Honeywell International Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1510001642465
Complainant is Honeywell International Inc. (“Complainant”), represented by Peter S. Sloane of Leason Ellis LLP, New York, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alarmnetdirect.com> ('the Domain Name'), registered with Internet.bs Corp.
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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 14, 2015; the Forum received payment on October 14, 2015.
On October 16, 2015, Internet.bs Corp. confirmed by e-mail to the Forum that the <alarmnetdirect.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 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@alarmnetdirect.com. Also on October 19, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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’s contentions can be summarised as follows:
The Complainant leads the security industry in alarm communications technology. ALARMNET is a family of communications services designed specifically for the security industry. The Complainant created a powerful convenient web based solution exclusively for its customers which it branded under the ALARMNET DIRECT name and mark. The Complainant owns a US registered trade mark for ALARMNET for radio communications services and has used the mark since 1986. Through long and widespread use the Complainant has developed substantial goodwill in the mark ALARMNET and ALARMNET DIRECT and owns the domain name alarmnet.com.
As of September 16, 2014 the Domain Name was parked and its web site offered it for sale. Complainant made an offer to purchase the Domain Name through SEDO.com. The offer expired without a response. However the web site and Whois information was changed shortly afterwards stating on the Whois 'contact the owner by e mail only.'
The Complainant contacted the Respondent by e mail offering to buy the Domain Name. No response was received, however a disclaimer was added to the web site attached to the Domain Name indicating that the sponsored listings were served automatically by a third party and in the case of trade mark issues the domain name owner should be contacted directly.
Complainant never authorised the Respondent to registered or use the Domain Name.
The Domain Name is identical to the Complainant’s mark ALARMNET DIRECT as the presence of a gTLD is irrelevant to whether a domain name is identical or confusingly similar.
Respondent has not been commonly known by the Domain Name.
Respondent has been using the Domain Name as a parked web site that offers click though links to third party web sites which is not use in connection with a bona fide offering of goods and services or a legitimate non-commercial or fair use. Respondent has no rights or legitimate interests in the Domain Name.
Respondent adopted the Domain Name to drive traffic to its web site knowing that others searching the Internet would be confused into believing the Respondent is Complainant or affiliated with the Complainant. The Domain Name was used to link to third party sites offering, inter alia, alarm and security services and systems. The indication on the web site that the advertisements are served automatically by a third party does little to dispel confusion. The web site has been used to offer software which may include malware or a virus.
But for the Respondent's registration of the Domain Name Complainant would have registered it.
The use of a privacy service in a commercial context also indicated bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant operates in the security industry in alarm communications technology. ALARMNET is a family of communications services offered by the Complainant designed specifically for the security industry. The Complainant created a web based solution exclusively for its customers which it branded under the ALARMNET DIRECT name and mark. The Complainant owns a US registered trade mark for ALARMNET for radio communications services and has used the mark since 1986. Through long and widespread use the Complainant has developed substantial goodwill in the mark ALARMNET and ALARMNET DIRECT and owns the domain name alarmnet.com.
As of September 16, 2014 the Domain Name was parked and its web site offered it for sale. The Domain Name was used to link to third party sites offering, inter alia, alarm and security services and systems.
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.”).
Identical or Confusingly Similar
The Domain Name consists of the Complainant's registered trade mark ALARMNET, the generic word 'direct' and the gTLD .net. Since use of the generic word 'direct' and the gTLD .com does not serve to distinguish the Domain Name from the ALARMNET mark the Panel holds that the Domain Name is confusingly for the purposes of the Policy with a mark in which the Complainant has rights. See Mead Johnson & Company LLC v Chau, FA 1497581 (Nat. Arb. Forum Jun. 18, 2013) (holding that the addition of the generic term 'coupons' and a gTLD did not remove the disputed domain name from the realm of confusing similarity) See also Red Hat Inc. v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name form the mark).
The Panel also notes that the Complainant has made use of the name 'Alarmnet Direct' for its security services and, therefore, bearing in mind the Red Hat case above the Domain Name would appear to be identical for the purposes of the Policy to a mark in which the Complainant has common law rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Respondent has not responded and given any reasons for its registration and use of the Domain Name. Instead the Domain Name has been used to link to a pay-per-click website linking to other third party commercial web sites and competitors of the Complainant. The Panel notes Compania Mexicana de Aviacion, SA de CV v Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the Respondent had not demonstrated a bona fide offering of goods and services or a legitimate non-commercial or fair use when the web site resolving from the disputed domain name displays links to travel products and services which directly competed with Complainant’s business. The Panel thus concludes that there is no rights or legitimate interests in the Domain Name under para 4 (c) (i) or (iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alarmnetdirect.com> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: November 24, 2015
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