Ditec International AB / Global Preservation Systems, LLC v. ADAM FARRAR / HOSTGATOR / FRITS VERGOOSSEN / DITEC INTERNATIONAL CORPORATION / Christopher Alison
Claim Number: FA1712001763998
Complainant is Ditec International AB / Global Preservation Systems, LLC (“Complainant”), represented by Brian A. Hall of Traverse Legal, PLC, Michigan, USA. Respondent is ADAM FARRAR / HOSTGATOR / FRITS VERGOOSSEN / DITEC INTERNATIONAL CORPORATION / Christopher Alison (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ditecinternational.com>, <ditecmarine.com>, <ditecauto.com>, <ditecaero.com>, <ditecusa.com>, and <ditecsoftware.com> registered with GoDaddy.com, LLC.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 21, 2017; the Forum received payment on December 21, 2017.
On December 22, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ditecinternational.com>, <ditecmarine.com>, <ditecauto.com>, <ditecaero.com>, <ditecusa.com>, and <ditecsoftware.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 January 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2018 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@ditecinternational.com, postmaster@ditecmarine.com, postmaster@ditecauto.com, postmaster@ditecaero.com, postmaster@ditecusa.com, and postmaster@ditecsoftware.com. Also on January 2, 2018, 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 Jnaury 31,2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is an exclusive licensee of the DITEC marks used in connection with the goods and services associated with the surfaces suitable for an aquatic environment, such as vessels, boats, yachts, and cruise ships. Complainant has rights in the DITEC mark through trademark registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,774,646, registered Jul. 21, 2015). See Compl. Annex 2. Complainant also has common law rights as early as 1975 through its extensive marketing, promotional activities, and strong global reputation. Respondent’s <ditecinternational.com>, <ditecmarine.com>, <ditecauto.com>, <ditecaero.com>, <ditecusa.com>, and <ditecsoftware.com> domain names are confusingly similar to Complainant’s DITEC mark because Respondent added generic or descriptive terms to Complainant’s mark such as “international,” “marine,” “auto,” “aero,” “usa,” and “software” and a “.com” generic top-level domain (“gTLD”).
Respondent does not have any rights or legitimate interests in the <ditecinternational.com>, <ditecmarine.com>, <ditecauto.com>, <ditecaero.com>, <ditecusa.com>, and <ditecsoftware.com> domain names because Respondent has no license or permission to use the DITEC mark and Respondent is not commonly known by the domain names. Further, while Respondent used to have a license to distribute Complainant’s products, that agreement ended in 2013, and one of the clauses prohibited Respondent from using the DITEC mark in any domain name. See Compl. Annex 15. Additionally, Respondent attempts to hold itself out to be Complainant or an authorized distributor of Complainant’s products. Moreover, Respondent diverts users from Complainant’s business in order to sell its competing products for commercial gain. See Compl. Annex 17.
Respondent’s registrations of the <ditecinternational.com>, <ditecmarine.com>, <ditecauto.com>, <ditecaero.com>, <ditecusa.com>, and <ditecsoftware.com> domain names that all include Complainant’s DITEC mark and has thus engaged in a pattern of bad faith registration and use. Additionally, Respondent intentionally attracts users to its website by creating consumer confusion that Respondent is associated with Complainant to offer inferior competing products. See Compl. Annex 17. Further, Respondent registered the <ditecmarine.com>, <ditecauto.com>, <ditecaero.com>, and <ditecusa.com> domain names with a privacy service that indicates bad faith registration and use. Moreover, any rights that Respondent had to use the DITEC mark have long been terminated. See Compl. Annex 15. Finally, Respondent had actual knowledge of Complainant’s rights in the DITEC mark at the time it registered the domain names at issue.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the domain names on the following dates: <ditecinternational.com> (January 10, 2006), <ditecmarine.com> (January 9, 2009), <ditecauto.com> (January 9, 2009), <ditecaero.com> (January 9, 2009), <ditecusa.com> (July 15, 2004), and <ditecsoftware.com> (January 17, 2006). See Compl. Annexes 4-9.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimated interests in or to the disputed domain names; and that Respondent has engaged in bad faith use and registration of the disputed domain names.
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(f), 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 (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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Panel accepts the evidence in the Complaint as sufficient to establish a nexus or link between the Complainants. As such, the Panel shall treat them all as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant.”
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panels finds that the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s valid and subsisting trademark. Complainant has adequately plead its rights and interests in the common law mark DITEC dating back to approximately 1975. Respondent arrives at the disputed domain names by adding a generic or descriptive term to Complainant’s mark such as “international,” “marine,” “auto,” “aero,” “usa,” and “software” and a “.com” generic top-level domain (“gTLD”). This is insufficient to distinguish the disputed domain names from Complainant’s trademark.
As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain names. Respondent has no right, permission or license to register the disputed domain names. Respondent is not commonly known by the dispute domain names.
Further, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial of fair use. Complainant argues Respondent attempts to hold itself out as Complainant in order to deprive Complainant the opportunity to register the disputed domain names and sell Complainant’s products without Complainant’s authorization. Selling a complainant’s products without authorization for commercial gain generally does not amount to a bona fide offering of goods and services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
As such, the Panel finds Respondent does not have any rights or legitimate interests in or to the disputed domain names.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain names. Complainant asserts that Respondent registered and used the <ditecinternational.com>, <ditecmarine.com>, <ditecauto.com>, <ditecaero.com>, <ditecusa.com>, and <ditecsoftware.com> domain names in bad faith by registering multiple domain names using the DITEC mark. Registering multiple domain names incorporating a registered mark may indicate bad faith registration and use per Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). Here, Respondent registered six domain names that all include Complainant’s DITEC mark. Therefore, the Panel finds that Respondent’s multiple registrations using the DITEC mark indicates bad faith registration and use per Policy ¶ 4(b)(ii).
Next, Complainant argues Respondent creates a likelihood of confusion that there is some affiliation between Respondent and Complainant when it sells Complainant’s goods. Selling a complainant’s goods in order to create user confusion may be an indication of bad faith registration and use per Policy ¶ 4(b)(iv). See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (FORUM May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”). Here, Respondent’s disputed domain names advertise a variety of products which appear to be connected to Complainant’s DITEC mark. See Compl. Annex 10 and 17. Accordingly, the Panel finds that Respondent attempts to sell Complainant’s products in bad faith under Policy ¶ 4(b)(iv).
Complainant lastly claims that Respondent had actual knowledge of Complainant’s DITEC mark at the time it registered the disputed domain names. Given the long usage of the DITEC mark, Respondent’s affiliation with Complainant and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s prior rights in and to the trademark DITEC.
As such, the Panel finds that Respondent engaged in bad faith use and registration of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <ditecinternational.com>, <ditecmarine.com>, <ditecauto.com>, <ditecaero.com>, <ditecusa.com>, and <ditecsoftware.com> domain names be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: February 1, 2018
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