Tyco International Services GmbH v. TYCOINT SCOT
Claim Number: FA1411001590501
Complainant is Tyco International Services GmbH (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is TYCOINT SCOT (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tycointl.com>, registered with ENOM, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2014; the National Arbitration Forum received payment on November 24, 2014.
On November 18, 2014, ENOM, INC. confirmed by email to the National Arbitration Forum that the <tycointl.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 November 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 15, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tycointl.com. Also on November 25, 2014, the Written Notice of the Complaint, notifying Respondent of the email 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 December 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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
Complainant is a venture created by TE Connectivity (formerly Tyco Electronics) and Tyco International, whose ultimate parent company is Tyco International Ltd. Complainant and its predecessors in interest have owned the TYCO trademark for many years, and have used the mark continuously in connection with the design, manufacture, and sale of products and the advertising, marketing, and operation of their businesses. For example, Tyco International’s predecessor company was founded in the United States in 1960 and has become an internationally-renowned developer of security and fire detection and suppression equipment, generating more than US$17 billion per year in total revenue over the past four years. Complainant asserts that its marks have become famous and widely recognized around the world. Complainant’s TYCO mark is the subject of trademark registrations in the United States, the European Community, and elsewhere.
Complainant contends that the disputed domain name <tycointl.com> is confusingly similar to Complainant’s TYCO mark. Complainant states that TYCO is an arbitrary term used only as a brand name, with no generic meaning in any language known to Complainant; the disputed domain name adds only the generic term “intl,” a common abbreviation for “international,” to the mark.
Complainant contends further that Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. Complainant accuses Respondent of using the domain name to send emails to various customers of Tyco International as part of an attempt to impersonate Complainant and to defraud such customers. Complainant states that Respondent is not commonly known by the disputed domain name or the TYCO mark, and that Respondent is intentionally using the mark without consent from Complainant. Complainant alleges that Respondent is not using the domain name for a legitimate business or a legitimate noncommercial or fair use, and that Respondent’s use has tarnished and diluted Complainant’s mark. Complainant also notes that Respondent has listed false or non-functioning information in the whois record for the disputed domain name, including a fictitious name and a nonexistent physical address, and that even this information was made available only after the registrar removed the privacy protection after the Complaint in this proceeding was filed.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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 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.”).
The disputed domain name is identical to Complainant’s registered trademark, but for the addition of the term “intl,” a common abbreviation for the generic term “international,” and the “.com” top-level domain. These additions do not substantially diminish the similarity with Complainant’s mark. See, e.g.,
ALDI GmbH & Co. KG v. zhou xiaolei, D2014-0957 (WIPO July 28, 2014) (finding <aldi-intl.com> confusingly similar to ALDI). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant’s mark, and has been used to impersonate Complainant in email messages in connection with a fraudulent scheme aimed at Complainant’s customers. See, e.g., SHUAA Capital psc v. SHUAA CAPITAL, FA 1581256 (Nat. Arb. Forum Oct. 29, 2014) (finding lack of rights or legitimate interests in similar circumstances); ADP, Inc. v. Joe Collins / iba, FA 1551312 (Nat. Arb. Forum June 18, 2014) (same). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site 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] web site or location or of a product or service on [Respondent’s] web site or location.”
Respondent’s registration of a domain name obviously intended to create confusion with Complainant, together with its use of that domain name in connection with a fraudulent scheme involving email messages sent to third parties in an attempt to exploit such confusion, is indicative of bad faith under these provisions of the Policy. See, e.g., SHUAA Capital psc, supra; ADP, Inc., supra. The false whois registration data furnished by Respondent lends further support to this conclusion. See, e.g., SHUAA Capital psc, supra; ADP, Inc., supra. The Panel finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tycointl.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 22, 2014
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