Fil-Tech, Inc. v. Tangidyne Corp
Claim Number: FA1407001569093
Complainant is Fil-Tech, Inc. (“Complainant”), represented by Shehla F. Syed of West Hill Technology Counsel, Inc., Massachusetts, USA. Respondent is Tangidyne Corp (“Respondent”), represented by Timothy M. McCarthy of Clark Hill PLC, Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <phil-tech.com>, registered with Network Solutions, LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Honorable Charles K. McCotter Jr., (Ret.), Professor David E. Sorkin and James A. Carmody, Esq., (Chair) as Panelists
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2014; the National Arbitration Forum received payment on July 16, 2014.
On July 17, 2014, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <phil-tech.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 July 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 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@phil-tech.com. Also on July 22, 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.
A timely Response was received and determined to be complete on August 11, 2014.
On August, 20, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Charles K. McCotter Jr., (Ret.), Professor David E. Sorkin and James A. Carmody, Esq,. (Chair) as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <phil-tech.com> domain name, the domain name at issue, is confusingly similar to Complainant’s FIL-TECH mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent filed a Response denying generally the allegations in the Complaint but consenting to transfer of the domain to Complainant.
C. Complainant filed an Additional Submission asking the Panel to make specific findings of fact, notwithstanding Respondent’s consent to transfer, citing less than cordial communications between the parties and their counsel following filing of the Response and the new registration by persons unknown of <fil-tech.com>.
D. Respondent filed an Additional Submission assailing the Additional Submission of Complainant which also referred to the communications between the parties and noting Complainant’s suggestion that the registration of <fil-tech.com> was at the hand of Respondent is wholly unsupported.
The Panel took both of the Additional Submissions into consideration and, under the circumstances, determines to analyze the case under the elements of the UDRP.
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.
Complainant has been selling quartz crystal sensors, quartz crystal hardware and vacuum system components since at least 1990. Complainant uses the FIL-TECH mark in connection with such efforts. Complainant owns the FIL-TECH mark through trademark registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,222,958, registered March 27, 2007). The disputed domain name <phil-tech.com> is confusingly similar to Complainant’s FIL-TECH mark as the name is phonetically identical. The disputed domain name merely substitutes the letter “f” in Complainant’s mark with “ph.”
Respondent has no rights or legitimate interests in the disputed domain name and is not commonly known by the disputed domain name. Respondent has a relationship with an entity called Phillip Technologies LLC; however, Respondent registered the disputed domain name well before the existence of Phillip Technologies LLC. Respondent is not using the disputed domain name to provide a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Respondent originally used the disputed domain name to sell quartz crystal sensors, quartz crystal hardware and vacuum system components in competition with Complainant. Following a cease and desist letter, Respondent stopped using the disputed domain name for several months. Complainant has provided correspondence between Complainant and Respondent relating to resolution efforts. After failed attempts to resolve the dispute, Respondent began using the disputed domain name, as of May 1, 2014, to resolve to a page containing an image of a handgun and bullets along with statements referencing keywords in the quartz crystal sensor industry. This use of the disputed domain name disrupts Complainant’s business and therefore demonstrates Respondent’s bad faith. It appears that Respondent registered the disputed domain name for the purpose of intentionally attempting to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark. The disputed domain name was phonetically identical to Complainant mark and was used to promote content in competition with Complainant. Respondent’s bad faith is further demonstrated by Respondent’s actual knowledge of Complainant’s rights in the FIL-TECH mark when it registered the domain name at issue on April 8, 2012.
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:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered and is being used in bad faith.
Complainant has been selling quartz crystal sensors, quartz crystal hardware and vacuum system components since at least 1990. Complainant uses the FIL-TECH mark in connection with such efforts. Complainant owns the FIL-TECH mark through trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,222,958, registered March 27, 2007). Where both parties reside in the United States, previous panels have held that USPTO registration is sufficient to establish rights in the mark. 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)). Accordingly, the Panel finds that Complainant’s USPTO registrations of the FIL-TECH mark are sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).
The disputed domain name <phil-tech.com> is confusingly similar to Complainant’s FIL-TECH mark as the name is phonetically identical to the mark. The disputed domain name merely substitutes the letter “f” in Complainant’s mark with “ph.” The disputed domain name also affixes the generic top-level domain (“gTLD”) “.com.” Previous panels have held that such alterations are insufficient to differentiate a domain name from the incorporated mark. See Colibri Corp. v. Dinoia, FA 662937 (Nat. Arb. Forum May 5, 2006) (finding that the <calibri.com> domain name was visually and phonetically similar to the complainant’s COLIBRI mark); see also Pfizer Inc. v. Phizer's Antiques, D2002-0410 (WIPO July 3, 2002) (finding the <phizer.com> domain name phonetically equivalent and confusingly similar to the PFIZER mark). In line with previous UDRP decisions, the Panel finds that the <phil-tech.com> domain name is confusingly similar to the FIL-TECH mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS record at issue indicates “Scott Grimshaw” as the Tech Name, and “Tangidyne LLC” as the Tech Organization. In Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) the panel found that the respondent was not commonly known by the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name.” The Panel observes that Respondent has not provided any evidence to contradict Complainant’s assertion on this matter. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name.
Respondent is not using the disputed domain name to provide a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Respondent originally used the disputed domain name to sell quartz crystal sensors, quartz crystal hardware and vacuum system components that competed with Complainant’s own efforts. Previous panels have held that the use of a confusingly similar domain name to offer competing products or services does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use. In Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) the panel held, “capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” In light of Respondent’s own blog promotion, the Panel finds that Respondent’s efforts to sell quartz crystal sensors, quartz crystal hardware and vacuum system components in competition with Complainant does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii), respectively.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s use of the disputed domain name disrupts Complainant’s business and therefore demonstrates Respondent’s bad faith. Notably, the Panel finds that the disputed domain name resolved to a website promoting the sale of goods in competition with Complainant. In similar circumstances, previous panels have found evidence of the respondent’s bad faith where the disputed domain name offers products or services in competition with the complainant. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Accordingly, the Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii).
Further, it appears to the Panel that Respondent registered the disputed domain name for the purpose of intentionally attempting to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark. The disputed domain name is phonetically identical to Complainant’s mark and was used to promote content in competition with Complainant. Additionally, Respondent had previous business relations with Complainant and therefore had knowledge of the goodwill associated with the mark and potential to benefit therefrom. Respondent’s efforts evidence bad faith pursuant to Policy ¶ 4(b)(iv) as Respondent registered and used the confusingly similar domain name to direct Internet users to a website offering products similar to those offered by Complainant. See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
Respondent’s bad faith is further demonstrated by evidence of Respondent’s actual knowledge of Complainant’s rights in the FIL-TECH mark. Complainant includes a screenshot from the disputed domain name reflecting the “About the company” section, where Respondent’s founder, Scott Grimshaw, articulates his efforts in the quartz crystal industry and sale of his prior operation, Cold Springs R&D Inc., to Complainant. The Panel finds that the parties prior dealings suffice to demonstrate Respondent’s actual knowledge of Complainant’s rights in the FIL-TECH mark, and that Respondent’s attempt to utilize the mark evidences bad faith pursuant to Policy ¶ 4(a)(iii). See 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).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <phil-tech.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Charles K. McCotter Jr., (Ret.), Professor David E. Sorkin
and James A. Carmody, Esq., (Chair), Panelists
James A. Carmody, for the Panel
Dated: September 2, 2014
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