DECISION

 

Computerized Security Systems, Inc. d/b/a SAFLOK v. Bennie Hu

Claim Number: FA0305000157321

 

 

PARTIES

Complainant is Computerized Security Systems, Inc., Costa Mesa, CA (“Complainant”) represented by Robert S. Gurwin, of Rader, Fishman, Grauer PLLC.  Respondent is Bennie Hu, Wujiang City, Jiangsu, CHINA (“Respondent”) represented by Jin Ling of Jin, Li & Wang Dispute Service Center.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <saflock.com>, registered with Bulkregister.com, Inc.

 

PANEL

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.

 

Hugues G. Richard as panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 14, 2003; the Forum received a hard copy of the Complaint on May 14, 2003.

 

On May 14, 2003, Bulkregister.com, Inc. confirmed by e-mail to the Forum that the domain name < saflock.com > is registered with Bulkregister.com, Inc. and that the Respondent is the current registrant of the name. Bulkregister.com, Inc. has verified that Respondent is bound by the Bulkregister.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On May 15, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@saflock.com by e-mail.

 

A timely Response was received and determined to be complete on June 2, 2003.

 

On June 9, 2003, Additional Submission by Complainant was received pursuant to National Arbitration Forum Supplemental Rule 7(a).

 

On June 10, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hugues H. Richard as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant contends that the <saflock.com> domain name is nearly identical or confusingly similar in sight, sound and appearance to Complainant’s famous “SAFLOK” Mark, which has been in use since at least as early as 1982, and <saflock.com> Internet domain. 

 

Complainant submits that consumer confusion is particularly likely because Respondent is using the famous and distinctive mark “SAFLOK” adding only the single letter “C” (while the spelling and pronunciation is identical in every way) to misdirect web traffic of individuals who are looking for the Complainant’s famous SAFLOK products and official SAFLOK website.

 

The fact that the infringing domain name includes the letter “C” as compared to Complainant’s SAFLOK Mark does not defeat this identity, as the mere inclusion of the letter “C” cannot serve to distinguish[1]. Indeed, domain names that deviate insignificantly from a famous mark are rendered confusingly similar under ICANN Policy 4(a)(i) analysis[2].

 

Furthermore, Complainant argues that the likelihood of confusion is enhanced by the fact that Complainant is one of the world’s largest manufacturing and distributors of electronics locks, access management systems and safes in the hospitality, multi-family, government, military and commercial industries and sells electronic lock products similar to those offered by Respondent.

 

Complainant claims that Respondent has no rights or legitimate interests in the domain name.  According to Complainant, Respondent has never offered bona fide goods or services under the SAFLOCK Mark, and since Complainant holds worldwide registrations for its SAFLOK Mark and variations thereof, any such use of these marks by Respondent would constitute trademarks infringement[3].

 

Moreover, Respondent has never been commonly known by the name SAFLOCK in accordance with ICANN Policy 4(c) (ii). Complainant makes reference to the Victoria’s Secret et al. v. Victoria Summers, FA 96931 (Nat. Arb. Forum May 8, 2001) decision in which the panel found that the respondent failed to demonstrate any rights or legitimate interest in the disputed domain name, and points out the similarities with the case at hand.

 

Respondent’s conduct cannot constitute “noncommercial or fair use without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue” under paragraph 4(c)(iii) of the ICANN Policy. Complainant recently became aware that Respondent has offered, and continues to offer, electronic lock products in direct competition with Complainant. Respondent’s registration and use of <saflock.com> is per se evidence of an intent to reap commercial gain from Complainant’s protected and famous SAFLOK mark[4].

 

Complainant contends that Respondent registered and used the <saflock.com> domain name in bad faith. In light of the worldwide fame of Complainant’s SAFLOK mark, and the reputation of SAFLOK.COM as an Internet site offering information about Complainant, its products and the sale of such products, it is inconceivable that Respondent could have registered the domain names now in dispute without actual knowledge of Complainant’s rights. Under the ICANN Policy, registration of a domain name which one knows to be identical or confusingly similar to another’s trademark is evidence of bad faith[5]. Registrant has used and registered the infringing domain name in connection with a website to directly compete against SAFLOK to sell electronic lock products, and advertising that it will “[b]ring more cheaper good products to you!”. Respondent has engaged in a clear scheme to reap personal financial gain on the fame and goodwill of Complainant’s protected famous mark and its primary Internet domain name[6].

 

 

B. Respondent

 

Respondent is a China based manufacturer of electronic safes and locks in business since 1997, a wholly-owned subsidiary of Secustar Co. Ltd., a trading company on safety products.

 

It registered the domain name <saflock.com> on October 19, 2001 because it equals its company name.

 

Respondent does not dispute that the domain name <saflock.com> is similar to the Complainant’s registered trademark SAFLOK.

 

Respondent claims that he has rights and legitimate interests in the domain name because it registered its company name, Saflock Electronics Co. Ltd. d/b/a Saflock, as a domain name, which has been advertised and widely promoted in China over the years[7].

 

The disputed domain name has been used, before the notice of this dispute, for more than two years, on its company website introducing safes and locks, as well as on its e-mail addresses to communicated with clients and business partners, and as such the domain name has been commonly known by Respondent’s clients and business partners. Respondent has spent substantial funds to promote its website, is a legitimate company and consequently, the domain name is in connection with a bona fide offering of goods and services.

 

The domain name incorporates “lock”, a common generic word, and “saf” which is similar to another descriptive word and is widely used by companies all around the world to represent “safe” or “safety”, e.g. SAFAIR, SAFWAY.

 

An ICANN domain name dispute proceeding is not a forum for resolving disputes over trademarks rights (VeriSign Inc. v. VeneSign C.A. d-2000-0303 (WIPO June 28, 2000): “this decision should not be understood as a substantive decision on the likelihood of confusion between the Parties’ use of “VeriSign”, which will be a dispute for the courts to decide”.

 

It has spent a lot of money to promote it and actively uses it in its business and as such should have a legitimate interest (Grand Bay Management Company v. Allegory Investments, D-2001-0874, (WIPO Sept. 21, 2001).

 

 

Finally, Respondent submits that he has not registered and is not using the domain name in bad faith. Respondent contends that Complainant bears the burden of proof as to each element of its claim (ICANN Policy 4(a)). It further alleges that Complainant must establish bad faith in both use and registration[8]. According to Complainant, there is no evidence whatsoever that the Respondent registered the domain name with the intent to sell it to Complainant, to prevent Complainant from registering a domain name incorporating its trademark, to disrupt Complainant’s business, or to misdirect customers seeking to purchase its products. Respondent has never approached Complainant before.

 

According to Respondent, Complainant’s Mark “SAFLOK” is not a famous mark in China. Respondent’s company is based in China, which is very clear since the Chinese flag and the trademark “SECUSTAR” are shown on Respondent’s website, and Complainant did not enter the Chinese market until 2002, two years after Respondent registered the disputed domain name. Most of the Chinese customers and professional Locker retailers and distributors do not know the Complainant’s SAFLOK mark. Respondent had not prior knowledge of Complainant’s existence.

 

Respondent contends that the trademark “SAFLOK” is not registered in China and quotes Etam, plc. V. Alberta Hot Rods, D2000-1654 (WIPO January 31, 2000), VZ VermögensZentrum AG v. Anything.com and Allocation Network GmbH v. Steve Gregory.

 

According to the most popular China based Chinese search engine, <baidu.com>, the keyword “SAFLOK” appears on 8 web pages, and on 9 pages on Google’s Chinese version search engine.

 

 

C. Complainant’s Supplemental Submissions

 

Complainant further submits in its “Supplemental written statement” that Respondent admits that its <saflock.com> domain name is identical and confusingly similar and that therefore, Complainant has satisfied Policy 4(a)(i). Clearly, by virtue of its trademarks registrations in the United-States and in China specifically (No. 1338763 for SAFLOK & Design issued on November 28, 1999), there can be no dispute that Complainant is the rightful owner and has exclusive rights to use its SAFLOK Marks, along with confusingly similar variations thereto.

 

According to Complainant, the trademark SAFLOK is not generic. Respondent’s notion is erroneous since it ignores the most fundamental principles of both U.S. and Chinese trademark law that afford Complainant protection of and exclusive rights to use its SAFLOK marks. Clearly, Respondent, a direct competitor of Complainant, now claims that SAFLOCK is generic solely to further its own bad faith activities which continue to deprive Complainant of the use of its own marks as incorporated within the domain name that is the subject of this action.

 

Complainant’s trademarks registration pre-dates by nearly two years Respondent’s registration and use of the domain name. It is well established that under the law of both the United-States and China the use of a confusingly similar domain name to the registered mark for similar or identical goods is regarded as an infringement of Complainant’s rights[9]. In fact, infringing use vests no rights with Respondent and must therefore be rejected.

 

Complainant’s trademark registration in China is constructive notice of Complainant’s rights, which cannot be ignored[10].  Therefore Respondent has no legitimate rights or interests in the <saflock.com> domain name.

 

Respondent himself submitted into evidence an e-mail message it had received on May 8, 2001, from Dina Butts of Thompson Waterproofing, Inc., that was intended for Complainant. As a matter of fact, Complainant learned of Respondent’s infringing registration and use of the <saflock.com> domain name when Complainant received inquiries from customers who either mistakenly ordered goods from the Respondent due to actual confusion presented by Respondent’s registration and use of the domain name at issue or, were misled by the difference in price between Complainant’s goods and those offered by Respondent.

 

Respondent’s reliance on prior UDRP decisions such as Etam, plc v. Alberta Hot Rods, VZ VermögensZentrum AG v. Anything.com and Allocation Network GmbH v. Steve Gregory is misguided and misleading, since the complainant in each of these cases had not registered its mark in the respondent’s home country.  In contrast, in the instant case, Complainant did in fact register its mark in China, Respondent’s home country, and the registration was granted for nearly two years before Respondent applied to register the <saflock.com> domain name.  Moreover, Complainant applied to register its mark in China on February 1, 1998, some 32 months before Respondent applied to register <saflock.com>.  As noted above, a trademark registration in a respondent’s place of domicile places a respondent on constructive notice of the registered mark[11]. Thus, Respondent had knowledge of Complainant’s SAFLOK marks by virtue of Complainant’s Chinese trademark registration.  Complainant is therefore entitled to a legal presumption of bad faith. Respondent has failed to provide any evidence to overcome this presumption of bad faith, and thus Complainant succeeds under Policy 4(a)(iii).

 

Despite having knowledge of actual confusion as early as May 8, 2001, it wasn’t until after being served with the Complaint herein, that Respondent redesigned its home page to make it clear that its brand name is SECUSTAR SMARTLOCK[12]. Respondent’s efforts to change its website after receiving the Complaint are further evidence that Respondent’s registration of <saflock.com> was in bad faith[13]. Accordingly, Respondent’s attempt to play on the fame and goodwill of Complainant’s registered SAFLOK marks, even after it had actual knowledge of customer confusion is bad faith under Policy 4(a)(iii).

 

In a nutshell, when considering that there is an admission by Respondent that the domain name at issue is identical and confusingly similar to Complainant’s SAFLOK marks, Respondent’s failure to demonstrate any legitimate rights or interests to the <saflock.com> domain name, and Respondent’s absolute misrepresentations of its own bad faith conduct, it is clear that Complainant has met its burden of proof for all three prongs under Policy 4(a) and there can be no question that this arbitration Panel should issue an order to transfer <saflock.com> to Complainant as the rightful owner.

 

 

FINDINGS

The Complainant, is the owner of numerous trademark registrations worldwide for the mark SAFLOK, including the following US registrations: 1,330,642 1,394, 673 2,522,943 registered on April 16, 1985, May 27, 1986 and December 25, 2001 respectively as well as the China registration 1338763 registered on November 28, 1999 as it appears from Exhibit F of the Affidavit of Glenn Peacock.

 

Complainant has used, since at least 1982, and is using its SAFLOK trademark continuously and extensively in connection with its electronic lock products, namely, among other things : “computer controlled electronic door access system for use in hotels and offices, namely door locks, key cards, system host computer, key card encoding computer”.

 

On October 19, 2000, the Respondent registered the domain name <saflock.com>. 

 

Having reviewed the evidence submitted by the parties and their written representations, the Panel makes the following findings:

 

           The disputed domain name <saflock.com> is confusingly similar to Complainant’s trademarks SAFLOK.

 

           The Respondent does not have any rights or legitimate interests in respect of the domain name; and

 

           The domain name has been registered and used by the Respondent in bad faith.

 

DISCUSSION

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the 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.

 

            Identical and/or Confusingly Similar

 

On this issue, the Panel is of the opinion that the disputed domain name is confusingly similar to Complainant’s registered trademarks for the following reasons.

 

As previously stated, Complainant has provided evidence to the effect that the registrations in regard to the trademark SAFLOK have been made (notably USPTO Registration No. 1,330,642, registered in April 1985 and Chinese Registration 1338763 registered on November 28, 1999). Complainant registered its principal domain name <saflok.com> on April 3, 1996 and has continuously used the domain name since at least as early as December 1, 1998.

 

Those registrations are sufficient to establish prima facie the rights of Complainant over the said trademarks[14].

 

It has been recognized in previous decisions that the adaptation of a trademark in a domain name by variation in spelling or by deletion, addition or insertion of letters or numbers does not escape a finding of confusing similarity.  As stated in the decision America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 12, 2000), the addition of the suffixes “502” and “520” to the “ICQ” trademark does little to reduce the potential for confusion.  Also, in America Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Sept. 7, 2000), the Panel found that adding the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the ICQ mark and is therefore confusingly similar.[15]

 

The panel is of the view that the addition of the letter “C” does nothing to “distinguish” Respondent’s domain name from Complainant’s registered trademark, which remains the principal element of the domain name. This is even more so if one considers that Respondent is offering for sale similar products to those of Complainant.

 

Respondent does not dispute that its <saflock.com> domain name is similar to Complainant’s SAFLOK mark in which Complainant has rights. The Panel considers that this admission is sufficient for the Complainant to satisfy 4(a) Policy.

 

The Panel therefore finds that it is perfectly plausible for a consumer to be confused by the terminology used in the Respondent’s domain name.  Any Internet user may be led into thinking that the <saflock.com> website is provided or endorsed by the Complainant.

 

            Rights or Legitimate Interests

 

Any of the following circumstances, in particular but without limitation, if found by the Panel, shall demonstrate Respondent’s rights or legitimate interests to the domain name:

 

i)                    The 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; or

 

ii)                  The fact that the Respondent has been commonly known by the domain name; or

 

iii)                A legitimate non-commercial 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. [ICANN Policy: 4(c)]

 

Apart from the mere registration of the <saflock.com> domain name by Respondent, the Panel does not find any evidence of any right or legitimate interest the Respondent may have in respect of the disputed domain name. The Respondent’s use of a domain name confusingly similar to Complainant’s mark to sell goods in direct competition with 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 pursuant to Policy 4(c)(iii).[16] 

 

It has been decided in Vapor Blast Mfg. Co. v. R & S Tech. Inc, FA 96577 (Nat. Arb. Forum Feb. 27, 2001) <vaporblast.com>, that the commercial use of the domain name to confuse and divert Internet traffic was not a legitimate use of the domain name. In Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 4, 2000) (<kosmea.com>), the Panel found that Respondent had no rights in the domain name because of its intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark.

 

Furthermore, the Panel accepts the Complainant’s contention to the effect that the Respondent’s appropriation of the SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.  As it was stated in America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 12, 2000) (<icq502.com> and <icq520.com>), “it would be unconscionable to find a bona fide offering of services in a respondent’s operation of a website using a domain name which is confusingly similar to Complainant’s mark and for the same business”.[17]

 

Regarding Rule 4(c)(ii), it is not plausible for Respondent to claim that he has been commonly known by either SAFLOCK or the domain name <saflock.com>. Respondent has contended that since it uses its company name as its domain name, it has a legitimate interest in the latter[18]. Even the evidence submitted by the Respondent which consists the back cover of a product manual, a product quality assurance label, a business card copy and an exclusive distributor agreement is not sufficient to prove that Respondent has become commonly known.

 

The Panel cannot accept the view expressed by Respondent when it argues that the dispute between the parties is a legitimate trademark dispute, which would be more properly resolved in a court proceeding. It seems that Respondent makes an inappropriate analysis of the last paragraph in VeriSign Inc. v. VeneSign C.A. D2000-0303 (WIPO June 28, 2000). In that decision, the Panelist simply noted that its decision was not a substantive one on likelihood of confusion between the marks.

 

            In relation to Rule 4(c)iii), there is no indication that the Respondent is making a legitimate non-commercial or fair use of the domain name. 

 

Under the circumstances, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

Registration and Use in Bad Faith

 

Rule 4(b) of the ICANN Policy states that the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

 

i)                    Circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling […] for a valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

 

ii)                  that the domain name has been registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

 

iii)                that the domain name has been registered primarily for the purpose of disrupting the business of a competitor; or

 

iv)                that the domain is used to intentionally attempt to attract, for commercial gain, internet users to respondent’s website 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 website or location or of a product or service on respondent’s website or location.

 

The Panel finds, as above-mentioned, that the <saflock.com> domain name is so confusingly similar to Complainant’s marks that the Internet user will likely believe that there is an affiliation between Respondent and Complainant or that Complainant has at least endorsed this use of it.  In fact, when Respondent registered the domain name in dispute, which is long after Complainant had adopted and first used its trademark, Complainant already had a worldwide reputation. Thus, Respondent should have known about Complainant’s trademark at the time he registered the domain name given the Chinese registration. In Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) <perot.net>, the Panel found bad faith where “the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain”.

 

The Panel further finds that Respondent’s use of the <saflock.com> domain name to offer competing goods illustrates Respondent’s bad faith registration and use and is intentionally attempting to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use pursuant to Policy 4(b)(iv)[19].

 

The Panel cannot accept that Respondent’s use of the website prior to the initiation of the dispute may be regarded as an indication of a lack of bad faith. In both Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where Respondent has an active website that has been in use for two years and where there was no intent to cause confusion with Complainant’s website and business) and DJF Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute)(our emphasis), the respondent had at least established that it had no intent to confuse or that it had registered in good faith when the issue of prior registration came into the Panel’s scope. In the case at hand, Respondent cannot rely on this unique matter in order to prove its good faith.

 

Furthermore, the Panel, following National Association of Professional Baseball Leagues v. Zuccarini, D2002-1011 (WIPO, Jan. 21, 2003) and Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000), finds that Respondent has engaged in a “typosquatting” behavior, a practice which implicates the registration of a domain name that takes advantage of Internet users who inadvertently misspell the domain name of a trademark holder. The Panel finds that Respondent’s registration and use of a domain name that differs from Complainant’s mark by only one letter indicates “typosquatting”, which is evidence of bad faith registration and use.

 

As to Respondent’s distinction between use in bad faith and registration in bad faith, it seems again that its understanding of the matter is erroneous since the decision referred to (World Wrestling Federation Entertainment, Inc. v. Brosman, D1999-0001 (WIPO Feb. 21, 2000)) simply states that mere registration in bad faith is not sufficient although in the present case, the evidence submitted clearly demonstrates both registration and use in bad faith.

 

According to the foregoing, the Panel concludes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to Complainant’s website. 

                 

Consequently, this Panel finds that Respondent has registered and used the disputed domain name in bad faith.

 

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <saflock.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Hugues G. Richard, Panelist
Dated: June 23, 2003

 

 

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