The Lincoln Electric Company v. Assistant Mailroom Clerk Trainee / EXISTech Corporation
Claim Number: FA1611001704079
Complainant is The Lincoln Electric Company (“Complainant”), represented by Thomas M. Williams of Ulmer & Berne, LLP, Illinois, USA. Respondent is Assistant Mailroom Clerk Trainee / EXISTech Corporation (“Respondent”), represented by Mary M Cheng of Osler, Hoskin & Harcourt LLP, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <weartech.com>, registered with Moniker Online Services LLC.
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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 21, 2016; the Forum received payment on November 21, 2016.
On November 23, 2016, Moniker Online Services LLC confirmed by e-mail to the Forum that the <weartech.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC 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 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2016 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@weartech.com. Also on November 29, 2016, 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 December 16, 2016
On December 27, 2016 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Calvin A. Hamilton 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
Complainant is a manufacturer of welding, cutting, and joining products. Complainant has associated with its products and services the WEARTECH mark and has registered the mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,374,586, registered July 30, 2013), thereby establishing rights. See Compl., at Attached Annex E. Complainant also has rights that date back more than 20 years in the United States. Respondent’s <weartech.com> domain name is identical to the mark, save for the addition of the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in <weartech.com>. Respondent is not commonly known by <weartech.com> pursuant to the WHOIS of record. Further, Respondent has failed to use <weartech.com>, which does not establish any bona fide offering of goods or services or any legitimate noncommercial or fair use. See Compl., at Attached Annex K (displaying, “This site can’t be reached,” and, “weartech.com’s server DNS address could not be found”).
Respondent registered and used <weartech.com> in bad faith. Respondent has provided false WHOIS information, providing a non-existent mailing address, “Facility Garden, 111 Shaukiwan Road, Hong Kong Ontario M5S 3G4 CA.” Compl., at Attached Annex D. Respondent has also inactively held <weartech.com>, which also constitutes bad faith under Policy ¶ 4(a)(iii). Additionally, Respondent failed to reply to Complainant’s cease and desist letter, which adds to the presumption of bad faith.
B. Respondent
Respondent claims that Dr. Mann is the principal of EXISTech Corp., and is an inventor of wearable computing products, and sold the first wearable computer in 1974, and has used the trade name and mark “WEARTECH” since at least as early as that year. Respondent has maintained ownership and an active website through <weartech.com> since its initial registration in 1996. Respondent’s <weartech.com> registration predates Complainant’s rights in the WEARTECH mark.
Respondent has rights and legitimate interests in <weartech.com>. Respondent did an Opening Talk for MIT Media Lab Wearable Technologies Group in 1996. See Resp., at Attached Annexes D–E. Respondent’s chronology of professional activities are laid out in Attached Annex F. Respondent’s company, EXISTech Corp. (incorporated in 2000), features goods that include wearable cameras, a form of “wearable technology.” See Resp., at Attached Annex G. The wearable camera technology was also sold at a conference in 2005. See Resp., at Attached Annex I. Respondent has indeed used WEARTECH as a brand in launching some of its products, even using it as its identifier or pseudonym: weartech@yahoo.com. The trademark WEARTECH with the “TM” symbol has appeared on the bottom of its letterhead, EXISTech Corp., for years, and Respondent has used checks and letterhead with the name. See Resp., at Attached Annex J. Accordingly, Respondent—specifically Dr. Mann, principal of EXISTech Corp.—is commonly known by and has done business pursuant to the WEARTECH mark and the <weartech.com> domain name. Further, Respondent engages in commercial use through the domain name, brand and identifier, and in the email address weartech@yahoo.com, constituting a bona fide and legitimate commercial use.
Respondent did not register and use <weartech.com> in bad faith. Respondent has not violated any of the Policy ¶ 4(b) factors: Respondent has not tried to sell the domain name, Respondent has not registered the domain name to prevent Complainant from reflecting its mark in a domain name, Respondent’s business has no connection or association with Complainant’s business or welding electrodes, and Respondent has never attempted to attract for commercial gain Internet users to Respondent’s website or other online location by creating confusion. There has been no false contact information because Respondent has a legitimate business address in Ontario and the address in Hong Kong was valid for Dr. Mann as well. Further, Respondent did not respond to the demand letter sent by Complainant because Dr. Mann moved from Hong Kong to Palo Alto, California. Additionally, Respondent has consistently used <weartech.com> for the past several decades with an active website.
Complainant has engaged in reverse domain-name hijacking based on its attempt to obtain the disputed domain name which predates Complainant’s rights in the WEARTECH mark.
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 is a manufacturer of welding, cutting, and joining products. Complainant claims it has associated with its products and services the WEARTECH mark and has registered the mark with the likes of the USPTO (e.g., Reg. No. 4,374,586, first use January 1991, filed April 28, 2012, registered July 30, 2013), and asserts its rights pursuant to this, and other more recent registrations. See Compl., at Attached Annex E. USPTO registrations confer rights under Policy ¶ 4(a)(i), and where a valid registration exists, rights are seen to date back to the filing date of record. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the USPTO); see also Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA 1591638 (Forum Jan. 16, 2015) (finding Complainant has rights in the LENOVO mark dating back to the Feb. 20, 2003 filing date with the USPTO as the trademark application was ultimately successful).
Accordingly, the Panel appreciates Complainant’s rights in the WEARTECH mark that date back to April 28, 2012.
Complainant also asserts rights that date back more than 20 years in the United States. The Panel notes that the first use date alleged in the USPTO registration listed above is January of 1991. However, it has been agreed that first use listings are insufficient in substantiating common law rights; rather, common law rights are proven through media recognition, advertising expenditure, consumer recognition, etc. See Thermo Holdings, LLC v. Park KyeongSook, FA1608001690428 (Forum Sept. 25, 2016) (“The single piece of corroborative information is from the USPTO registration which carries a first use in commerce date for the trademark of September 16, 2005, but that is not a substitute for proof of continuous use and acquired secondary meaning.”); see also Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
In support of common law rights, Complainant has provided Annex I, which is the home page of its <weartech.net>. The reference to the <weartech.net> home page is essentially the extent of Complainant’s evidence speaking to rights under the common law. Complainant does not provide any proof of continuous use and acquired secondary meaning, such as, length and amount of sales under the mark, or nature and extent of advertising, consumer surveys, etc.; evidence which would help the Panel to appreciate Complainant’s assertion of common law rights.
The Panel therefore does not agree that Complainant has established any rights which date back to any time prior to April 28, 2012.
Next, Complainant argues that Respondent’s <weartech.com> domain name is identical to the mark, save for the addition of the “.com” gTLD. The addition of “.com” has been deemed irrelevant under the Policy. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
The Panel agrees that Respondent’s <weartech.com> domain name is identical to the WEARTECH mark.
While Respondent argues that its registration of <weartech.com> predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether <weartech.com> is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Rights or Legitimate Interests: Policy ¶ 4(a)(ii).
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 (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 (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.”).
Complainant argues that Respondent lacks rights and legitimate interests in <weartech.com>. Complainant contends that Respondent is not commonly known by <weartech.com> pursuant to the WHOIS of record. Panels look to a totality of circumstances in considering whether a respondent is commonly known by a domain name, but generally consider a complainant’s assertion of WHOIS information enough to shift the prima facie burden over to the respondent. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Based on the evidence considered, the Panel agrees that Complainant has met its burden under Policy ¶ 4(c)(ii) and that the burden shifts to Respondent to rebut with evidence.
Further, Complainant argues that Respondent has failed to use <weartech.com>, which does not establish any bona fide offering of goods or services or any legitimate noncommercial or fair use. See Compl., at Attached Annex K (displaying, “This site can’t be reached,” and, “weartech.com’s server DNS address could not be found”). Where a respondent is proven to have failed to make any active use of a domain name, no rights or legitimate interests may be found. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent urges that it has rights and legitimate interests in <weartech.com>. Respondent notes the following evidence:
- Respondent did an Opening Talk for MIT Media Lab Wearable Technologies Group in 1996. See Resp., at Attached Annexes D–E.
- Respondent’s chronology of professional activities are laid out in Attached Annex F.
- Respondent’s company, EXISTech Corp. (incorporated in 2000), features goods that include wearable cameras, a form of “wearable technology.” See Resp., at Attached Annex G.
- The wearable camera technology was also sold at a conference in 2005. See Resp., at Attached Annex I.
- Respondent has indeed used WEARTECH as a brand in launching some of his products, even using it as his identifier or pseudonym: weartech@yahoo.com. The trademark WEARTECH with the “TM” symbol has appeared on the bottom of his letterhead for EXISTech Corp. for years, and Respondent has used checks and letterhead with the name. See Resp., at Attached Annex J.
Accordingly, Respondent—specifically Dr. Mann, principal of EXISTech Corp.—asserts that it is commonly known by and has done business pursuant to the WEARTECH mark and the <weartech.com> domain name. Where a respondent has done business under the terms of a domain name, findings of Policy ¶ 4(c)(ii) in such a respondent’s favor have followed. See Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known by the <avnet.net> domain name because the respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”); see also Kryton Mktg. Div., Inc. v. Patton Gen. Contracting, FA 123868 (Forum Oct. 21, 2002) (holding that the respondent had rights and legitimate interests in the disputed domain name as it had been commonly known by the domain name and has been using the name "liquid siding" in marketing its goods and services since the 1990s).
Further, Respondent contends that it engages in commercial use through the domain name, brand and identifier, and in the email address weartech@yahoo.com, constituting a bona fide and legitimate commercial use. However, Respondent has not provided any evidence of its purported use of <weartech.com>.
Whereas the Panel finds that Respondent may have provided sufficient evidence that it is commonly known by <weartech>, it is not satisfied that Respondent has make a bona fide offering of goods or services through the <weartech.com> domain name.
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Although Complainant cites to Policy ¶ 4(b)(iv), its argument is conclusory as there is no indication of how Respondent would profit from merely holding a “.com” site. However, while Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel is cognizant that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent registered and used <weartech.com> in bad faith under Policy ¶ 4(a)(iii) for the following reasons:
- Respondent has allegedly provided false WHOIS information, providing a non-existent mailing address, “Facility Garden, 111 Shaukiwan Road, Hong Kong Ontario M5S 3G4 CA.” Compl., at Attached Annex D.
- Respondent has also inactively held <weartech.com>, which also constitutes bad faith under Policy ¶ 4(a)(iii).
- Additionally, Respondent failed to reply to Complainant’s cease and desist letter, which adds to the presumption of bad faith.
Each of the three actions undertaken by Respondent have encountered findings of nonexclusive bad faith. See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”); see also Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also L'Oréal SA v. Aaliyah Bull, et. al., D2013-1416 (WIPO Oct. 15, 2013) (failing to reply to the cease and desist letter sent by an authorized representative of the Complainant was a factor in determining bad faith). Accordingly, the Panel may find sufficient basis for determining that Respondent registered and used <weartech.com> in bad faith under Policy ¶ 4(a)(iii).
Nonetheless, the Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii) for the reasons that it now elaborates.
Respondent rebuts each of Complainant’s Policy ¶ 4(a)(iii) claims and argues that there has been no false contact information because Respondent has a legitimate business address in Ontario and the address in Hong Kong was valid for Dr. Mann as well. Further, Respondent claims it did not respond to the demand letter sent by Complainant because Dr. Mann moved from Hong Kong to Palo Alto, California. Additionally, Respondent has consistently used <weartech.com> for the past several decades with an active website.
The Panel notes Respondent’s exhibits which demonstrate Respondent’s business endeavors in the wearable technology industry, however, the Panel also notes that Respondent has not provided evidence of its use of <weartech.com>. Regardless, the Panel agrees that Respondent has provided sufficient evidence to overcome Complainant’s contentions of bad faith. See Vidiots Delight, Inc. v. Digitellum, Inc., D2000-1086 (WIPO Oct. 18, 2000) (finding no bad faith where the respondent was using the domain name in connection with its business even though no website was yet developed).
The Panel further finds that Respondent has not registered or used <weartech.com> in bad faith as it has not been shown that Respondent violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). The evidence does not show that Respondent has tried to sell the domain name, nor that Respondent has registered the domain name to prevent Complainant from reflecting its mark in a domain name, nor that Respondent’s business has connection or association with Complainant’s business or welding electrodes, and Respondent has never attempted to attract for commercial gain Internet users to Respondent’s website or other online location by creating confusion. In fact, Complainant has not argued any of the Policy ¶ 4(b)(iv) factors. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo
CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent also argues that it could not have registered the disputed domain name in bad faith because its registration of <weartech.com> predates Complainant’s rights in the WEARTECH mark. The Panel again notes that Respondent registered <weartech.com> in 1996. As such, the Panel finds that Respondent’s registration of <weartech.com> predates any rights Complainant has in the WEARTECH mark and that Complainant could not have satisfied Policy ¶ 4(a)(iii). See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
Accordingly, the Panel finds that Complainant fails to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that
Complainant is attempting to deprive Respondent, the rightful, registered holder of <weartech.com>, of its rights to use the disputed domain name. Specifically, Respondent asserts that the frivolity of the Complaint against Respondent clearly fails as Respondent has rights in <weartech.com> that predate the rights of Complainant in the WEARTECH mark.
The Panel previously found that Complainant satisfied Policy ¶ 4(a)(i) of the elements of Policy ¶ 4(a), therefore the Panel finds that Complainant could not have engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <weartech.com> domain name REMAIN WITH Respondent.
Calvin A. Hamilton, Panelist
Dated: January 8, 2017
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