Dayton Electric Manufacturing Co. v. Motohisa Ohno
Claim Number: FA1204001440933
Complainant is Dayton Electric Manufacturing Co. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Motohisa Ohno (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <speedair.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2012; the National Arbitration Forum received payment on April 25, 2012.
On April 25, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <speedair.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. 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 April 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 2012 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@speedair.com. Also on April 25, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 timely response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
On May 30, 2012, Respondent filed a Response. This Response was received after the deadline to file a response. Therefore, the Panel does not consider this Response to be in compliance with ICANN’s UDRP Rule 5 (a) and/or the Annex to the Supplemental Rules. The Panel declines to accept this deficient Response.
On May 31, 2012, Complainant filed an Additional Submission and Annex. Given that the Panel had rejected the Response, the Panel did not consider the additional filings.
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:
1. Respondent’s <speedair.com> domain name is confusingly similar to Complainant’s SPEEDAIRE mark;
2. Respondent does not have any rights or legitimate interests in the<speedair.com> domain name;
3. Respondent registered or used the <speedair.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding, and the Panel declined to consider his deficient response.
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.
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.”).
The Panel notes that the first prong of a Policy ¶ 4(a)(i) analysis is to determine whether or not Complainant owns rights in the SPEEDAIRE mark. Previous panels have determined that a USPTO trademark registration is evidence that a complainant holds rights in a mark. 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 AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Complainant provides the Panel with copies of its USPTO trademark registration certificates for its SPEEDAIRE mark (e.g., Reg. No. 562,271 registered July 29, 1952). Past panels have further held that a complainant is not required to register a trademark within the country that respondent resides or operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel therefore finds that Complainant has established rights in its SPEEDAIRE mark pursuant to Policy ¶ 4(a)(i).
The second prong of Policy ¶ 4(a)(i) requires the Panel to determine whether or not the <speedair.com> domain name is identical or confusingly similar to Complainant’s SPEEDAIRE mark. Prior panels have found that omitting a letter from a complainant’s mark, as well as adding a generic top-level domain (“gTLD”) to a complainant’s mark, does not sufficiently distinguish a disputed domain name from a mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also 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.”). Complainant contends that Respondent’s <speedair.com> domain name consists of Complainant’s mark, without the letter “e” at the end, and the gTLD “.com.” Based on the established precedent, the Panel concludes that Respondent’s <speedair.com> domain name is confusingly similar to Complainant’s SPEEDAIRE mark under Policy ¶ 4(a)(i).
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.”).
The Policy ¶ 4(a)(ii) requires a complainant to demonstrate that a respondent lacks rights and legitimate interests in respect of the disputed domain name. In order to demonstrate rights and legitimate interest, the Panel notes that Policy ¶ 4(c) provides three elements that a respondent may satisfy: (i) a respondent is making a bona fide offering of goods and services; (ii) a respondent is commonly known by the disputed domain name; or (iii) a respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Complainant contends that Respondent is not commonly known by the <speedair.com> domain name. Prior panels have concluded that a respondent is not commonly known by a disputed domain name if the WHOIS information is not similar to the disputed domain name and the respondent fails to present any evidence in support of a commonly known by finding. 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). The Panel notes that the WHOIS information identifies “Motohisa Ohno” as the current registrant of the disputed domain name, and the Panel further notes that Respondent failed to submit a Response. Therefore, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Previous panels have held that a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use when the respondent uses the disputed domain name to resolve to a website containing pay-per-click links to Complainant’s competitors and to unrelated sites. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). Complainant contends that Respondent’s <speedair.com> domain name resolves to a site containing pay-per-click links to Complainant’s competitors and to sites unrelated to Complainant. Accordingly, the Panel finds that Respondent is not using the disputed domain name in connection with 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).
While not a specific element under Policy ¶ 4(a)(ii), past panels have found that a respondent engaging in typosquatting is further affirmation that the respondent lacks rights and legitimate interests. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”). Complainant contends that the <speedair.com> domain name is a common mistyping of Complainant’s SPEEDAIRE mark and that, by merely deleting the letter “e,” Respondent is engaging in typosquatting. The Panel finds sufficient evidence of typosquatting, and the Panel then finds further affirmation that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(iii) requires a complainant to demonstrate that a respondent registered and uses a disputed domain name in bad faith. The Panel notes that Policy ¶ 4(b) establishes four different avenues for a complainant to demonstrate bad faith registration and use: (i) the respondent registered the domain name for the purpose of selling the disputed domain name for more than the respondent’s out-of-pocket costs; (ii) the respondent registered and uses the disputed domain name as part of a pattern to prevent the complainant from reflecting its mark in a corresponding domain name; (iii) the respondent registered and uses the disputed domain name for the purpose of disrupting the complainant’s business; or (iv) the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.
Complainant argues that Respondent has engaged in a pattern of bad faith registration and use. Previous panels have found bad faith registration and use where the respondent had been subject to numerous UDRP proceedings where the respondent was ordered to transfer the disputed domain names to the complainant. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks). Complainant provided for the Panel evidence of UDRP proceedings in which Respondent was ordered to transfer the disputed domain names to the respective complainants. See Sponda Plc v. Motohisa Ohno, D2007-0579 (WIPO June 8, 2007); see also Reebok Int’l Ltd. v. Motohisa Ohno, FA0507000511463 (Nat. Arb. Forum Aug. 23, 2005). The Panel finds this behavior indicates a pattern of bad faith, and further finds that Respondent’s registration of the disputed domain name is a part of this pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii).
Complainant contends that Respondent is attempting to commercially gain by creating confusion as to Complainant’s affiliation with the disputed domain name and the resolving website. Previous panels have maintained that a respondent’s registration and use of a disputed domain name to resolve to a website containing pay-per-click links to Complainant’s competitors sites or unrelated sites is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). Complainant argues that, by Respondent using a confusingly similar disputed domain name, Internet users will be confused as to Complainant’s sponsorship of, or affiliation with, the disputed domain name. Furthermore, Complainant contends that, by creating this confusion and hosting links that are presumably sponsored by Complainant’s competitors, Respondent will earn a click-through fee when Internet users click on the links at the resolving site in search of Complainant’s goods. The Panel finds that such confusion was created with the intent of commercially benefitting, and further finds that Respondent registered and uses the <speedair.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
While not a specific provision of Policy ¶ 4(b), prior panels have found that engaging in typosquatting is further support for a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark). The Panel finds that Respondent engaged in typosquatting, and further finds further evidence of registration and use in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <speedair.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 31, 2012
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