Deltona Transformer Corporation v. LL Nicholls
Claim Number: FA1311001532023
Complainant is Deltona Transformer Corporation (“Complainant”), represented by Maulin V. Shah of UDRPro, LLC, North Carolina, USA. Respondent is LL Nicholls (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <batterytender.org>, registered with Realtime Register B.V.
The undersigned certifies he has acted independently and impartially and to the best of his 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 November 27, 2013; the National Arbitration Forum received payment on November 27, 2013.
On November 29, 2013, Realtime Register B.V. confirmed by e-mail to the National Arbitration Forum that the <batterytender.org> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 December 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 2013 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@batterytender.org. Also on December 2, 2013, 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 December 30, 2013, 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
Complainant is the owner of the following trademark registrations:
BATTERY TENDER – European Community Trademark Reg. No. 001940568, issued on May 14, 2003 for “Battery chargers for use in the marine industry, motor cycles, automotive or in any vehicle or application using lead acid or gel batteries” in International Class 009.
BATTERY TENDER – Chinese Trademark Reg. No. 396198, issued on March 7, 2006. .
BATTERY TENDER - U.S. Trademark Reg. No. 3,474,591, issued on July 29, 2008 for “Battery charger for use in marine industry, motorcycles, automotive or, in any vehicle or application using lead acid or gel batteries” in International Class 009.
DELTRAN BATTERY TENDER - U.S. Trademark Reg. No. 4,281,421, issued on January 29, 2013 for “Battery chargers and battery charger accessories, namely, battery cases; battery cables; battery power connectors; battery power connector plugs for use in marine industry, motorcycles, automotive or in any vehicle or application using lead acid or gel batteries.” in International Class 009, and for “Cigarette lighter adaptors for use in marine industry, motorcycles, automotive or in any vehicle or application using lead acid or gel batteries” in International Class 012.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.]
Complainant, Deltona Transformer Corporation, d/b/a Deltran Corporation, is a leading provider of vehicle charging equipment. Complainant began as an electronic transformer manufacturer in 1965, and entered the battery charging market in 1989. In 1992, Complainant began offering a line of battery chargers under the trademark BATTERY TENDER. Complainant currently sells its products bearing the BATTERY TENDER trademark through a number of national retail outlets, include Walmart, O’Reilly Auto Parts, Sears, Kmart, AutoZone, BatteriesPlus, Advance AutoParts, Canadian Tire, Grainger, Interstate Batteries, Ace Hardware, PepBoys, Cabela’s, Cycle Gear, Battery Mart, TrueValue Hardware, Remy Battery, Auto Barn, to name a few, as well as through a network of national and international distributors.
The Internet is one of the primary marketing channels used by Complainant, and Deltran’s use of and value of the Internet as a marketing and sales channel will continue to increase in the future. Complainant has owned and operated BatteryTender.com since 1998, where it has continuously marketed its products bearing the BATTERY TENDER trademark. Furthermore, Complainant has an active Twitter account with 896 followers, and a Facebook page with 5,628 fans.
Over the years, Complainant has expended large sums of money advertising its products, and promoting its brand and trademarks. For example, Complainant sponsors numerous race car drivers, such as Bryan Sellers of Falken Tire, Oliver Gavin of Corvette Racing, Dion Von Moltke of WeatherTech AJR, and Graham Rahal of Rahal Letterman Lanigan Raching. These drivers perform in the American Le Mans Series and the IZOD Indycar Series, and have helmets, uniforms, and race cars which proudly display the BATTERY TENDER trademark.
As a result of all of these activities, Complainant has developed considerable goodwill in its business and in its trademarks.
Complainant owns European Community Trademark Reg. No. 001940568 for BATTERY TENDER, Chinese Trademark Reg. No. 396198 for BATTERY TENDER, United States Trademark Reg. No. 3,474,591 for BATTERY TENDER, and United States Trademark Reg. No. 4,281,421 for DELTRAN BATTERY TENDER.
Respondent acquired the disputed domain name at some time between August 18, 2012 and October 5, 2012. Below is a table showing the WHOIS registrant history for the disputed domain name:
July 11, 2010
Whois Service
Belize Domain WHOIS Service Lt.,
Suite 5, Garden City Plaza,
Mountainview Boulevard, City of Belmopan, BZ
NS1.PARKED.COM;
NS2.PARKED.COM
March 16, 2011
Expired Domain
directNIC.com,
Expired Domain Name,
PO Box 11207, George Town, Grand Cayman, 1008 KY
NS1. PARKED.COM;
NS2.PARKED.COM
August 18, 2012
Domain Properties, Inc.
1425 W 10775 S,
South Jordan, Utah, US
NS09.DOMAINCONTROL.COM;
NS10.DOMAINCONTROL.COM
October 5, 2012
LL Nicholls
Uilenstede 447,
AMSTELVEEN 1183AG, NL
NS3.FIRSTFIND.NL;
NS4.FIRSTFIND.NL
November 26, 2013
LL Nicholls
Uilenstede 447,
AMSTELVEEN 1183AG, NL
NS3.FIRSTFIND.NL;
NS4.FIRSTFIND.NL;
NS5.FIRSTFIND.NL
As can be seen, the disputed domain name changed ownership a number of times since 2010, first being owned by an entity protected by a WHOIS privacy service, and then the disputed domain name was in an expired state, and it was subsequently registered by Domain Properties, Inc. The last ownership record on DomainTools.com showing Domain Properties, Inc. as the registrant is August 18, 2012. The first ownership record on DomainTools.com showing Respondent as the registrant is October 5, 2012.
Thus, Respondent acquired the domain name at some time between August 18, 2012 and October 5, 2012, years after Complainant’s European Community Trademark Reg. No. 001940568 for BATTERY TENDER issued on May 14, 2003, Chinese Trademark Reg. No. 396198 for BATTERY TENDER issued on March 7, 2006, and United States Trademark Reg. No. 3,474,591 for BATTERY TENDER issued on July 29, 2008. See The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name May Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (Although the disputed domain name had been created prior to the complainant obtaining rights in the mark at issue, the Panel found the complainant’s rights to predate the respondent’s registration because the disputed domain name had been transferred to the respondent only a month prior to the proceeding. “Therefore, one only needs to trace the registration date back to the most recent transfer instead of the original registration.”); see also RapidShare AG and Christian Schmid v. Fantastic Investment Limited, FA1338403 (Nat. Arb. Forum Oct. 8, 2010) (holding “[e]ven if a domain name was initially registered in good faith, this good faith does not provide protection for subsequent bad faith transferees.”).
Notwithstanding, Complainant’s European Community Trademark Reg. No. 001940568 for BATTERY TENDER issued on May 14, 2003, and it’s Chinese Trademark Reg. No. 396198 for BATTERY TENDER, issued on March 7, 2006, both well before November 7, 2007, when the disputed domain name was first registered.
Complainant has therefore established its rights in the BATTERY TENDER mark pursuant to Policy ¶4(a)(i) through its registration of the mark with the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that a complainant’s registration of the CHEAPTICKETS trademark was adequate to establish its rights in the mark pursuant to Policy ¶4(a)(i)).
The disputed domain name is identical to Complainant’s BATTERY TENDER trademark. The disputed domain name contains the most prominent portion of the trademark, “BATTERY TENDER”, while adding only the generic top-level domain (“gTLD”) “.org.” Such alterations of the mark in forming the domain name are insufficient to render the domain name distinct from the mark under Policy ¶4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis).
[b.]
Respondent is using the disputed domain name to offer for sale Complainant’s goods, despite not being affiliated with, or authorized by, Complainant. Respondent’s website prominently displays the headers “Battery Tender”, and includes links to an Amazon.com store where Complainant’s products may be purchased. The website incorporates Complainant’s trademarks, copyrights, product descriptions, and text. The Amazon.com website that users are directed to includes an affiliate code in the resolving URL. Thus, Respondent presumably receives affiliate commissions from any traffic directed from the disputed domain name.
Respondent’s unauthorized display of sale offerings of Complainant’s goods is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶4(c)(iii). See Jellycat Ltd. v. Joshua Parry, FA 1514604 (Nat. Arb. Forum Sept. 12, 2013) (holding that respondent’s unauthorized website with “images of Complainant’s goods and hyperlinks to Amazon.com websites that sell Complainant’s goods” and which “promoted complainant’s own goods” did not constitute a Policy ¶4(c)(i) bona fide offering.); see also G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i)); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (holding “[t]he unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).
Furthermore, Respondent’s website states “[t]he Deltran company believe[s] and stands by the quality of their product.” This statement confuses consumers and suggests a relationship with Complainant that is non-existent. See Honeywell International Inc. v. Corp Development & Mgmt. FA 1319204 (Nat. Arb. Forum May 20, 2010) (holding, “Respondent seems to confuse its right to inform that it sells genuine products of the Complainant with a (non-existing) right to create a confusing domain name and add features to the corresponding web site suggesting a closer relationship with the Complainant than just being a reseller with no specific and official authorization.”).
On the contrary, Complainant has no business relationship whatsoever with Respondent, has never authorized Respondent to promote, sell or market its products anywhere in the world, and does not provide its products to the Respondent for re-sale purposes.
Past panels have found that selling a complainant’s goods via a disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Alticor Inc. v. Lanfang Song / SONG LAN FANG, FA 1359599 (Nat. Arb. Forum Feb. 2, 2011)(finding that selling the complainant’s products through the <amway68.com> domain name was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Additionally, there is no evidence in the record to suggest that Respondent is commonly known by BATTERY TENDER pursuant to Policy ¶4(c)(ii). Respondent is known as “LL Nicholls” as shown in the WHOIS information provided by Respondent. See Annex 1; see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests where Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
[c.]
The disputed domain name is confusingly similar to Complainant’s trademark. Consumers accessing Respondent’s website may become confused as to a suggested affiliation between the website and Complainant. Thus, Respondent’s use of the disputed domain name to market Complainant’s products is evidence of bad faith registration or use pursuant to Policy ¶4(b)(iv). See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶4(b)(iv)”); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the respondent attracted users to a website sponsored by the respondent and created confusion with the complainant’s mark as to the source, sponsorship, or affiliation of that website).
Furthermore, it is clear from a comparison of Complainant’s website at <batterytender.com> and Respondent’s website at <batterytender.org> that Respondent lifted various product descriptions in order to give the impression that Respondent and the disputed domain name are affiliated with Complainant. See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000)(the panel concluded that the use of a complainant’s own goods in the promotion of respondent’s own endeavor through a confusingly similar domain name was significant evidence of a Policy ¶4(b)(iv) bad faith attempt to create a likelihood of confusion regarding the source or origin of respondent’s business).
Additionally, Respondent’s use of the confusingly similar domain name to display advertisements that offer for sale Complainant’s products constitutes disruption of Complainant’s authorized re-seller business, and is evidence that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶4(b)(iii). See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶4(b)(iii).”).
Respondent profits both through the sale of the Complainant’s goods displayed at the website and through the pay-per-click link revenue from Amazon.com. Respondent maintains the resolving website and misappropriates the disputed domain name for its own profit, which is evidence of bad faith registration and use under Policy ¶4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant uses the BATTERY TENDER mark to identify its battery charger goods. Complainant has registered its mark with the United States and Trademark Office (“USPTO”) (e.g. Reg. No. 3,747,591 registered July 29, 2008) as well as with the Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 1,940,568 registered on May 14, 2003). Evidence of registration of the BATTERY TENDER mark with the USPTO and OHIM satisfied Complainant’s requirement to show rights under Policy ¶4(a)(i). See Association de moyens Malakoff Médéric v. N/A Ko Ko Te, D2010-0029 (WIPO March 1, 2010) (holding that Complainant established rights in the MALAKOFF-MEDERIC mark under Policy ¶4(a)(i) through its multiple registrations of the mark with the European Union Office for Harmonization of the Internal Market (OHIM)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Respondent’s <batterytender.org> domain name is identical to the BATTERY TENDER mark as the domain name only adds the gTLD “.org.” Despite the removal of the mark’s spacing and the addition of the “.org” gTLD (both changes are required by domain name syntax), the domain name is identical to the BATTERY TENDER mark. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark).
The Panel finds Policy ¶4(a)(i) satisfied.
Policy ¶4(c) provides a non-exhaustive list of ways for a Respondent to prove it has rights to and legitimate interests in the domain name. All Complainant needs to do is to meet its burden of going forward on this point, which Complainant has done.
Policy ¶4(c)(i) provides: Respondent has rights if, before any notice to Respondent of the dispute, Respondent’s 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. In this case, Respondent has not made any such showing at all. Therefore, Respondent cannot have met its burden of proof regarding this element.
Policy ¶4(c)(ii) provides: Respondent has rights if Respondent (as an individual, business, or other organization) have been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights. There is nothing in the record which even remotely suggests Respondent has been known by the disputed domain name, including the WHOIS information. Therefore, Respondent cannot have met its burden of proof regarding this element.
Policy ¶4(c)(iii) provides: Respondent has rights if Respondent is 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. Respondent’s use cannot be said to be non-commercial because Respondent is getting click through fees as an Amazon affiliate. The only remaining question is whether or not Respondent re-selling presumably genuine goods manufactured by Complainant allows Respondent to acquire any rights to the disputed domain name as a fair use. Certainly selling genuine goods cannot tarnish Complainant’s mark. However, the text of the web site at the domain name would very likely mislead consumers into believing they were dealing Complainant rather than Respondent. This condition applies both to the noncommercial and fair use of the domain name. Respondent cannot be making a fair use of the mark if Respondent is misleadingly diverting consumers. Therefore, this Panel concludes Respondent’s use doesn’t amount to a fair use, even though goods are actually being sold on-line.
The Panel finds Policy ¶4(a)(ii) satisfied.
Policy ¶4(b) provides a non-exhaustive list of ways to prove bad faith registration and use of the disputed domain name.
Policy ¶4(b)(i) provides bad faith may be found due to circumstances indicating that Respondent 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 Respondent’s documented out-of-pocket costs directly related to the domain name. There is no claim regarding such activity here.
Policy ¶4(b)(ii) provides bad faith may be found when Respondent registered the domain name to prevent the owner of the mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct. Once again, there is no such claim here.
Policy ¶4(b)(iii) provides bad faith may be found when Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor. Complainant claims Respondent’s actions violate (or circumvent) Complainant’s reseller restrictions and therefore amounts to bad faith. This Panel is not willing to accept this argument. Once Complainant puts its genuine goods into the stream of commerce, they may be resold (whether or not in their original packaging) without violating Complainant’s intellectual property rights. Complainant is not so powerful it can prevent its customers from reselling Complainant’s genuine products.
Policy ¶4(b)(iv) provides bad faith may be found when Respondent has intentionally used the disputed domain name to attempt to attract, for commercial gain, Internet users to Respondent’s web site 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 Respondent’s web site or location or of a product or service on Respondent’s web site or location. Respondent certainly gets paid click through fees as an Amazon affiliate. In light of the actual use the web site in this case, Respondent has failed to make it clear it isn’t Complainant. Why would Respondent do such a thing? To trade upon Complainant’s goodwill. This constitutes adequate proof of bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <batterytender.org> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, January 2, 2014
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