Heatcraft Inc. v. Direct Privacy ID B662F
Claim Number: FA1209001463891
Complainant is Heatcraft Inc. (“Complainant”), represented by Laura A. Brock of Richard Law Group, Inc., Texas, USA. Respondent is Direct Privacy ID B662F (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <heatcraftrefrigeration.com>, registered with DNC HOLDINGS, INC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on September 24, 2012; the National Arbitration Forum received payment on September 24, 2012.
On September 24, 2012, DNC HOLDINGS, INC. confirmed by e-mail to the National Arbitration Forum that the <heatcraftrefrigeration.com> domain name is registered with DNC HOLDINGS, INC. and that Respondent is the current registrant of the name. DNC HOLDINGS, INC. has verified that Respondent is bound by the DNC HOLDINGS, 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 September 25, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of October 15, 2012 by which Respondent could file a Response to the Complaint, via e-mail addres-sed to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to the postmaster@heatcraftrefriger-ation.com. Also on September 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 response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 24, 2012, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Complainant uses the HEATCRAFT mark in its business of marketing commer-cial refrigeration products.
Complainant holds registrations, on file with the United States Patent and Trade-mark Office (“USPTO”) for its HEATCRAFT trademark (including Reg. No. 1,637,453, registered March 12, 1991).
Respondent registered the <heatcraftrefrigeration.com> domain name, which re-solves to a “pay-per-click” website whose links take visitors to websites promot-ing goods and services offered by businesses unrelated to Complainant, includ-ing businesses operating in competition with that of Complainant.
The <heatcraftrefrigeration.com> domain name is confusingly similar to Com-plainant’s HEATCRAFT mark.
Respondent has not been commonly known by the disputed domain name.
Respondent is not a licensee of Complainant, nor is it an authorized dealer, vendor, supplier or distributor of Complainant’s goods.
Respondent makes neither a bona fide offering of goods or services nor a legit-imate noncommercial or fair use of the disputed <heatcraftrefrigeration.com> domain name.
Respondent has neither any rights to nor any legitimate interests in the contested domain name.
Respondent uses the website resolving from the disputed domain name to profit from the receipt of “pay-per-click” fees by redirecting Internet users to websites competing with the business of Complainant.
Respondent registered and uses the <heatcraftrefrigeration.com> domain name in bad faith by taking advantage of the goodwill associated with Complainant’s mark to lure Internet traffic to its resolving website and to gain commercially by disrupting Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the HEATCRAFT trademark mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005), the panel there finding that a UDRP complainant’s rights in its mark were established by its trademark registration with the USPTO. Similarly, a panel in Orange Glo Int’l, Inc. v. Roswell Int’l Ltd, FA 440119 (Nat. Arb. Forum Apr. 21, 2005), found that a complainant’s trademark rights in its OXICLEAN mark were demonstrated by its trademark registrations.
The <heatcraftrefrigeration.com> domain name is confusingly similar to Com-plainant’s HEATCRAFT mark under Policy ¶ 4(a)(i). The domain name incorp-orates the entire HEATCRAFT mark and adds only the descriptive term “refrig-eration,” which describes Complainant’s business, and the generic top-level do-main (“gTLD”) “.com.” These alterations of the mark, made in forming the con-tested domain name, do not distinguish the domain name from Complainant’s mark under the standards of the Policy. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that a respondent failed to dif-ferentiate the <aimprofiles.com> domain name from a complainant’s AIM mark by merely adding the term “profiles” to the mark in creating a disputed domain name); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” to the mark of another in forming a domain name is irrel-evant to a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Comment-aries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or 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 Respond-ent 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.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent is not a licensee of Complainant and does not have permission to use the HEATCRAFT trademark, and that Respondent has not been common-ly known by the <heatcraftrefrigeration.com> domain name. Moreover, the per-tinent WHOIS information identifies the registrant of the domain name only as “Direct Privacy ID B662F,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have demonstrated that it has rights to or legit-imate interests in it within the contemplation of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel there holding that a respondent lacked rights and legitimate interests in a contested domain name where that respondent was not commonly known by the domain name as reveal-ed in the relevant WHOIS information, and where that respondent did not have a complainant’s permission to use the disputed domain name.
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the <heatcraftrefrigeration.com> domain name to host a website offering visitors pay-per-click hyperlinks to various businesses, some of which are competitors of Complainant, does not reflect either a bona fide offering of goods and services or a legitimate noncommercial or fair use of the domain name. From our review of the record, we conclude that Respondent’s employ-ment of the disputed domain name is neither a bona fide offering of goods or ser-vices under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name where that respondent was using the domain name to operate a website containing links to commercial websites operating in competition with the business of a UDRP com-plainant, which the panel found not to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncom-mercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from our review of the record that Respondent’s registration and use of the <heatcraftrefrigeration.com> domain name as alleged in the Com-plaint, has been in bad faith in that it disrupts Complainant’s business under Policy ¶ 4(b)(iii). See, for example, Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008), the panel there finding that, by using a resolving website to take Internet users to the websites of a UDRP complainant’s commer-cial competitors, a respondent demonstrated bad faith registration and use of a contested domain name under Policy ¶ 4(b)(iii).
Further, we are satisfied from the evidence that Respondent’s receipt of fee in-come from the operation of the resolving website via employment of a domain name which is confusingly similar to Complainant’s trademark brings Respond-ent’s conduct within the purview of Policy ¶ 4(b)(iv) as constituting further proof of bad faith registration and use of the domain name. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name that was confusingly similar to a complainant’s mark by using it to carry links to third-party websites that offered services similar to those offered by that complainant).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <heatcraftrefrigeration.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 8, 2012
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