on the given domain names. The Complainant has had full knowledge (and with its own endorsement and dealings) with the Respondent through its email address related to <celeriscontrols.com>. Complainant clearly does not possess any valid arguments as a foundation to prove its claims and that Complainant has avoided to lay down the complete facts pertaining to the prior bona fide business of the Respondent and prior business relationship as between the Complainant and Respondent, therefore, the
Respondent further respectfully asks the Panel to find that Complainant has engaged in
reverse domain-name hijacking.
The supporting case law cited by the Complainant does not apply to the facts of the
instant matter and does not provide the complete overview of the applicable
jurisprudence. The counter-balancing case law defeating and nullifying Complainant’s
arguments and cited precedents is as follows: See, K&N Engineering, Inc. v. Kinnor Services aka Phenomena Ltd. (WIPO Case No.D2000-1077) ;
Schneider Electronics GmbH v. Schneider UK Ltd. (WIPO Case No. D2006-1039) and
ITMetrixx, Inc. v. Kuzma Productions, (WIPO Case No. D2001-0668)
ADDITIONAL SUBMISSIONS
Complainant
Introduction
In its supplementary submission Complainant contends:
1.The only issue before the Panel is whether, without authorization from Complainant, Respondent has registered and used the confusingly similar domain names <celeriscontrols.com> and <celerisme.com> without any legitimate interest to do so and in a bad faith manner within the meaning of the UDRP.
2. Even taking all the facts as alleged by Respondent as true (even though most are not), Respondent still fails to avoid liability for violating the UDRP.
Confusingly Similar
3.Respondent misleadingly argues that Complainant “has admitted . . . the fact that
the domain names in question are different from the Complainant’s mark.”
Indeed, the domain names and mark are not identical and Complainant never asserted otherwise. However, they are confusingly similar. As stated in the Complaint,
Respondent’s confusingly similar domain names differ from Complainant’s mark in only two insignificant ways: the addition of the descriptive (and arguably generic) term “controls” and the addition of the geographically descriptive acronym “ME.” As such,
Respondent’s contention on this issue is disingenuous and simply without merit.
4.Respondent further alleges that Complainant has failed to “provide the complete
overview of application jurisprudence” in its Complaint. In support of its
position, Respondent cites Diners Club International Ltd. v. Mark Jenkins, FA0906001266752 (Nat. Arb. Forum Jul. 27, 2009) and Novell, Inc v. Novell Consulting, FA099758 (Nat Arb.Forum October 29, 2001) as purportedly “counterbalancing case law defeating and nullifying Complainant’s arguments and cited precedents.”
The Complainant then discusses the Diners Club case, State Farm Mutual Automobile Insurance Company v. Alpoe Business Service a/k/a Anthony Previte, FA 1009001347067 (Nat. Arb. Forum Oct. 29, 2010) and National Cable Satellite Corporation, d/b/a C-SPAN v. Domain Name Proxy,LLC a/k/a Navigation Catalyst Systems, Inc., FA 1009001347404 and contends that the overwhelming weight of applicable jurisprudence clearly favors Complainant’s position that a party who wrongfully incorporates a valid trademark into its owndomain name does not exculpate itself by simply adding generic or descriptive words to the name. Thus, it is clear that celeriscontrols.com is confusingly similar to the mark CELERIS .
5. Respondent states that Complainant has no factual basis to state that the letters “ME” stand for the “Middle East” in the instant context. Apart from the arguments and evidence submitted in the Complaint, Exhibits D and H to the Response, documents upon which Respondent purports to rely, identify “Honeywell ME LTD (ECC Division)” and “Honeywell Middle East FZE.” The trade license of Honeywell M.E. Ltd. (i.e.,
Honeywell Middle East Ltd.) is attached as further evidence as Reply Exhibit 1. In this context, there can be no doubt that the domain name celerisme.com is likewise intended to refer to“Celeris Middle East.” Furthermore, of the 101 listed meanings for the acronym “ME” on www.acronymfinder.com, “Middle East” is ranked second (behind only the U.S. postal abbreviation for the State of Maine). Indeed, Respondent never explains the intended significance of the acronym “me”despite the fact that such an explanation is uniquely within its knowledge. Because Respondent has failed to supply affirmative evidence contradicting the presumption established in the Complaint, the Panel should find that Complainant’s well-supported allegations are true and that Policy ¶ 4(a)(i) has been satisfied. Mark Lovinger v. Random Technologies LLC,FA1009001345194 (Nat. Arb. Forum October 24, 2010) ,citing Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000).
[c.] Right and Legitimate Interests
6. Paragraph 4(a)(ii) of the UDRP Policy requires Complainant to establish that the
Respondent has no rights or legitimate interests in the disputed domain name. Once
Complainant makes a prima facie showing under Policy ¶ 4(a)(ii), the burden of proof shifts to Respondent to establish rights or legitimate interests in the disputed domain name. See G.D.Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) . In this case, Respondent has failed to meet that burden. Policy ¶ 4(a)(ii) governs whether Respondent possesses a right or legitimate interest to the disputed domain name. Policy ¶ 4(c) sets out the three criteria Respondent may use to establish a right or legitimate interest in the domain name. Respondent only attempts to satisfy Policy ¶ 4(c)(i).Respondent relies upon its “use of emails associated with the domain name celeriscontrols.com” to demonstrate its preparations to use the domain name in connection with a bona fide offering of goods or services. However, use of a domain name as part of an email address is insufficient to establish rights and interests in the disputed domain name under Policy ¶ 4(a)(ii). See Alienware Corp. v. Dann, FA 1290045 (Nat. Arb. Forum Dec. 28, 2009) Notably, Respondent makes no proffer as to “demonstrable preparations” whatsoever for use of the domain name celerisme.com as required. Respondent further alleges that it “has extensive experience in the relevant industry, and registered the given domain names in good faith with the intention of using them for [Respondent’s] business venture.” However, just because Respondent claims that it may have experience in an industry does not give it the right to name its business venture and to register and use the associated domain names, in derogation of Complainant’s trademark rights. The decision in H-D Michigan LLC v. Nathan Bingham, FA0902001248203 (Nat. Arb.
Forum April 8, 2009) is instructive.
7. The difficulty with Respondent’s position is that he did not have the right, in the
first place, to register the Domain Name with full knowledge that it wholly
encompassed the Complainant’s trademark and would trade on that mark’s
goodwill, without first seeking permission from Complainant. The Respondent’s
argument ignores the fact that he did not choose a domain name that was unique,
self-standing and independent of any third-party trademark rights. Choosing such
a domain name would have required that the Respondent invest time and money
to develop some goodwill and reputation in his chosen business name and the
associated domain name, and perhaps register appropriate trademark rights to
secure them. Instead, he chose the Domain Names which, due to its confusing
similarity with the Complainant’s CELERIS trademark,
opportunistically took advantage of the Complainant’s goodwill and reputation.
The Respondent’s use to-date under these circumstances does not constitute a
bona fide use of the Domain Name pursuant to Section 4(c)(i) of the Policy.
Indeed, any demonstrable preparations made by Respondent to use the domain
names were made with full knowledge of Complainant’s trademark rights. Respondent
previously purchased CELERIS product from Complainant. (“Complainant dealt
with the Respondent . . . as a Supplier to the Respondent”). Where the parties have had previous dealings, Respondent should not be heard to complain that it is unaware of Complainant’s trademark rights Ameriprise Financial Services, Inc. v. Michael Law, FA 0803001169595 (Nat. Arb. Forum Apr. 28, 2008).See also Oreck Holdings LLC v. Oreck of Florida, FA 0802001143439 (Nat. Arb. Forum Mar.18, 2008), Choice Hotels International, Inc. v. Ajay Patel, FA 0712001119805 (Nat. Arb.Forum Jan. 29, 2008) and Neuberger Berman Inc. v. Alfred Jacobsen, Case No. D2000-0323 (WIPO Jun. 12, 2000) In addition, Complainant has challenged registration of the company name in the UAE in a matter now pending. It is obvious that in registering and using the disputed domain names, Respondent is attempting to trade upon the goodwill which Complainant has established in its CELERIS mark. It is well-established that use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services. See, e.g., Madonna Ciccone v. Dan Parisi, Case No. D2000-0847 (WIPO Oct. 12, 2000).
Accordingly, as Respondent has failed to supply affirmative evidence contradicting Complainant’s prima facie case in its Response, the Panel should find that
Complainant’s well-supported allegations are true and that Policy ¶ 4(a)(ii) has been satisfied.
Bad Faith
8.Respondent’s use of a domain name incorporating Complainant’s registered
trademark CELERIS in connection with goods and services that compete with Complainant constitutes bad faith pursuant to Policy ¶ 4(a)(iii). Respondent fails to rebut the allegations recited in the Complaint establishing this element and instead merely relies on irrelevant precedent easily distinguishable from the present case.
9.Respondent begins by wrongly alleging that Complainant has not disclosed the
“business relationship” to the Panel. In the Complaint, Complainant expressly
stated that, in 2008, then employees of Honeywell, working within its Environmental and
Combustion Controls (“ECC”) business, established a distribution business in the Middle East called “Celeris Controls.” To the extent that Respondent alleges additional
facts regarding the “business relationship” with Complainant, all of which are irrelevant for the purposes of a UDRP proceeding, Complainant replies as follows.
As referenced in § 4[b] of the Complaint, two of Complainant’s employees
working in the Middle East created an unauthorized “side” business, namely Respondent.
Specifically, Mohamed Hassan (ECC General Manager) and Mohamed Hattab (ECC Sales Leader), among others, established and operated Respondent as a virtual business within the confines of the Complainant’s Sharjah office using a local P.O. Box. Hassan’s brother-in-law, Ammar Qasem, was employed in the enterprise as Respondent’s owner and managing director. Hassan and Hattab (in their capacities as Complainant’s employees) would negotiate with Complainant’s U.S. factory for the largest possible discount on CELERIS products for purchase by Respondent. Respondent would then sell those discounted products to end customers at the highest price the market would bear – capturing the entire profit margin realized thereby for Respondent alone. The enterprise presumably chose the name “Celeris Controls” as the moniker of their side business to persuade the end customers that they were dealing with a bona fide Honeywell affiliate or subsidiary. Those stakeholders within Complainant responsible for management of the CELERIS brand were unaware of such underhanded activities by
Respondent. Once Respondent’s scheme was discovered in late February 2010, Complainant suspended all of the employees who actively participated therein pending resolution of criminal proceedings. See Reply Exhibit 2, Criminal Referral Order of Sharjah, UAE Circuit Court. Complainant also ceased accepting any orders from Respondent in March 2010. To the extent that any subsequent emails between have been transmitted between the parties, they have generally been sent by administrative personnel, such as those in accounting, who are not familiar with the underlying dispute.
Complainant has no current business dealings with Respondent and has never
authorized Respondent to use the mark CELERIS as part of a domain name. As such, any use of the domain names <celeriscontrols.com> and <celerisme.com> in order to attract Internet users to a website that competes with Complainant would constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iii). O.F. Mossberg & Sons, Inc. v. Thompson Development, FA0809001223025 (Nat. Arb. Forum Oct. 29, 2008).
Indeed, not only does Respondent seek to compete with Complainant using
Complainant’s mark, but as Respondent was created by Complainant’s former employees, Respondent has always had full knowledge of Complainant’s rights in its mark. Respondent’s deliberate and knowing abuse of Complainant’s rights underscores Respondent’s bad faith. See Cydcor, Inc. v. Ben Brown, FA 1007001335041 (Nat. Arb. Forum Aug. 20, 2010) (as a former employee, Respondent’s efforts to compete with Complainant through use of Complainant’s mark indicated bad faith registration and use pursuant to Policy ¶ 4(b)(iii)); Savino Del Bene Inc.v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (“Respondent’s registration of the company name of his former employer as a domain name is an act of bad faith.”). Respondent does not dispute Complainant’s ownership of the mark CELERIS outside the UAE. Complaint at 3; Ex. E. Rather, Respondent argues that “the goodwill in the word CELERIS in the UAE is shared as between Respondent and Complainant.” Respondent provides absolutely no evidence to support this outlandish claim. It is the high quality and reliability of Complainant’s CELERIS products which have engendered goodwill in the mark wherever CELERIS-branded goods are sold. Nor does Respondent challenge the fact that Complainant has a pending application to register the mark CELERIS in the UAE. Complaint at 3-4. A copy of the filing receipt for Complainant’s application number 14065 of the mark CELERIS in the UAE is attached as Reply Exhibit 3. Respondent fails to allege ownership of any earlier application or registration of the mark CELERIS in the UAE.
Independent of trademark rights in the UAE, the Response lacks any support for
the implied proposition that Complainant must have registered rights in the jurisdiction where Respondent is located. Indeed, a respondent’s location may be insufficient in an internet context to shield it from a finding of bad faith. Oregon Freeze Dry, Inc. v. Vertical Axis Inc.,FA1003001316531 (Nat. Arb. Forum June 10, 2010). Moreover, the fact that Respondent had prior dealings with Complainant, a U.S. company with operations in the UAE, and had been reselling Complainant’s CELERIS-branded products in the UAE, should have been more than sufficient to alert Respondent that Complainant claims rights to the trademark CELERIS in the
U.S. and in the UAE. Respondent chose the trade name “Celeris Controls,” which is confusingly similar to Complainant’s trademark CELERIS, in order to create the mistaken impression among consumers that such a company exists by this name and that such company is a Honeywell affiliated company. The inference that Respondent is so endeavoring to capitalize on the goodwill and reputation of the Complainant in using the disputed domains is unavoidable. See Sony Kabushiki Kaisha v. Inga Kil, D2000-1409 (WIPO Dec. 9, 2000) and Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO, June 27, 2000). In short, Respondent is not a company which independently chose the name “Celeris Controls” and/or the domain names at issue. Rather, Respondent is a company that conspired with rogue employees within Complainant who sold Complainant’s CELERIS controls products in the Middle East to capitalize on Complainant’s goodwill and reputation through, inter alia, registration of the domain names <celeriscontrols.com> and <celerisme.com>. Collectively, Respondent’s activities entitle Complainant to a legal presumption of bad faith in this matter. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002). In its Response, Respondent has entirely failed to rebut such legal presumption. Considering the above, as well as the undisputed portions of Complainant’s initial proffer, it is irrefutable that Respondent’s registration and use of the domain names <celeriscontrols.com> and <celerisme.com> constitutes bad faith pursuant to Policy ¶ 4(b). Accordingly, the Panel should find that Policy ¶ 4(a)(iii) has been satisfied by Complainant.
Conclusion
The Reply and Complaint, with their supporting exhibits, amply demonstrate that
Respondent has registered domain names confusingly similar with Complainant’s mark, and in which Respondent has no right or legitimate interest, as part of Respondent’s bad faith effort to misleadingly divert consumers with intent for commercial gain. As such, the domain names <celeriscontrols.com> and <celerisme.com> should be ordered transferred from Respondent to Complainant pursuant to the UDRP Policy.
(a) The Complainant through its subsidiary Phoenix Controls Corporation, is the designer and manufacturer of precision airflow control systems and one of its control platform is named Celeris.
(b) CELERIS has been used as a trademark since 1999 and it was registered with the United States Patent and Trademark Office (“USPTO”) in the year 2000 (e.g., Reg. No. 2,343,883 issued April 18, 2000).
(c) the Respondent was incorporated as Celeris Controls (FZE) on July 10
2008 under the Laws of the United Arab Emirates.
(d) the Respondent company is owned and run by Ammar Mohammad Said Qasim.
(e) the Respondent registered the disputed domain names on August 4, 2008.
Preliminary Issue: Business/Contractual Disputes Outside the Scope of the UDRP
The Panel is aware from submissions made to it that the factual matters involved in this proceeding may give rise to other legal proceedings. As the panel is concerned not to prejudice those proceedings in any way, it will confine itself strictly to the issue arising under the UDRP and will give reasons for its decisions that are briefer than they otherwise might be.
Even so, a question arises as to whether the Panel has jurisdiction over this matter and whether, instead of proceeding in the normal way, it should dismiss the Complaint and leave it to the parties to litigate the matter in the appropriate courts. That question arises for the following reasons.
Respondent asserts that on September 22, 2008, Complainant entered into a business relationship with Respondent to develop business in the United Arab Emirates (“UAE”). Respondent further asserts that the business relationship between Complainant and Respondent has continued from that date with the latest payment/correspondence between the two parties occurring as recently as April 24, 2010. Respondent contends that Complainant dealt with Respondent both in the capacity of a purchaser from Respondent and also as a supplier to Respondent. Respondent indicates that Complainant and Respondent work together on various projects, on some of which Respondent was the primary contractor and in others Respondent was the subcontractor. Respondent argues that during the course of its relationship with Complainant, Complainant has extensively corresponded with Respondent at its <celeriscontrols.com> email addresses, such as: <sales@celeriscontrols.com>, <support@celeriscontrols.com> and <khalid@celeriscontrols.com>. Therefore, Respondent contends that Complainant, with full knowledge, endorsed Respondent’s use of the email addresses based on the <celeriscontrols.com> domain name. Respondent additionally asserts that if not for Respondent, Complainant’s CELERIS mark would not have become known in the UAE and that customers in the UAE currently identify Respondent as the source of goods and services offered under the CELERIS mark.
Complainant , however, alleges in its Additional Submission that, in late 2008, certain employees of Complainant working within its Environmental and Combustion Controls (“ECC”) business surreptitiously established a side business in the Middle East to distribute CELERIS products. Complainant further alleges that the business was called “Celeris Controls.” Complainant alleges that Respondent’s acts include criminal wrongdoing such that the public prosecutor in Sharjah has referred the matter to the criminal courts. Complainant contends that the only issue before the Panel is whether, without authorization from Complainant, Respondent registered and used the confusingly similar domain names in violation of the UDRP. Complainant indicates that once Respondent’s scheme was discovered in late February 2010, Complainant suspended all of the employees who actively participated pending resolution of criminal proceedings. Complainant notes that it also ceased accepting any orders from Respondent in March 2010. Complainant asserts that Complainant has no current business dealings with Respondent and has never authorized Respondent to use the CELERIS mark.
In this instance, the Panel has therefore considered if this is a business and/or contractual dispute between two companies that falls outside the scope of the UDRP.
In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:
“A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.”
In Love, the panel was concerned with possible causes of action for breach of contract. In this case, however, Respondent points out that these causes of action are currently active cases that are pending with the courts. According to the panel in Love, complex cases such as the one presented here may be better decided by the courts than by a UDRP panel.
When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.
The panel in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning and said:
“[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes .… The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.”
Based upon the reasoning outlined in the aforementioned cases and the record, the Panel has considered whether the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP. If the Panel made such a finding, it would dismiss the Complaint. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (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).
On the other hand, the Panel has discretion to determine whether or not it has jurisdiction over this dispute and if it has jurisdiction it should proceed. Thus, if the Panel were to conclude that, although the dispute contains a question of contractual interpretation, the issues arising under the UDRP and the evidence in support of them were nevertheless clear enough to justify proceeding to determine the UDRP Complaint, it would be legitimate for the Panel to proceed. A further consideration is that even if the proceeding touches on wider contractual issues, the Panel should carry out its responsibility and proceed with the UDRP evaluation provided it does not prejudice later consideration of those other issues.
This panel takes the view that a useful first step is to see if the Panel can find on the balance of probabilities such facts that make it safe to proceed with the UDRP analysis or whether the facts are in such dispute that it is impossible to find a factual basis on which to proceed. In the latter case, a panel should dismiss the complaint and leave it to the national courts to resolve the dispute.
On balance the Panel finds that there is sufficient evidence and reason for it to decide the dispute under the UDRP properly and it will therefore proceed with the case and consider the contentions of Complainant and Respondent and how they should be resolved. 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.”).
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.
Complainant asserts that it acquired rights in the CELERIS mark from Phoenix Controls Corporation which Complainant acquired in 1997. Complainant provides evidence of a trademark registration for the CELERIS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,343,883 issued April 18, 2000) which the Panel accepts. Complainant contends it uses the CELERIS mark, through its subsidiary Phoenix Controls, in connection with the manufacture and distribution of indoor airflow controls. The Panel finds that Complainant establishes rights in the CELERIS mark under Policy ¶ 4(a)(i) based on the registration of the mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant argues in its Complaint and Additional Submission, that Respondent’s <celeriscontrols.com> and <celerisme.com> domain names are confusingly similar to Complainant’s CELERIS mark. Complainant contends that both disputed domain names incorporate the entirety of Complainant’s CELERIS mark and add either the descriptive term “controls” or the geographic abbreviation “me,” (which Complainant maintains stands for “middle east”) and both add the generic top-level domain (“gTLD”) “.com.” The Panel finds that the inclusion of a descriptive or geographic term and a gTLD fail to distinguish a disputed domain name from a mark.
In the case of the addition of the word “controls” to the CELERIS mark, the domain name is confusingly similar to the trademark because it suggests that the domain name deals with the essence of the Celeris product, namely its control system. In the case of the addition of the letters ‘me’, it is true, as the Respondent suggests, that the letters stand for things other than the Middle East. However, that is not the test. The test is whether a significant portion of the community that is likely to come into contact with the domain name would understood the letters to be a reference to the Middle East. In the opinion of the Panel, they would interpret the letters in that way, especially as the evidence is that it is well known in the industry that the Complainant sells its Celeris products in the Middle East. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis.”)
In the case of the addition of the gTLD “.com”, it has long been held that this does not negate a finding of confusing similarity that has otherwise been established , which is so in the present case; see Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
For those reasons, the Panel concludes that Respondent’s <celeriscontrols.com> and <celerisme.com> domain names are confusingly similar to Complainant’s CELERIS mark.
The Complainant has therefore made out the first of the three elements that it must establish.
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect to the domain names.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if a respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail.
However, 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) and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Accordingly, the first question is whether Complainant has made out a prima facie case.
The panel finds that Complainant has made out such a case and that it is based on the following considerations:
(i) Complainant is an internationally known company and, through its Phoenix subsidiary, its CELERIS name and trademark are widely known and respected, particularly in the indoor airflow control industry and particularly in the Middle East.
(ii) Respondent has chosen to take that name and to add to it in registering the domain names , in the first case, a generic word that describes the nature of the product offered by the Complainant and known in the industry to be offered by it, namely “controls” and in the second case, the letters “me” that many people in the relevant industry and particularly in the Middle East would take to mean “Middle East”, thus suggesting, without more, that the disputed domain names are official domain names of Complainant leading to a website devoted to the Celeris controls sold by the Complainant in the Middle East.
(iii) This use of Complainant’s name and trademark in this manner was without permission from Complainant.
(iv) The manner in which this was done, which the Panel finds on the balance of probabilities was essentially by two employees of the Complainant setting up a business with the same name as the Celeris system, implying that it was the official business selling Celeris products in the Middle East and installing the brother-in-law of one of the employees as its manager, was highly dubious.
On the basis of these considerations and the evidence and submissions in support of them, the Panel concludes that Complainant has made out a prima facie case against Respondent and the burden therefore shifts to Respondent to provide evidence of its rights or legitimate interests under Policy ¶ 4(c). See Cassava Enters. Ltd., Cassava Enters. (Gibraltar)Ltd. v. Victor Chandler Int’l Ltd., D2004-0753 (WIPO Nov. 11, 2004).
That being so, the second question is whether Respondent has rebutted the prima facie case. Respondent endeavours to rebut the prima facie case essentially by advancing an argument based on the establishment of its business and its registration and use of the domain names for that business.
From this, the Respondent argues that it registered the domain names in good faith with the intention of using them for its business venture and that as such it has shown Respondent’s demonstrable preparations to use the domain names
for a bona fide business within the meaning of paragraph 4(c)(i) of the
UDRP.
It is, however, difficult to see what are the “demonstrable preparations” on which the Respondent relies. It appears to be that it relies on the fact that the domain names were registered and that it has used one of the domain names, <celeriscontrols.com> as part of an email address. However, neither of these considerations can give rise to “demonstrable preparations”. With respect to the use of the domain name as part of an email address, as the Complainant points out, it was noted in Alienware Corp. v. Dann, FA 1290045 (Nat. Arb. Forum Dec. 28,2009) that “If the use of the disputed domain name by itself as an email address for the Respondent amounted to bona fide use, UDRP would become easily avoidable” , an observation with which the Panel agrees.
The same consideration applies to the mere registration of the domain names, for if the mere registration gave rise to demonstrable preparations, no domain name could ever be found to be without a right or legitimate interest, which could not possibly have been the intention of the Policy. More importantly, it must be remembered that the most important ingredient of Policy ¶ 4(c)(i) is that the conduct relied on by the Respondent to establish its right or legitimate interest must be bona fide. The conduct relied on by the Respondent in the present case, where in reality its essence is two of the Complainant’s employees setting up a rival business and using the name that the employer has given to its own products and trademark and without permission from the employer, cannot be bona fide.
Having considered all of the evidence and submissions, the Panel finds that the Respondent has not made out a case for a right or legitimate interest under paragraph 4(c)(i) of the Policy. Nor is there any basis for saying that the facts come within paragraph 4(c) (ii) or (iii) or that a right or legitimate interest can be made out on any other basis.
Accordingly the Complainant has made out the second of the three elements that it must establish.
Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith. See Telstra Corp. Limited v. Nuclear Marshmallows, D2000‑0003 (WIPO Feb. 18, 2000).
Policy ¶ 4(b) sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out‑of‑pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on‑line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Complainant relies in effect on paragraph 4(b) (iii) and (iv) of the Policy and on the general notion of bad faith with respect to the registration and use of the disputed domain names.
The Panel has concluded that the Complainant has made out its case under each of those headings.
It should be said at the outset of this section that Policy ¶ 4(b) is not an exclusive list of examples of bad faith registration and use of a contested domain name, so that circumstances falling outside the explicit parameters of that provision of the Policy can provide persuasive evidence for a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “indicates that its listing of bad faith factors is without limitation”) (emphasis in original); see also Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the domain name in issue was registered in and is being used in bad faith.”).
Those considerations are important in this case, because the Panel’s opinion is that the modus operandi of the Respondent has been to act towards the Complainant in bad faith both with respect to the registration and the use of the disputed domain names. Enough has been revealed to conclude that the intention of the Respondent, an intention that has been in part carried out, was to take the Complainant’s trademark, use it without permission to set up a rival business trading on knowledge obtained from within the Complainant’s organization and do commercial harm to the Complainant. That must amount to bad faith, both with respect to the registration and the use of the domain names.
In addition, Respondent claims to use the <celeriscontrols.com> domain name to host email addresses. The Panel has already indicated that Respondent’s use of the disputed domain name as part of an email address fails to establish Respondent’s rights and legitimate interests in the disputed domain name. In Alienware Corp. v. Dann, FA 1290045 (Nat. Arb. Forum Dec. 28, 2009), the respondent used the disputed domain name to host an email address but otherwise failed to make an active use of the disputed domain name. The panel in Alienware found that the respondent in that case failed to make an active use of the disputed domain name and thus found bad faith pursuant to Policy ¶ 4(a)(iii). The Panel in this case thus also finds that Respondent’s use of the <celeriscontrols.com> domain name to host email addresses, but that otherwise resolves to an inactive website, is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant has also alleged that Respondent’s <celerisme.com> domain name resolves to a parked website featuring click-through links to websites unrelated to Complainant. The Panel finds that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating confusion as to Complainant’s sponsorship of or affiliation with this disputed domain name and that this constitutes bad faith registration and use of the domain name. See 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)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
It is also apparent that the Respondent had actual knowledge of Complainant’s rights in the CELERIS mark before registering the disputed domain names. Accordingly, it registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Accordingly, the Complainant has 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 <celeriscontrols.com> and <celerisme.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 15, 2010
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