Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC.
Claim Number: FA1409001581942
Complainant is Fadal Engineering, LLC (“Complainant”), represented by Dean W. Amburn of Howard & Howard Attorneys PLLC, Michigan, USA. Respondent is DANIEL STRIZICH / INDEPENDENT TECHNOLOGY SERVICE INC. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fadaldepot.com>, registered with FastDomain 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2014; the National Arbitration Forum received payment on September 26, 2014.
On September 28, 2014, FastDomain Inc. confirmed by e-mail to the National Arbitration Forum that the <fadaldepot.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 October 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@fadaldepot.com. Also on October 3, 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 October 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
1.Complainant has rights in the FADAL mark via trademark registrations with several trademark agencies worldwide, including the United States Patent and Trademark Office ("USPTO"). See Reg. No. 1,976,751 registered May 28, 1996. Since 1974, Complainant has used the FADAL mark for computer controls in the operation of machine tools. The disputed domain name <fadaldepot.com> is confusingly similar to the FADAL mark as the addition of the generic term “depot” as well as the generic top-level domain “.com” fail to distinguish the name from the otherwise included mark.
2. Respondent is not commonly known by the “Fadal” name. Further, Complainant is not affiliated with Respondent. Complainant sells its own parts and machines, and relies on authorized distributors, which Respondent is not. Respondent is not making a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the disputed domain name. The disputed domain name resolves to a website in which Respondent attempts to mislead users into believing it is affiliated with Complainant. Namely, resolving page states, “Your Fadal Machine Parts Depot,” which is “Powered by Independent Technology Services.” Such use does not amount to nominative fair use as Respondent falsely suggests affiliation with Complainant.
3. Respondent’s bad faith is evidenced by the use of the domain name to attract users to its own website for commercial gain. Respondent creates a likelihood of confusion as to Complainant’s affiliating with Respondent by attempting to disguise itself as an authorized partner of Complainant in an effort to sell products at the resolving website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Fadal Engineering, LLC, of Troy, MI, USA. Complainant is the owner of numerous domestic and international registrations for the mark FADAL based on continual use from at least as early as 1984 in connection with its provision of goods and services related to computer controls for the operation of machine tools.
Respondent is DANIEL STRIZICH / INDEPENDENT TECHNOLOGY SERVICE INC., of Chatsworth CA, USA. Respondent’s registrar’s address is listed as Orem, UT, USA. Respondent registered the disputed domain name on or about January 26, 2014.
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.”).
Complainant claims rights in the FADAL mark via trademark registrations with several trademark agencies worldwide, including the United States Patent and Trademark Office ("USPTO"). See Reg. No. 1,976,751 registered May 28, 1996. Since 1974, Complainant has used the FADAL mark in connection with computer controls for operation of machine tools. The Panel finds that Complainant’s trademark registrations, which include USPTO recognition, evinces Policy ¶ 4(a)(i) rights in the FADAL mark. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office”).
Complainant further argues the disputed domain name <fadaldepot.com> is confusingly similar to the FADAL mark as the addition of the generic term “depot” as well as the generic top-level domain (“gTLD”) “.com” fail to distinguish the name from the otherwise included mark. Previous panels have found confusing similarity where the respondent has relied on another’s mark in a domain name that also includes a generic term and gTLD. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see alsoTrip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel here finds the <fadaldepot.com> domain name confusingly similar to the FADAL mark pursuant to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant asserts that Respondent is not commonly known by the “Fadal” name. The Panel notes that the WHOIS record identifies “Daniel Strizich” of “Independent Technology Service Inc.” as registrant. Further, Complainant states it is not affiliated with Respondent. Complainant contends that it sells its own parts and machines, and also relies on authorized distributors, which Respondent is not. Because the Respondent has failed to provide evidence contradicting these allegations, the Panel finds that the record fails to support the position that Respondent is commonly known by the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel here finds that Complainant has satisfied Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent is not making a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the disputed domain name. Complainant notes the disputed domain name resolves to a website in which Respondent attempts to mislead users into believing it is affiliated with Complainant. Complainant points out that the resolving page states, “Your Fadal Machine Parts Depot Powered by Independent Technology Services,” and features Complainant’s parts for sale. The Panel finds that Respondent’s use of the <fadaldepot.com> domain name to sell products related to Complainant without authorization does not amount to 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). See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims that Respondent has engaged in Policy ¶ 4(b)(iv) bad faith, as evidenced by the use of the domain name to attract users to its own website for commercial gain. Complainant contends Respondent creates a likelihood of confusion as to Complainant’s affiliation with Respondent by attempting to disguise itself as an authorized distributor of Complainant in an effort to sell products at the resolving website. Prior panels have found evidence of bad faith in similar circumstances. For example, in Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000), the panel found the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods. The Panel here finds that Respondent has engaged in bad faith use and registration pursuant to Policy ¶ 4(b)(iv).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <fadaldepot.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 13, 2014
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