Megger Group Limited v. Lindsay Doyle / Rx Webhosting
Claim Number: FA1509001638233
Complainant is Megger Group Limited (“Complainant”), represented by Brian S.S. Auerbach of PEPPER HAMILTON LLP, Pennsylvania, USA. Respondent is Lindsay Doyle / Rx Webhosting (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <meggerinstruments.com>, <avobiddlemegger.com>, <avobiddle.com>, <avomegger.com>, and <meggerrepair.com>, registered with Tucows Domains Inc.
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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 17, 2015; the Forum received payment on September 17, 2015.
On September 17, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <meggerinstruments.com>, <avobiddlemegger.com>, <avobiddle.com>, <avomegger.com>, and <meggerrepair.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 September 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 8, 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@meggerinstruments.com, postmaster@avobiddlemegger.com, postmaster@avobiddle.com, postmaster@avomegger.com, postmaster@meggerrepair.com. Also on September 18, 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 October 7, 2015.
Additional Submissions were received on October 27, November 2 and November 5, 2015.
On October 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the MEGGER and AVO marks through registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 64,980 for MEGGER, registered on September 3, 1907 and 374,074 for AVO, registered on January 2, 1940). Respondent’s <meggerinstruments.com>, <avobiddlemegger.com>, <avobiddle.com>, and <meggerrepair.com> domain names are confusingly similar to the Complainant’s marks because each contains one or more of the marks combined with descriptive terms and the generic top-level domain (“gTLD”) “.com.” The <avomegger.com> is confusingly similar to Complainant’s marks because it contains both marks entirely combined with the gTLD “.com.”
Complainant contends Respondent is not commonly known by the disputed domain names because the WHOIS information provides no such identification and because Complainant has not authorized Respondent to use its marks. Respondent fails to use the domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use, because each resolving website contains a webpage offering unauthorized repair services related to Complainant’s products, which suggests an affiliation between Complainant and Respondent.
Complainant contends Respondent registered and uses the <meggerinstruments.com> and <avobiddlemegger.com> domain names in bad faith because it has offered them for sale to Complainant in excess of its out of pocket expenses for the domains. Respondent uses each domain name in bad faith because it operates the domains in a manner designed to suggest an association between Complainant and Respondent in order to attract Internet users for commercial gain.
B. Respondent
Respondent contends Complainant’s marks are not confusingly similar or identical to the <meggerinstruments.com>, <avobiddlemegger.com>, <avobiddle.com>, <avomegger.com>, and <meggerrepair.com> domain names because each domain name represents a one word name.
Respondent contends it uses the domain names to offer a bona fide offering of goods or services because it uses each domain to offer repair services for products sold by Complainant, but for which Complainant no longer offers such repair services. Each domain contains a disclaimer indicating that Respondent is not associated with Complainant.
Respondent contends it offered the <meggerinstruments.com> and <avobiddlemegger.com> domain names for sale to Complainant only in response to Complainant’s attempted intimidation of Respondent to give up ownership of the domains. Respondent contends it does not use the domain names in bad faith because it offers a legitimate repair service and does not hold itself out as being associated with Complainant.
C. Additional Submissions
At the request of the Panel, Complainant submitted additional proof of trademark ownership and chain of title.
Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain names at issues shall be transferred to the Complainant.
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.
Complainant alleges it has rights in the MEGGER and AVO marks through its registrations with the USPTO (Reg. No. 64,980 for MEGGER, registered on September 3, 1907 and 374,074 for AVO, registered on January 2, 1940). Complainant has provided the registration for MEGGER in Annex 1 and for AVO in Annex 2, and supplemental documentation of current ownership. Registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant has satisfied Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the marks by registering the marks with the USPTO); see also Remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Form Feb 21, 2008) (finding the complainant held the trademark rights to the federally registered mark by virtue of an assignment).
Complainant alleges that Respondent’s <meggerinstruments.com>, <avobiddlemegger.com>, <avobiddle.com>, and <meggerrepair.com> domain names are confusingly similar to Complainant’s marks because each contains one or more of the marks combined with descriptive terms and the gTLD “.com.” Complainant urges that the terms “instruments” and “repair” are descriptive of its business operations, because Complainant’s business involves the production and sale of various electronic instruments, and the repair service of those instruments. Complainant contends that the term “Biddle” refers to the “James G. Biddle Company,” which Complainant describes as “an old, importer, manufacturer and distributor of Complainant’s products who has since merged business with Complainant.” Past panels have found that descriptive terms and gTLDs are not enough to remove domain names form the realm of confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel finds that the <meggerinstruments.com>, <avobiddlemegger.com>, <avobiddle.com>, and <meggerrepair.com> domain names are confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <avomegger.com> is confusingly similar to Complainant’s marks because it contains both marks entirely, combined with the gTLD “.com.” See 3M Co. v. Silva, FA 1429349 (Nat. Arb. Forum Mar. 30, 2012) (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to the complainant’s LITTMANN and CARDIOLOGY III marks); see also McGraw-Hill Co., Inc. v. Umbeke Membe, FA 1223759 (Nat. Arb. Forum Oct. 29, 2008) (finding that the <glencoemcgrawhill.com> domain name is confusingly similar to the complainant’s GLENCOE and MCGRAW-HILL marks under Policy ¶ 4(a)(i)). Respondent’s <avomegger.com> domain name is confusingly similar to Complainant’s MEGGER and AVO marks pursuant to Policy ¶ 4(a)(i).
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006.
Complainant alleges that Respondent is not commonly known by the disputed domain names because the WHOIS information provides no such identification and because Complainant has not authorized Respondent to use its marks. The WHOIS information lists “Lindsay Doyle” as Registrant for each domain name. Past panels have found, in similar circumstances, that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Accordingly, the Panel find that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use, because each resolving website contains a webpage offering unauthorized repair services related to Complainant’s products, which suggest an affiliation between Complainant and Respondent. Complainant has provided, in Annexes 8-12, screenshots of each resolving website to demonstrate this use. Complainant has also provided, in Annex 14, e-mail correspondence with a third party that was evidently led to believe that Respondent was affiliated with Complainant due to Respondent’s use of the <meggerinstruments.com> domain name. Past panels have found that using a domain to offer services in competition with a complainant suffices to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004). A competitive offering of services fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant alleges Respondent registered and uses the <meggerinstruments.com> and <avobiddlemegger.com> domain names in bad faith because it has offered them for sale to Complainant in excess of its out of pocket expenses for the domains. Complainant has provided correspondence, in Annex 13, in which Respondent offers to sell the <meggerinstruments.com> domain name for $105,000.00 and the <avobiddlemegger.com> domain name for $35,000.00. Past panels have found offering domain names for sale in excess of out of pocket expenses sufficient to show bad faith under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Prijic, FA 112639 (Nat. Arb. Forum June 27, 2002) (“[I]n determining whether Respondent has sought consideration in excess of its out-of-pocket costs, the Policy makes clear that only costs related to the domain name are to be considered, and not those related to the creation or maintenance of the connected website”); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)). Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(i).
Complainant alleges that Respondent uses each domain name in bad faith because it operates the domains in a manner designed to suggest an association between Complainant and Respondent in order to attract Internet users for commercial gain. Complainant has provided, in Annexes 8-12, screenshots of each of Respondent’s domain names, as well as, in Annex 14, e-mail correspondence with a third party that was evidently led to believe that Respondent was affiliated with Complainant due to Respondent’s use of the <meggerinstruments.com> domain name. Past panels have found that using domains in a way suggesting a connection between a mark holding complainant and the resolving website constitutes bad faith use pursuant to Policy ¶ 4(b)(iv). See Tower Labs. Ltd. v. Seltzer, FA 791325 (Nat. Arb. Forum Oct. 16, 2006) (concluding that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). The Panel finds that Complainant established that Respondent uses the domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <meggerinstruments.com>, <avobiddlemegger.com>, <avobiddle.com>, <avomegger.com>, and <meggerrepair.com> domain names be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: November 11, 2015
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