Tyco Fire & Security GmbH v. Brian Bogan
Claim Number: FA1408001576720
Complainant is Tyco Fire & Security GmbH (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Brian Bogan (“Respondnt”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sensormatic-hook.net>, which is registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on August 25, 2014; the National Arbitration Forum received payment on August 29, 2014.
On August 25, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <sensormatic-hook.net> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, 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 August 29, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sensormatic-hook.net. Also on August 29, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 September 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 holds a registration for the SENSORMATIC trademark, which is on file with the United States Patent and Trademark Office ("USPTO") (Registry No. 3,354,873, registered Feb. 12, 1974).
Complainant uses the SENSORMATIC mark in connection with the marketing of merchandise security systems.
Respondent registered the <sensormatic-hook.net> domain name on or about March 29, 2014.
The domain name is confusingly similar to Complainant’s SENSORMATIC mark.
Respondent has not been commonly known by the disputed domain name.
Complainant has not authorized Respondent’s use of the SENSORMATIC mark.
Respondent is not using the domain name for a bona fide offering of goods or services or for a legitimate or noncommercial use.
The domain name resolves to a website purporting to sell a SENSORMATIC branded product, which is either stolen or counterfeit, and is being offered for the purposes of aiding and inducing shoplifting and other forms of theft by attempting to evade the SENSORMATIC security tags.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name is an attempt to mislead Internet users as to the possibility of Complainant’s affiliation with the domain name.
Respondent knew of Complainant and its rights in the SENSORMATIC mark when it registered the contested domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the SENSORMATIC trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark auth-ority, the United States Patent and Trademark Office ("USPTO"). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding that a trademark registration with the USPTO was adequate to establish rights in a UDRP complainant under Policy ¶ 4(a)(i)).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that the <sensormatic-hook.net> domain name is confusingly similar to complainant’s SENSORMATIC trademark. The domain name contains the entire mark, with only the addition of the generic top-level domain (“gTLD”) (“.net”), a hyphen and the generic term “hook,” which relates to an aspect of Complainant’s business. These alterations of the mark, made in forming the do-main name, do not save it from the realm of confusing similarity under the stand-ards of the Policy. See, for example, Google Inc. v. Private Person / Andrey Skorodubov, FA 1506184 (Nat. Arb. Forum Jul. 28, 2013) (finding, under Policy ¶ 4(a)(i), that a disputed domain name was confusingly similar to a UDRP com-plainant’s mark regardless of the addition to the mark of hyphens, a descriptive term and a gTLD).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <sensormatic-hook.net> domain name, and that Complainant has not authorized Respondent’s use of the SENSORMATIC trademark. Moreover, the pertinent WHOIS information identi-fies the registrant of the domain name only as “Brian Bogan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (finding that a UDRP respondent was not commonly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that the domain name resolves to a website purporting to sell a SENSORMATIC branded product, which is either stolen or counterfeit, and which is being offered for the purposes of aiding and inducing shoplifting and other forms of theft by attempting to evade SENSORMATIC security tags. This employment of the do-main name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate or noncommercial use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002):
Respondent’s use of the confusingly similar domain name to sell counterfeit versions of Complainant’s products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
See also Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (finding that a UDRP respondent’s use of a domain name to operate a website promoting an illegal food supplement was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s registration and use of the <sensormatic-hook.net> domain name, as alleged in the Complaint, shows Re-spondent’s bad faith under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008), a panel there finding, under Policy ¶ 4(b)(iv), bad faith registration and use of a domain name where a respondent attempted to gain commercially by creating confusion as to possibility of a UDRP complainant’s connection with a resolving website by selling counterfeit products.
Further, it is clear from the record that Respondent knew of Complainant and its rights in the SENSORMATIC trademark when it registered the <sensormatic-hook.net> domain name. Under Policy ¶ 4(a)(iii), this too is proof of Respond-ent’s bad faith in the registration and use of the domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014), finding, on the point of bad faith:
the Panel here finds actual knowledge through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <sensormatic-hook.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 26, 2014
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