Rockwell Automation v. Domain Administrator / Fundacion Private Whois
Claim Number: FA1406001563501
Complainant is Rockwell Automation (“Complainant”), Wisconsin, USA. Respondent is Domain Administrator / Fundacion Private Whois (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allenbradleydistributors.org>, registered with Internet.bs Corp. (R1601-LROR).
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 9, 2014; the National Arbitration Forum received payment June 9, 2014.
On June 15, 2014, Internet.bs Corp. (R1601-LROR) confirmed by e-mail to the National Arbitration Forum that the <allenbradleydistributors.org> domain name is registered with Internet.bs Corp. (R1601-LROR) and that Respondent is the current registrant of the name. Internet.bs Corp. (R1601-LROR) verified that Respondent is bound by the Internet.bs Corp. (R1601-LROR) registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 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@allenbradleydistributors.org. Also on June 16, 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 July 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant makes the following allegations in this proceeding:
Complainant urges that it uses the ALLEN-BRADLEY mark in connection with various products used in machinery. Complainant obtained several United States Patent and Trademark Office ("USPTO") trademark registrations for this mark (e.g., 712,800 registered Mar. 21, 1961).
The <allenbradleydistributors.org> domain name is confusingly similar to the mark in that it merely adds the generic top-level domain ("gTLD") “.org” and the descriptive term “distributors.”
Respondent has no rights or legitimate interests in the <allenbradleydistributors.org> domain name. First, Respondent has never been known by this domain name and Complainant has not authorized Respondent to use the ALLEN-BRADLEY mark. Second, Respondent seeks to imitate Complainant’s legitimate operation through this domain name. Finally, Respondent is participating in a Google AdSense scheme with this domain name in order to maximizing the advertising revenue generated from this domain name.
Respondent registered and used the domain name in bad faith. First, Respondent’s decision to host links to Complainant’s competitors evidences an intent of bad faith disruption. Second, the use of this confusingly similar domain name to mimic Complainant’s own websites while shuttling Internet users to competing advertisements is evidence of an intent to profit through the likelihood of confusion. Finally, Respondent had knowledge or awareness of Complainant and the mark at the time of domain name registration based on the similarity of the mark to the domain name and Respondent’s use of the domain name.
Respondent’ did not file a Response in this proceeding:
Respondent did not submit a response.
The Panel notes that Respondent registered the <allenbradleydistributors.org> domain name October 23, 2013, more than one-half century after Complainant establishes that it had rights in the mark.
Complainant established that it has rights in the mark contained in its entirety within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 to 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 to or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no such rights or legitimate interests relative to the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant uses the ALLEN-BRADLEY mark in connection with various products used in machinery. Complainant obtained several USPTO trademark registrations for this mark (e.g., 712,800 registered Mar. 21, 1961). The Panel finds that Complainant’s trademark registration with the USPTO satisfies the Policy ¶ 4(a)(i) required showing of rights, and that despite Respondent’s apparent domicile in Panama, Complainant’s registration in the United States satisfies the policy. See, e.g., Priceline.com, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1547179 (Nat. Arb. Forum Apr. 24, 2014) (finding that USPTO registration satisfied Policy ¶ 4(a)(i), even when the respondent was located in Saint Vincent and the Grenadines).
Complainant further notes that the <allenbradleydistributors.org> domain name is confusingly similar to Complainant’s protected mark in that it merely adds the gTLD “.org” and the descriptive term “distributors.” In Cargill, Inc. v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013), the panel found that a single additional term and a gTLD created a confusing similarity between the mark and the disputed domain name. The Panel here also finds Policy ¶ 4(a)(i) confusing similarity.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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.”).
Complainant alleges that Respondent has never been known by the mark and this domain name and that Complainant has not authorized Respondent to use the ALLEN-BRADLEY mark in any way. The Panel notes that the WHOIS information lists: “Domain Administrator / Fundacion Private Whois” as the registrant of record for this <allenbradleydistributors.org> domain name. The Panel finds that Respondent cannot be commonly known by the domain name under Policy ¶ 4(c)(ii). See Jordan Cook p/k/a Reignwolf v. Ryan Crase, Ryan Crase Creative Media, FA 1520515 (Nat. Arb. Forum Oct. 28, 2013) (noting that past panels had “declined to make findings under Policy ¶ 4(c)(ii) when the respondent did not make any claim that it was actually known by the domain names. The Panel there found: “Th[is] Panel agrees that there is no evidence that Respondent is known by the <reignwolf.com> and <reignwolfmusic.com> domain names under Policy ¶ 4(c)(ii).”).
Complainant further claims that Respondent seeks to imitate Complainant’s legitimate operation through this <allenbradleydistributors.org> domain name. The Panel notes that the domain name resolves to a website purporting to provide information about Complainant’s business. See Compl., at Attached Ex. F. Here the Panel finds that the use of a domain name to create the impression that the website is associated with Complainant is not a Policy ¶ 4(c)(i) bona fide offering of goods or services and it is not a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See, e.g., Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Respondent is participating in a Google AdSense scheme with this <allenbradleydistributors.org> domain name in order to maximize the advertising revenue generated from this domain name. In The Standard Bank of South Africa Ltd. v. dalvinder dhillon, FA 1527717 (Nat. Arb. Forum December 10, 2013) the panel found no bona fide use when a domain name clearly contained competing hyperlinks. The Panel here notes that the hyperlinks are shown on Exhibit F, and finds that Respondent and no rights pursuant to Policy ¶ 4(c)(i), (iii), due to competing hyperlinks.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant contends that Respondent’s decision to host links to Complainant’s competitors shows intent to disrupt Complainant’s business in bad faith. The Panel finds that the record shows that the links on the disputed domain name are in fact resolving to competing products, and therefore, the Panel finds under Policy ¶ 4(b)(iii) that Respondent’s conduct supports findings of bad faith disruption. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also believes the use of this confusingly similar <allenbradleydistributors.org> domain name has the purpose of mimicking Complainant’s own websites while shuttling Internet users to competing advertisements, showing an intent to profit through this likelihood of confusion. The Panel again notes the similarities between the content on Complainant’s websites with that of the disputed domain name. See Compl., at Attached Ex. I. Thus the Panel finds a Policy ¶ 4(b)(iv) likelihood of confusion because Respondent is seeking to entice Internet users to the website in order to promote hyperlink advertisements. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Complainant lastly claims Respondent had to have knowledge or awareness of Complainant and the mark at the time of domain name registration. The Panel agrees that the confusingly similar name, the confusingly similar content of the domain name’s website and the use all may be taken as evidence that Respondent knew enough about Complainant’s business to give Respondent the idea to place images of Complainant’s goods on the domain name’s website. As such, the Panel finds that Respondent actually knew of Complainant’s rights in the mark and Respondent acted in bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <allenbradleydistributors.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 25, 2014.
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