Smiths Group plc v. Lee Snooks
Claim Number: FA1102001372112
Complainant is Smiths Group plc (“Complainant”), represented by Julia Anne Matheson of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., USA. Respondent is Lee Snooks (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smithsdetections.com>, registered with eNom, 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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 9, 2011; the National Arbitration Forum received payment on February 9, 2011.
On February 10, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <smithsdetections.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, 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 February 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2011 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@smithsdetections.com. Also on February 11, 2011, 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 March 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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, 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:
A. Smiths, Its SMITHS Mark and Name, and Its Products and Services
Founded in 1851, Smiths is a global technology company and world leader in the practical application of advanced technologies. A public company listed on the London Stock Exchange, Smiths employs more than 23,000 people in more than 50 countries, including the United States and the United Kingdom.
Smiths has used the mark and name SMITHS since at least as early as 1851 to identify its products and services. Smiths currently offers and has offered for years a wide array of products and services under the SMITHS mark and name to markets internationally in the fields of threat and contraband detection, energy, medical devices, communications, and engineered components. Smiths serves a diverse range of global customers including governments and their agencies, petrochemical companies, hospitals, telecommunications companies, and manufacturers.
Smiths’ sales of products and services under the SMITHS mark and name have been substantial. For example, Smiths’ sales under the SMITHS mark and name were £2,770,000,000 in 2010.
Smiths has for many years spent significant amounts on advertising, marketing, and promoting the SMITHS mark and name in connection with its products and related services through a variety of media.
Smiths promotes and has promoted for many years its products and services under the SMITHS mark and name on the Internet. Smiths’ website is located online at the domain name SMITHS.COM.
B. Smiths and Its SMITHS DETECTION Mark and Name
Smiths has five divisions: Smiths Detection, Smiths Medical, Smiths Interconnect John Crane, and Flex-Tek.
Smiths’ division Smiths Detection is a world-leading designer and manufacturer of sensors that detect and identify explosives, nuclear and radioactive material, weapons, chemical agents, biohazards, narcotics, and contraband. Smiths Detection has the most comprehensive range of detection technologies in the world, including trace detection, millimeter-wave, infra-red, biological detection, and diagnostics.
Smiths Detection has used the mark and name SMITHS DETECTION since at least as early as July 2002 to identify its detection apparatus and instruments (such as detectors, scanners, imaging equipment, spectrometers, and meteorological equipment) and related services (servicing, installation, repair, and training).
Smiths Detection’s SMITHS DETECTION products and services are sold, directly and/or through third-party distributors, in more than 150 countries around the world. Smiths Detection has eight manufacturing centers located in North America, the U.K., Germany, France, and Russia.
Smiths Detection’s products and services offered under the mark SMITHS DETECTION are utilized in transportation hubs (e.g., airports and ports), critical infrastructure (e.g., borders), military installations, and emergency responder markets. Smiths Detection’s customers include more than 100 governments and their agencies (e.g., homeland security authorities, customs authorities, emergency responders, and the military), such as the U.S. Department of Defense, the U.S. Transportation Security Administration (TSA), and the U.K. Ministry of Defence. For example:
· Smiths Detection is assisting the U.S. military to meet its need for collective, integrated protection from chemical and/or biological attacks by developing advanced, mobile shelters that provide safe work space for combat, medical, and support personnel and that eliminate the need for protective clothing in potentially contaminated areas. Designed and built in Smiths Detection’s newly expanded Edgewood facility in Maryland, Smiths Detection’s Chemical Biological Protective Shelter (CBPS) is a 400-square-foot, vehicle-based shelter slated for full production by the middle of 2011.
· Smiths Detection designed and manufactures a chemical-sensor nose cone for the U.S. Army’s Raven aerial vehicle to provide effective standoff detection and identification to warn troops against a chemical attack.
· Smiths Detection is assisting the TSA by supplying portable liquid detection scanners for the TSA’s Bottle Liquid Scanner program; equipment to detect minute traces of explosives; scanners to detect metal and non-metallic threats concealed under clothing; and cargo-screening equipment.
· 23. Smiths Detection’s sales of products and services under the SMITH DETECTION mark and name have been substantial. For example, Smiths Detection’s sales under the SMITH DETECTION mark and name were £574,000,000 in 2010; £501,000,000 in 2009; £509,000,000 in 2008; £438,000,000 in 2007; and £412,000,000 in 2006.
Smiths Detection promotes and has promoted its products and services under the SMITHS DETECTION mark and name on the Internet for many years. Smiths Detection’s website is located online at the domain name SMITHSDETECTION.COM. (See Complaint, Exhibit 5 for screen shots from the SMITHSDETECTION.COM website.)
B. Smiths’ Trademark Holdings
Smiths owns many trademark registrations for its SMITHS Marks, including the following representative examples:
• a. U.S. Registration No. 3,192,233 for the mark SMITHS DETECTION, first used in commerce July 2002, filed September 28, 2005, issued January 2, 2007, covering goods and services in International Classes 9 (electrical and electronic apparatus and instruments), 37 (servicing, repair, and installation services), and 41 (training services).
• b. U.S. Registration No. 3,224,230 for the mark SMITHS, first used in commerce July 2002, filed September 28, 2005, issued April 3, 2007, covering goods and services in International Classes 9 (electrical and electronic apparatus and instruments), 37 (servicing, repair, and installation services), and 41 (training services).
• c. U.K. Registration No. 804928 for the mark SMITHS, filed April 22 1960, published October 4, 1961, renewed to April 22, 2015, covering goods in International Class 9 (timing and switching mechanisms).
• d. U.K. Registration No. 824368 for the mark SMITHS, filed August 18, 1961, published October 16, 1963, renewed to August 18, 2016 covering goods in International Class 9 (apparatus and instruments).
• e. European Community (“CTM”) Registration No. 3625993 for the mark SMITHS, filed February 27, 2004, issued May 20, 2005, covering goods and services in International Classes 9 (electrical and electronic apparatus and instruments), 37 (servicing, repair, and installation services), and 41 (training services).
Complainant’s trademark rights in its SMITHS Marks predate Respondent’s registration of the Domain Name.
C. Respondent’s Infringing Activities and Bad-Faith Acts
Respondent registered the Domain Name on December 16, 2010—long after Complainant first used the SMITHS Marks, and well after the SMITHS Marks were registered in the U.S., the U.K., and the European Community.
Respondent uses the Domain Name in connection with fraudulent and illegal activities, namely, false impersonation and theft. Specifically, Respondent falsely impersonated an employee of Complainant and sent an e-mail to Vodafone, a vendor of Complainant, to place an order for 10 Blackberry Torch mobile telephones for itself using Complainant’s corporate account. Respondent’s e-mail used the e-mail address paul.baker@smithsdetections.com, and listed Complainant’s employee’s real name and address, Complainant’s name, and Complainant’s account number with Vodafone.
Respondent’s website associated with the Domain Name is currently an “under construction” site provided by Google Apps that displays the notice “If you are the domain administrator get started creating your home page with Google Sites.” Respondent’s use of the Domain Name in connection with Google Apps and Google Sites demonstrates Respondent’s intention of using the Domain Name for a website.
THE DOMAIN NAME IS CONFUSINGLY SIMILAR TO COMPLAINANT’S MARKS
The domain name SMITHSDETECTIONS.COM is confusingly similar to Complainant’s SMITHS DETECTION mark because it is comprised of misspelling of Complainant’s mark and the gTLD .COM. UDRP Panels have consistently held that domain names comprised of a misspelling of a mark are confusingly similar to the mark at issue. And UDRP Panels have also routinely held that gTLDs such as .COM are irrelevant to confusing similarity analysis. See, e.g., Capital One v. LaPorte Holdings (NAF FA0502000417712) (finding the domain names <capilalone.com>, <capiltalone.com>, <capital0ne.com>, <capitalcone.com>, <capitalonel.com>, and <capitlalone.com> confusingly similar to the CAPITAL ONE mark because each name incorporates a misspelling of the mark); Indymac Bank v. Xiao (NAF FA0511000603023) (finding the domain name <indimacbank.com> confusingly similar to complainant’s INDYMAC BANK mark because “misspelled derivations are insufficient to properly distinguish [r]espondent’s disputed domain name from [c]omplainant’s registered mark pursuant to Policy [Paragraph] 4(a)(i).”).
The domain name SMITHSDETECTIONS.COM is confusingly similar to Complainant’s SMITHS mark because it is comprised of Complainant’s mark and a misspelling, or grammatically incorrect plural form, of the descriptive term DETECTION, and the gTLD .COM. See, e.g., Yahoo! v. Cupcake Patrol et al. (WIPO D2000-0928) (finding the domain names <yahoochatt.com>, <yahoogreatings.com>, <yahoogretings.com>, and <yahoogrettings.com>, which include the misspelled terms CHAT or GREETINGS, confusingly similar to complainant’s YAHOO! mark).
The confusing similarity of the Domain Name to Complainant’s SMITHS mark is heightened because (1) the term DETECTION directly relates to Complainant’s business, specifically, the detection-related products and services that Complainant offers under its registered SMITHS Marks, and (2) Complainant has used the nearly identical domain name SMITHSDETECTION.COM to promote its products and services for years. See, e.g., Yahoo! v. Carrington (NAF FA0308000184899) (finding the domain names <yahoobreifcase.com>, <yahoocarrers.com>, <yahoocat.com>, <yahoogmes.com>, <yahoomessnger.com>, <yahoommail.com>, and <yahooshoping.com> among others confusingly similar to complainant’s YAHOO! mark because each incorporates complainant’s mark with a misspelled word that “closely tracks services and features offered by [c]omplainant. For example, [c]omplainant offers games online, group web pages, a Launch-branded service, instant messaging, an online briefcase, chat services, and e-mail, among many others. [R]espondent’s domain names utilize [c]omplainant’s mark and mimic domain names that would likely be held by [c]omplainant. Accordingly, they are confusingly similar to [c]omplainant’s YAHOO! mark.”); Nortel Networks v. Buymebuyme.com (NAF FA0604000671847) (finding the domain names <nortelphones.com> and <norstarphones.com> confusingly similar to complainant’s NORTEL and NORSTAR marks because “the addition of generic terms, particularly those with a direct connection to [c]omplainant’s business, fails to sufficiently distinguish [r]espondent’s domain names from [c]omplainant’s marks pursuant to Policy ¶4(a)(i).”).
RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST IN THE DOMAIN NAME
Respondent has no rights or legitimate interest in the Domain Name for several reasons.
First, Respondent’s registration and use of the Domain Name for fraudulent and illegal activities, namely, false impersonation and theft, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name under the UDRP. Rather, Respondent’s activities constitute passing off (in that Respondent is trying to pass itself off as Complainant). Both fraudulent activities and passing off have been consistently held to demonstrate a lack of legitimate interest under Sections 4(b)(i) and 4(b)(iii) of the UDRP. See, e.g., Toshiba v. Valdeshi (NAF FA0808001220460) (holding respondent’s use of the domain name <toshiba.co.uk> to pass itself off as complainant for fraudulent commercial gain “utterly fails” as a bona fide offering of goods or services or a legitimate noncommercial or fair use); Edible Communities v. Thoreau (NAF FA0803001158554) (“[R]espondent’s use of the disputed domain name [<theedibleaustin.com>] to pass itself off as [c]omplainant shows that [r]espondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(c)(i) as well as Policy ¶4(c)(iii).”); Digg v. Digg (NAF FA0808001220833) (finding no legitimate interest in respondent’s use of the domain name <digg-inc.com> because “[r]espondent is attempting to pass itself off as [c]omplainant” and such “actions do 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 Royal Bank of Scotland v. Jackson (NAF FA0705000992134) (finding no legitimate interest in respondent’s use of the domain name <rbsonline.org> to pass itself off as complainant and obtain financial information through a fraudulent lottery scheme).
Second, Respondent is not and has not been commonly known by the Domain Name. Nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the Domain Name. Further, Complainant has never authorized Respondent to use its SMITHS Marks. See, e.g., Florists’ Transworld Delivery v. Millipede et al. (NAF FA0810001227507) (“The WHOIS information and record do not reflect that [r]espondent has ever been known by the disputed domain name. Thus, the Panel finds [r]espondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii).”); Yahoo! v. Zheng (NAF FA0802001142567) (holding respondent has no rights or legitimate interests pursuant to Section 4(c)(ii) because there is no evidence in the record or WHOIS information indicating respondent is commonly known by the disputed domain name and because complainant did not authorize respondent to use its mark).
Finally, Respondent’s registration and use of the Domain Name, which is comprised of a typographical misspelling of both Complainant’s SMITHS DETECTION mark and Complainant’s domain name SMITHSDETECTION.COM, constitutes typosquatting, which is further evidence that Respondent has no legitimate interest in the Domain Name. See, e.g., TRAVELOCITY.COM v. Aziz (NAF FA0902001245560) (“[R]espondent’s typo-squatting is itself evidence that [r]espondent lacks rights to and legitimate interests in the contested domain names pursuant to Policy ¶4(a)(ii).”); Genzyme v. Carpela (NAF FA0704000959633) (because the <sinvisc.com>, <sinvisk.com>, and <synvisk.com> domain names are all common misspellings of complainant’s SYNVISC mark, “The Panel considers [r]espondent’s typosquatting of [c]omplainant’s mark as additional evidence that [r]espondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii).”).
RESPONDENT’S BAD FAITH UNDER SECTION 4(B) OF THE UDRP
Respondent’s activities relating to the Domain Name constitute bad faith under the UDRP and prior UDRP decisions for several reasons.
First, Respondent’s registration and use of the Domain Name constitute bad faith under Section 4(b)(iv) of the UDRP because Respondent uses the Domain Name for commercial gain by creating a likelihood of confusion with Complainant and its SMITHS Marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent and its activities. See, e.g., Yahoo! v. Dank (NAF FA0310000203169) (finding the respondent’s use of the disputed domain name for an information theft scam and illegal commercial gain constituted bad faith); Goldfinger Bullion Reserve v. DeYoung (NAF FA0304000155893) (ordering the domain name transferred on the basis of the complainant’s uncontradicted evidence that the domain name was used in bad faith for a theft scam).
Second, Respondent’s registration and use of the Domain Name constitute bad faith under Section 4(b)(iii) of the UDRP because Respondent disrupts Complainant’s business by using the Domain Name to pass itself off as Complainant for Respondent’s fraudulent commercial gain. See, e.g., American International Group v. Busby (NAF FA0304000156251) (holding respondent’s use of the domain name <aig-ma.com> for a website that gives the “appearance of being associated or affiliated with [c]omplainant’s business” thereby “perpetrat[ing] a fraud” constitutes bad faith); Johnson Financial Group, Inc. v. Janssen (NAF FA0311000214465) (holding Respondent’s attempt to pass itself off as complainant constitutes bad faith).
Third, Respondent’s registration and use of the Domain Name constitutes typosquatting in bad faith because Respondent registered and uses the domain name SMITHSDETECTIONS.COM to take advantage of Internet users who either misread Respondent’s e-mail address as Complainant’s and/or who mistype Complainant’s domain name SMITHSDETECTION.COM when attempting to reach Complainant’s website. Typosquatting has been consistently found to constitute bad faith under the UDRP. See, e.g., Capital One v. LaPorte Holdings (NAF FA0502000417712) (holding respondent’s registration of the domain names that incorporate common misspellings of complainant’s well-known CAPITAL ONE mark constitutes typosquatting in bad faith); TRAVELOCITY.COM LP v. Aziz (NAF FA0902001245560) (“We are also persuaded that [r]espondent’s employment of typo-squatting constitutes evidence of bad faith registration and use of the contested domain names pursuant to Policy ¶4(a)(iii).”).
Fourth, Respondent’s current use of the Domain Name for an “under construction” website constitutes “passive holding” in bad faith because the Domain Name incorporates Complainant’s SMITHS Marks and there is no conceivable use of the Domain Name for a website by Respondent that would be legitimate. See, e.g., Indymac Bank v. Ebeyer (NAF FA0307000175292) (finding respondent registered the domain names <indymax.com> among others in bad faith and holding “there is no conceivable way [r]espondent could use the disputed domain names such that they would not infringe on [c]omplainant’s INDYMAC mark, and therefore it is illogical to await [r]espondent’s use of the domain names to find bad faith use.”); Indymac Bank v. Hogan (NAF FA0312000220042) (holding respondent’s passive holding of the domain names constitutes bad faith and stating “The Panel will not wait until the domain names have actually been used before finding bad faith because it is inconceivable that [r]espondent could use the domain names in a manner that would not infringe upon [c]omplainant’s mark . . .”); Phat Fashions v. Kruger (NAF FA0012000096193) (finding bad faith in respondent’s registration of the disputed domain name and holding “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy. . . . The Panelist, thus, has determined that there is bad faith use by [r]espondent even though his website is not as yet fully activated.”).
Finally, there is no question that Respondent knew of Complainant’s SMITHS Marks when it registered the Domain Name, given (1) Respondent’s use of Domain Name to falsely impersonate Complainant, and (2) Complainant’s registrations of its SMITHS Marks. By registering the Domain Names with knowledge of Complainant’s rights in its SMITHS Marks, Respondent acted in bad faith. Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the UDRP. See, e.g., Toshiba v. Tusla (WIPO D2004-1066) (“Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the Policy.”); SmithKline Beecham v. Kaiser (NAF FA0305000157290) (“The registration and use of a domain name confusingly similar to a registered trademark despite notice of the mark holder’s rights is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).”).
B. Respondent failed to submit a Response in this proceeding.
Complainant, Smiths Group plc, is a global technology company that offers a wide variety of products and services under the SMITHS family of marks, including in the fields of threat and contraband detection, energy, medical devices, communications, and engineered components. Complainant has registered its marks with trademark authorities worldwide including with the United States Patent and Trademark Office (“USPTO”), the United Kingdom Intellectual Property Office (“UKIPO”), and the European Union’s Office for Harmonization in the Internal Market (“OHIM”):
Reg. No. Issue Date
USPTO:
SMITHS DETECTION 3,192,233 January 2, 2007
SMITHS 3,224,230 April 3, 2007
UKIPO:
SMITHS 804928 October 4, 1961
SMITHS 824368 October 16, 1963
OHIM:
SMITHS 3625993 May 20, 2005
Respondent, Lee Snooks, registered the disputed domain name on December 16, 2010. The disputed domain name resolves to a website with no active content. Complainant argues Respondent previously used the disputed domain name to falsely impersonate an employee and send an email to a vendor of Complainant to place an order for ten cell phones using Complainant’s corporate account.
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 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 submits evidence of its trademark registrations with the USPTO, the UKIPO, and the European Union’s OHIM:
Reg. No. Issue Date
USPTO:
SMITHS DETECTION 3,192,233 January 2, 2007
SMITHS 3,224,230 April 3, 2007
UKIPO:
SMITHS 804928 October 4, 1961
SMITHS 824368 October 16, 1963
OHIM:
SMITHS 3625993 May 20, 2005
The Panel finds evidence of registrations of a mark with governmental trademark authorities is sufficient to establish rights in the mark under Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)); 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); 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 Respondent’s <smithsdetections.com> domain name is confusingly similar to Complainant’s SMITHS DETECTION mark. Respondent’s disputed domain name deletes the space between the terms of Complainant’s mark, adds the letter “s” to the term “detection,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds none of these alterations, either alone or in combination, is sufficient to adequately distinguish the disputed domain name from Complainant’s SMITHS DETECTION mark. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶4(a)(i)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i). Accordingly, the Panel concludes that, pursuant to Policy ¶4(a)(i), Respondent’s <smithsdetections.com> domain name is confusingly similar to Complainant’s SMITHS DETECTION mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant alleges Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must first make a prima facie case in support of its allegations, then the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name under Policy ¶4(a)(ii). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds, based on the arguments in the Complaint, Complainant has established a prima facie case in support of its contentions. Respondent has failed to submit a Response to these proceedings, which allows the Panel to infer that the allegations made in the Complaint are true and correct. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). Nevertheless, the Panel will examine the record to make a complete determination as to whether Respondent has any rights or legitimate interests in the <smithsdetections.com> domain name.
Complainant argues Respondent is not, and has not been, commonly known by the disputed domain name. Complainant further argues that nothing in the WHOIS information, or the record in general, demonstrates Respondent is commonly known by the <smithsdetections.com> domain name. The WHOIS information indicates the registrant is “Lee Snooks.” Complainant claims it has never authorized Respondent to use its SMITHS or SMITHS DETECTION marks. The Panel finds, based on the aforementioned evidence, Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(c)(ii), because Respondent is not commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).
Complainant claims Respondent previously used the disputed domain name to impersonate an employee of Complainant in an attempt to obtain cell phones using Complainant’s corporate account. The Panel finds Respondent’s use of the disputed domain name for such a purpose is an attempt to pass itself off as Complainant and is certainly not 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 Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
Complainant indicates Respondent’s disputed domain name resolves to a website that is “under construction” and features no active content. The Panel finds Respondent’s failure to make an active use of the website is also not 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶4(a)(ii).”).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent formerly used the <smithsdetections.com> domain name to impersonate an employee of Complainant and make cell phone purchases using Complainant’s account. The Panel finds Respondent was attempting to commercially benefit by creating confusion about Complainant’s association with the disputed domain name. Therefore, the Panel concludes Respondent’s use of the <smithsdetections.com> domain name constitutes bad faith registration and use under Policy ¶4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion.").
The Panel finds Respondent’s registration and use of the disputed domain name to fraudulently pass itself off as Complainant in order to obtain cell phones via Complainant’s corporate account is evidence of Respondent’s bad faith under Policy ¶4(a)(iii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith)
Complainant indicates Respondent’s disputed domain name resolves to an inactive “under construction” website. The Panel finds Respondent’s failure to make an active use of the disputed domain name (even if only for a web site) constitutes bad faith registration and use under Policy ¶4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds Policy ¶4(a)(iii) 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 <smithsdetections.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: March 18, 2011
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