Honeywell International Inc. v. r9.net
Claim Number: FA0503000445594
PARTIES
Complainant is Honeywell International Inc. (“Complainant”), represented by Peter S. Sloane of Ostrolenk, Faber, Gerb
& Soffen, LLP, 1180
Avenue of the Americas, New York, NY 10036.
Respondent is r9.net
(“Respondent”), P.O. Box 795923, Dallas, TX 75379-5923.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <honeywell.net>, registered with Enom, Inc.
PANEL
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.
Calvin A. Hamilton as Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on March 24, 2005; the National
Arbitration Forum received a hard copy of the Complaint on March 28, 2005.
On March 24, 2005, Enom, Inc. confirmed
by e-mail to the National Arbitration Forum that the domain name <honeywell.net> is registered
with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, Inc. registration agreement and has thereby agreed to
resolve domain name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 30, 2005, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 19, 2005 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@honeywell.net
by e-mail.
A timely Response was received and
determined to be complete on April 18, 2005.
A timely Additional Submission was
received from Complainant on April 25, 2005.
No reply to Complainant’s Additional
Submission was submitted by Respondent.
On April 25, 2005,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed
Calvin A. Hamilton as Panelist.
On May 9, 2005, the Panel ordered that
the time period for issuing its Decision be extended until May 23, 2005.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
Complainant makes the following assertions:
1. The domain name registered by Respondent, <honeywell.net>,
is identical to Complainant’s HONEYWELL name and mark.
2.
Respondent is a trademark
infringer without any legitimate rights or interests in the <honeywell.net>
domain name.
3.
Respondent registered and used
the <honeywell.net> domain name in bad faith.
B. Respondent
R9.net, against whom the Complaint was
initiated, filed no Response.
However, David Honeywell for <honeywell.net>
service members and various Honeywell family members filed a named Response
which was received by the Forum in a timely manner (hereinafter, “DH
Submission”).
The DH Submission makes the following
assertions:
1. The domain name in question is not confusingly similar to the
HONEYWELL service mark, given the popularity of the Honeywell surname in the
U.S.
2. Honeywell family members and others have legitimate noncommercial
rights and interests with respect to the <honeywell.net>
domain name
3. A Honeywell family member registered the <honeywell.net> domain name in good faith.
C. Additional Submissions
Complainant contends that since the
Response was filed in the name of a third party, it should be disregarded in
its entirety because David Honeywell does not own the <honeywell.net> domain name but rather that “David Honeywell”
is a pseudonym for r9.net.
Furthermore, in answer to the allegations
made in the DH Submission, Complainant argues that the primary significance of
“Honeywell” is as a trademark rather than as a surname, that Respondent has not
made any legitimate noncommercial use of <honeywell.net>
and finally that Respondent registered the <honeywell.net>
domain name in bad faith.
This Additional Submission has been
considered to the same extent as the DH Submission.
FINDINGS
The Panelist first addresses the procedural issue of identity of
Respondent.
ICANN Rule 1 defines “Respondent” as “the
holder of a domain-name registration against which a complaint is
initiated”. In Wells Fargo & Co. v. John Doe as Holder of Domain Name, FA
362108 (Nat. Arb. Forum Dec. 30, 2004), the Panel found that “the
Policy and Rules anticipate that the ‘holder’ of a domain name registration
will be the individual or entity listed in the WHOIS information.” The WHOIS information is a database compiled of the actual domain name
registration information given to the respective registrars. The Panel agrees
with the Panel in the aforementioned decision that this WHOIS information is
the “most reliable source available in obtaining accurate addresses of domain
name registrants.” See Trustees of the
Trust Number SR-1 v. Turnberry, Scotland Golf and Leisure, FA 122224
(Nat. Arb. Forum Nov. 3, 2002) (“The register maintained by an ICANN registrar
must provide accurate information as to the identity of domain registrants. The
human person or other legal entity shown as the registrant must be assumed to
be such by third parties seeking to ascertain a registrant’s identity by such
means as a Whois search.”). The WHOIS record for the <honeywell.net> domain name identifies r9.net, not David
Honeywell, as the holder of the domain name.
David
Honeywell contends that he and others maintain a variety of services to family
and non-family members under <honeywell.net>
such as email messaging, online web-based email services as well as personal
websites and that the domain was originally registered using a domain proxy
service provided by R9 Internet Services who provided said services as part of
the domain registration.
It is a
matter of public knowledge that by using such a service, the proxy's contact
information, rather than the registrant-in-fact's contact information appears
on the registration record. This Panel is persuaded by the reasoning set out in
CyBerCorp Holdings, Inc. v. Allman,
FA 244090 (Nat. Arb. Forum May 14, 2004) that concerns data privacy, to the
extent that using a proxy registrant or proxy service is not per se evidence of bad faith.
In Imperial Coll. of Science, Tech. &
Medicine v. Webweaver Media Constr., D2000-1146 (WIPO Nov. 22, 2000), a third party,
who filed a Response, had the rights and legitimate interests of the respondent
considered, particularly because the complainant
raised no objection to the claimed interest of the respondent as beneficial
owner of the domain name at issue and to the submission of a Response to the
Complaint on that basis. In the present case, Complainant has objected and
contends in its Additional Submission that David Honeywell is a third party,
that this is a ploy previously used by r9.net, that David Honeywell is a
pseudonym of r9.net and that David Honeywell is a fictionalized character.
Indeed, the Panel has been unable to
ascertain that David Honeywell is in fact the beneficial owner of the domain
name (when a party has beneficial ownership of something, the party ordinarily
has the right to use that property even though another party may have legal
ownership or title to the property or asset).
See Black’s Law Dictionary 1540 (7th ed.) as
was established in North Shore Towers
Apartments, Inc. v. Kroll, FA 109030 (Nat. Arb. Forum July 2, 2002); see
also Fitter Int’l Inc. v. Eenable
Inc., D2001-0979 (WIPO Oct. 12, 2001).
On the other hand, in Société des
Produits Nestlé SA v. HAES Inc., D2002-0887 (WIPO Dec. 11, 2002), the Panel
found that “[t]he integrity of the registrar must be preserved and third parties
cannot be bound by an agreement about registration which does not find
expression in the registrar which is publicly available. In other words, the
Panel must consider the Registrant as the legal owner of the disputed domain
name, not somebody claiming to be the beneficial unregistered owner.”
Furthermore, in the case of a domain
proxy service, if data privacy is the absolute concern, it would be reasonable
to expect that the service encompass the resolution of third party claims
arising out of the use of a domain name registered by said proxy on
registrant-in-fact’s behalf, or alternatively, some provision whereby the
domain proxy service provider may inform the Panel of the registrant-in-fact’s
real identity once notified of the commencement of such an administrative
proceeding, which is mandatory on the domain name registrant who is
contractually bound by the Policy, which is incorporated by reference into
registration agreements. There has been no communication from R9 Internet
Services in relation to this procedure. Moreover, there is no information or
content about its services on the website of the alleged domain proxy service
provider, R9 Internet Services, <r9.net>.
Consequently, the fact that David
Honeywell has failed to provide the Panel with the terms of the domain proxy
service agreement that allegedly exists, bolstered by the unrefuted allegations
of fictitiousness set out in the Complainant’s Additional Submission, leads
this Panel to find that David Honeywell has not met the burden of proof
regarding beneficial ownership of the domain name and consequently cannot be
considered Respondent in this action. The Respondent is r9.net and r9.net has
not filed a Response. Notwithstanding, the DH Submission has been considered in
making this Decision.
As regards
the substantive issues of the present proceeding, Complainant is a diversified
technology and manufacturing leader of aerospace products and services, control
technologies for buildings, homes and industry, automotive products, power generation
systems, specialty chemicals, fibers, plastics and advanced materials. Over the past ninety years, Complainant has
used the HONEYWELL name and mark to identify its goods and services. In this period of time, Complainant
registered its HONEYWELL mark with governments throughout the world, including
the first, registered with the U.S. Patent and Trademark Office (“USPTO”) on
January 31, 1950 (Reg. No. 520,350).
Complainant also holds the registration for the <honeywell.com>
domain name, registered on February 11, 1988 as well as country-specific
websites such as <honeywell.com.au>, <honeywell.com/china>, and
<honeywell.com/uk>.
Respondent
registered the disputed domain name <honeywell.net> on March 12,
2000. The disputed domain name houses a website that shows a directory of links
to third party websites which is a so-called “parking” or “under construction”
page. There is a restricted password-access area at
<honeywell.net/admin>. A print
out of said website dated March 23, 2005 does not indicate email messaging or
subdomain services, although at this decision’s date the right hand banner
includes a link “Sign up for webmail and subdomains”, which redirects to
<onemail.net> where <honeywell.net> can be chosen from several
different domain names as a preferred email address. There is no specific
mention of services for Honeywell family members.
DISCUSSION
Paragraph 15(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (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;
(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’s
numerous registrations for its HONEYWELL mark throughout the world are sufficient to establish Complainant’s rights in the HONEYWELL
mark under the Policy ¶ 4(a)(i). See
Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
(finding that the registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive.
Respondent has the burden of refuting this assumption.).
The domain
name registered by Respondent, <honeywell.net>, is identical to
Complainant’s HONEYWELL mark.
Notwithstanding
that “Honeywell” may be a widely registered trademark and has never been
considered a mere surname by the United States Patent and Trademark Office
(U.S.P.T.O.) for registration purposes, one cannot belie the fact that
Complainant is called Honeywell International Inc. precisely because the
surname of one of its founders was Honeywell found in the “Our History” section
of the Internet website at <honeywell.com>, stating that “a young
engineer named Mark Honeywell was perfecting the heat generator as part of his
plumbing and heating business. Two years later, he formed the Honeywell Heating
Specialty Co, Incorporated...”
“Honeywell” is primarily a surname and trademark registration does not
give monopoly rights over the use of the word.
The addition of a generic top-level domain should be an issue for the
purpose of determining whether it is identical or confusingly similar otherwise
it defeats the purpose of having distinct top-level domains. Complainant
contends to be a network provider, an assertion that Respondent has failed to
rebut.
In the absence
of a Response from Respondent that challenges Complainant’s assertions, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent is not authorized or licensed to
register or use a domain name that incorporates Complainant’s mark. Moreover, Complainant argues that Respondent
is not commonly known by the <honeywell.net> domain name
and therefore has failed to establish rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
Respondent has
not submitted any evidence that r9.net is commonly known as the disputed domain
name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (finding that “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” is one factor in
determining that Policy ¶ 4(c)(ii) does not apply).
Furthermore,
since beneficial ownership of the domain name has not been established, the
contentions made in the DH Submission cannot assist in determining rights or
legitimate interests. Furthermore these contentions were unsupported by
documentary evidence which would be required to establish a right and
legitimate interest in respect of the domain name. See G. A. Modefine S.A. v. Mani,
D2001-0537 (WIPO July 20, 2001) (finding that the respondent had rights and
legitimate interests in the <armani.com> domain name, where the domain
name reflects the initials of the respondent’s first and middle name, combined
with its entire last name).
The Panel is
unable to determine that Respondent is commonly known by the domain name
pursuant to Policy ¶ 4(c)(ii).
Moreover,
Complainant alleges that Respondent is appropriating Complainant’s mark to redirect
Internet users to a website that offers a directory of links to third party
websites unrelated to Complainant’s business, a search engine and a banner ad
for adult entertainment services and that this is neither a bona fide offering
of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
In the absence of a Response filed by the Respondent together with the
lack of standing of David Honeywell to submit a Response on behalf of Respondent
and the uncorroborated contentions of the DH Submission, the Panel is prevented
from concluding that the domain name is used to send electronic email for the
Honeywell family or that there is a legitimate
noncommercial use of the domain name
as a family information site. See
Penguin Books Ltd. v. Katz, D2000-0204 (WIPO May 20, 2000); see also RMO, Inc. v. Burbidge,
FA 96949 (Nat. Arb. Forum May 16, 2001).
Furthermore,
the link “Sign up for webmail and subdomains” referred to
above, which redirects to <onemail.net> is
clearly a use
for commercial benefit, given that the sign up information specifies prices for
the different services.
For all these
reasons, the Panel finds that Respondent lacks rights and legitimate interests
in the domain name satisfying Policy ¶ 4(a)(ii).
There being no
beneficial ownership of the disputed domain name in favor of David Honeywell
which would allow the Panel to consider the DH Submission and there having been
no Response submitted by Respondent, the Panel is compelled to accept all
reasonable allegations set forth by Complainant as true and accurate. See 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.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that the complainant’s
allegations are true unless clearly contradicted by the evidence)
Complainant has
demonstrated that Respondent has a prior history in registering domain names
corresponding to the trademarks of others which demonstrates a pattern of
conduct evidencing its bad faith. See Hartmann, Inc. v. R9.net, FA 263580 (Nat. Arb. Forum, June 17,
2004); see also Philip Morris Inc.
v. r9.net, D2003-0004 (WIPO Feb. 28, 2003). The content described in those
cases of the websites associated with the disputed domain names is similar to
the content of the website linked to <honeywell.net>,
such as links to third party websites unrelated to Complainant’s business, a
search engine and a banner ad for adult entertainment services.
The Panel finds
that a reasonable Internet user would not be confused or even associate
Complainant with the content of the website at <honeywell.net> but rather understand that that domain name is
used and owned by someone (whether individual, business or other organization)
who is not Complainant.. Furthermore, given that there are millions of websites
with references to “Honeywell” and thousands of URLs that contain the word
“Honeywell”, it is unlikely that consumers of Complainant would in fact be
diverted to the website of Respondent, unless they knew of the <honeywell.net> domain name and
directly typed the domain name into an Internet web browser.
The HONEYWELL
mark is, as established, a widely registered trademark. This trademark registration generally
constitutes constructive notice of the mark. Registration of the disputed
domain name took place in March 2000, when HONEYWELL was a long-standing
trademark and service name around the world. Furthermore, Respondent has
provided incomplete contact information to the registrar which as stated supra is critical to the effectiveness
of the UDRP.
That said, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <honeywell.net> domain name be TRANSFERRED.
Calvin A.
Hamilton, Panelist
Dated: May 23, 2005
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