Tyco Fire & Security GmbH v. Domain Admin
Claim Number: FA1403001550683
Complainant is Tyco Fire & Security GmbH (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Domain Admin (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <simplexfirealarm.com>, registered with Black Ice Domains, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 25, 2014; the National Arbitration Forum received payment on March 28, 2014.
On April 5, 2014, Black Ice Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <simplexfirealarm.com> domain name is registered with Black Ice Domains, Inc. and that Respondent is the current registrant of the name. Black Ice Domains, Inc. has verified that Respondent is bound by the Black Ice Domains, 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 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 2014 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@simplexfirealarm.com. Also on April 9, 2014, 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 April 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Tyco Fire & Security GmbH, is one of the largest and most famous industry leaders in fire alarms and fire protection systems.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SIMPLEX mark (e.g., Reg. No. 1,101,276, registered September 5, 1978).
The <simplexfirealarm.com> domain name is confusingly similar to Complainant’s SIMPLEX mark.
Respondent has no rights or legitimate interests in the <simplexfirealarm.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent’s website is a classic pay-per-click site displaying links which divert visitors to other websites.
Respondent registered the <simplexfirealarm.com> domain name in bad faith. Respondent is a well-known cybersquatter and is engaged in a longstanding pattern of bad faith registration of domain names that are confusingly similar to trademarks in which Respondent has no rights. Respondent has intentionally attempted to attract, for commercial gain, Internet searchers to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. Prior to registering the domain name Respondent was on both actual and constructive notice of Complainant’s rights in the SIMPLEX mark through Complainant’s trademark registrations, its common law trademark rights, and its extensive global use of the SIMPLEX marks which predate Respondent’s acquisition of the disputed domain name.
Respondent registered the <simplexfirealarm.com> domain name on October 20, 2006.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO registered trademarks for the SIMPLEX mark.
Respondent is not affiliated with Complainant and had not been authorized to use the SIMPLEX mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in SIMPLEX.
Respondent uses the <simplexfirealarm.com> domain name to host a pay-per-click website.
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 at-issue domain name is confusingly similar to a mark in which the Complainant has trademark rights.
Complainant owns trademark rights in the SIMPLEX mark through its registration thereof with the USPTO. It is irrelevant that Respondent may operate outside the jurisdiction of the trademark registrar. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <simplexfirealarm.com> domain name is composed of Complainant’s entire SIMPLEX trademark suffix by the generic term “fire alarm” less the space. The necessary top-level domain name (here “.com”) is appended to the second level domain name string thereby completing the domain name. The addition of a generic term to Complainant’s mark does not differentiate the domain name from such mark, and the inclusion of a necessary top-level domain name is immaterial to the Panel’s analysis. Therefore, the Panel concludes that the at-issue domain name is confusingly similar to Complainant’s SIMPLEX trademark pursuant to Policy ¶4(a)(i). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also, Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information for the <simplexfirealarm.com> domain name lists “Domain Admin” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <simplexfirealarm.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent’s <simplexfirealarm.com> website is used to display pay-per-click links. Thereby, Respondent diverts Complainant’s customers and potential customers to websites that are not associated with Complainant. Some links reference Complainant’s competitors in the video security field, such as “Fire Detectors,” “Heat Detectors,” and more. Respondent’s use of the domain name to provide links that compete with Complainant is neither a bona fide offering of goods or services under Policy ¶4(a)(i), nor a legitimate noncommercial or fair use under Policy ¶4(a)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and absent evidence to the contrary conclusively demonstrates that Respondent lacks both rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
At least ten prior UDRP cases have been brought against Cenal.com. Cenal.com is the domain name associated with the e-mail account which appears in Respondent’s WHOIS information. Such cases including: NSTBC, Inc. v. DNS Manager / Cenal.com, FA 1385407 (Nat. Arb. Forum June 9, 2011), Fred Hayman v. DNS Manager / Cenal.com, FA 1370359 (Nat. Arb. Forum March 17, 2011), Johnson & Johnson v. cenal.com ltd / cenal com, FA 1356581 (Nat. Arb. Forum Dec. 3, 2010), and others. Respondent is most likely the same entity or individual as the respondents in prior Cenal.com related cases. Respondent’s litany of adverse UDRP decisions suggests Respondent acted in bad faith in the instant case under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Additionally and as mentioned above, via the links thereon Respondent’s <simplexfirealarm.com> website leads Internet users and potential customers of Complainant to third parties that are not associated with Complainant and in some cases to Complainant’s competitors. By using the confusingly similar domain name to host pay-per-click links to Complainant’s competitors, Respondent attempts to attract Internet users for commercial gain by creating confusion between the website’s domain name and Complainant’s SIMPLEX trademark as to the domain name’s source, sponsorship, affiliation, or endorsement. Such use of the <simplexfirealarm.com> domain name demonstrates Respondent’s bad faith under Policy ¶4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that 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 complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant’s SIMPLEX trademark is well known and the confusingly similar <simplexfirealarm.com> domain name includes the suggestive term “firealarm” which relates to Complainant’s SIMPLEX trademarked fire alarm products. Further, the website addressed by the at-issue domain name displays links to Complainant’s competition and Respondent appears to regularly engage in registering and using domain names that are confusingly similar to the trademarks of others. In light of the foregoing, it would be inconceivable to assume that prior to registering the at-issue domain name Respondent had no knowledge of Complainant and its SIMPLEX mark. Therefore, the Panel concludes that Respondent had prior knowledge of Complainant’s trademark and thus registered the at-issue domain name in bad faith under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name"); see also, Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration); see also Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark, and therefore registered the disputed domain name in bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <simplexfirealarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 1, 2014
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