Wilden Pump & Engineering LLC v. Tara Low
Claim Number: FA1501001598361
Complainant is Wilden Pump & Engineering LLC (“Complainant”), represented by Victor K. Sapphire of Michelman & Robinson, LLP, California, USA. Respondent is Tara Low (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wildenpumps.org>, registered with eNom, Inc. (the “Disputed Domain Name”).
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 6, 2015; the Forum received payment on January 19, 2015.
On January 06, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <wildenpumps.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the names. 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 January 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2015 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@wildenpumps.org. Also on January 26, 2015, 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 February 17, 2015.
A timely Additional Submission was received from Complainant on February 23, 2015, and found compliant.
On March 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kendall C. Reed as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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
The Complainant is a manufacturer and distributor of industrial pumps, parts and peripheral accessories covering a broad range of applications and industries including energy, chemical, water and wastewater, military and marine, among others.
The Complainant is the owner of U.S. Trademark Registration No. 1,462,518 and European Community Trademark Registration No. 000064964 for the mark WILDEN in connection with diaphragm pumps, pump diaphragms and parts and accessories for pumps. The Complainant has been using the WILDEN and WILDEN PUMP marks since long before the registration of the Disputed Domain Name.
The "whois" registrant information for the Disputed Domain Name reveals that the Respondent is the registrant of the Disputed Domain Name, WILDENPUMPS.ORG.
The Respondent has used the Disputed Domain Name in connection with an unauthorized web page featuring unlicensed photographs and information about Complainant and its products, and advertising which generates revenue for the Respondent.
On its face, the Disputed Domain Name is confusingly similar to the Complainant's WILDEN and WILDEN PUMP marks; the Disputed Domain Name “WILDENPUMPS.ORG” consists of the WILDEN and WILDEN PUMP marks in their entirety with the addition of the top level domain “.org”.
The Respondent has no legitimate interest in the use of the Disputed Domain Name. The Respondent has no connection with the Complainant or its parent company and is not authorized to use the Complainant's trademark as a trade name or otherwise in connection with its business. Further, the Respondent is not, and has never been, commonly known by the names WILDEN or WILDEN PUMP.
The Respondent’s use of the Disputed Domain name to direct internet traffic to the website operated by the Respondent constitutes an improper use of the Disputed Domain Name to attract Internet users for commercial gain by creating a likelihood of confusion, and thus constitutes bad faith. Moreover, the Respondent’s manner of use, i.e., as an ostensibly official web site featuring the Complainant’s product descriptions and photographs but not otherwise disclaiming any association, authorization or imprimatur, only exacerbates the problem of the Respondent’s bad faith use when seen as a driver of traffic to attract viewers to the revenue-generating advertising featured at the site.
B. Respondent
The Respondent registered and intended to use the Disputed Domain Name to start her own internet business, including the generation of income from the Website to which the Disputed Domain Name directs. Toward this end, the Respondent employed a third party consultant to assist in establishing a website and to assist in driving Internet traffic to the site. This third party consultant suggested that the Respondent use the Disputed Domain Name and that this would yield Internet traffic to the site.
The Respondent had the website content reviewed by a person knowledgably about engineering and pumps.
The Respondent included within the website a disclaimer that she was not associated with the Complainant, and the Respondent further included within the website suggestions for the benefit of potential visitors about how the Complainant might be contacted directly.
The Respondent believed strongly in the Complaint’s products. The Respondent attempted to contact the Complainant for the purpose of suggesting that the Respondent would be willing to become an agent for the Complainant for purposes of facilitating distribution of Complainant’s product on a drop-ship basis. Respondent further attempted to contact the Complainant to obtain links to the Complainant’s suppliers or sales force.
In registering and using the Disputed Domain Name the Respondent did not intend to act against any rules or regulations.
C. Complainant’s Additional Submission
In the Response, the Respondent admits to the bad faith use of the Disputed Domain Name. The Respondent admits to setting up and operating a website using the Disputed Domain Name. The Respondent admits that this website is commercial in nature. The Respondent admits to attempting to attract Internet users to the Respondent’s Website by creating a likelihood of confusion with the Complainant’s WILDEN mark.
1. The Complainant is the owner of U.S. Trademark Registration No. 1,462,518 and European Community Trademark Registration No. 000064964 for the mark WILDEN in connection with diaphragm pumps, pump diaphragms and parts and accessories for pumps (the “Complainant’s Mark”).
2. Respondent registered the Disputed Domain Name on or about September 20, 2011.
3. The Complainant’s Mark was registered before the Disputed Domain Name was registered.
4. The Disputed Domain Name generates revenue for the Respondent.
5. The Respondent hired a third party consultant to assist the Respondent to direct Internet Traffic to the website to which the Disputed Domain Name resolves ( the “Respondent’s Website”), and this third party consultant suggested to the Respondent that she use the expression “wildenpumps” as a domain name so as to drive Internet traffic to the Respondent’s website.
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.
The Complainant has rights to Complainant’s Mark for purposes of the Policy. Complainant has registered the Complainant’s Mark with the USPTO (e.g., Reg. No. 1,462,518, registered Oct. 27, 1987) and OHIM (e.g., Reg. No. 000064964, registered Mar. 10, 1998). Registrations with the USPTO and OHIM are both sufficient to establish rights in a trademark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); Direct Mktg. Co. S.p.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding Complainant’s European Union Office for the Harmonization of the Internal Market (“OHIM”) trademark registration sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶ 4(a)(i)).
The Disputed Domain Name is confusingly similar to Complainant’s Mark. The Disputed Domain Name encompasses the entirety of Complainant’s Mark along with the generic word “pumps” and the gTLD “.org.” See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”); Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Complainant establishes a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. 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.”).
The Complainant demonstrates that the Respondent is not 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). Respondent further demonstrates by way of its submission that the Respondent is not authorized to use Complainant’s Trademark as a domain name for the Respondent.
Respondent’s assertion that its actions were proper and appropriate with respect to its use of the Disputed Domain Name is unpersuasive. Whereas it can be appropriate to generate click-through revenues from a website, it is not a bona fides offering of goods or services under the Policy to do so using another’s trademark in bad faith (the issue of bad faith is discussed below). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that 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).”); see also G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)).
Policy ¶ 4(b)(iv) reads in pertinent part:
“For the purpose of Paragraph 4(a)(iii), the following circumstances…, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site… by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site… or of a product or service on your web site….
The Respondent’s intent for the Respondent’s Website was commercial gain. In establishing the website, the Respondent was seeking a business opportunity and was seeking to obtain click-through revenue from advertising.
The Respondent intentionally attempted to attract Internet users to Respondent’s Website. The Respondent hired a third party consultant for the purpose of maximizing traffic to its website and followed this third party consultant’s advice in its efforts to do so.
The means of attracting Internet users to the Respondent’s Website was the use of Complaint’s Trademark, as was suggested by the third-party consultant. Such use of the Complainant’s Trademark for this purpose creates the likelihood of confusion on the part of Internet users as to the source, sponsorship, affiliation, or endorsement of Respondent’s Website.
The Respondent’s argument that its use of the Complainant’s Mark is acceptable because the Respondent presented a disclaimer on the Respondent’s Website to the effect that the Respondent was not affiliated with the Complainant is unpersuasive; the relevant confusion lies in the Disputed Domain Name itself.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRNATED.
Accordingly, it is Ordered that the <wildenpumps.org> domain name be TRANSFERRED from the Respondent to the Complainant
Kendall C. Reed, Panelist
Dated: March 17, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page