Honeywell International Inc. v. Domains Ventures
Claim Number: FA0603000669924
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 Domains Ventures (“Respondent”), 136 Xiaoxue Road, Xiamen, Fujian 361001, CN.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <honeywellcsplans.com>, registered with Moniker Online Services, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 31, 2006.
On March 29, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <honeywellcsplans.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 April 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 24, 2006 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@honeywellcsplans.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <honeywellcsplans.com> domain name is confusingly similar to Complainant’s HONEYWELL mark.
2. Respondent does not have any rights or legitimate interests in the <honeywellcsplans.com> domain name.
3. Respondent registered and used the <honeywellcsplans.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Honeywell International Inc., has continuously and extensively used the HONEYWELL mark for over ninety years in connection with the manufacture of aerospace products, control technologies for buildings, power generation systems, and a vast array of other industrial activities.
Complainant owns numerous trademark registrations for the HONEYWELL mark around the world, and has registered the mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 520,350 issued January 31, 1950; Reg. No. 810,725 issued July 5, 1966; Reg. No. 929,818 issued February 22, 1972). Complainant also registered the <honeywell.com> domain name on February 11, 1988.
Complainant has authorized CitiStreet LLC, a partnership between Citigroup and State Street Corporation, to manage its employee savings and benefit programs. CitiStreet LC has registered the <csplans.com> domain name to provide employees with Internet access to their savings and benefit accounts. CitiStreet specifically registered the <honeywell.csplans.com> domain name for Complainant’s employees.
Respondent registered the <honeywellcsplans.com> domain name on May 4, 2003. Respondent is using the disputed domain name to operate a portal website that contains links to various third-party websites unrelated to 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."
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.”).
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 has established rights to the HONEYWELL mark by
registering the mark with the USPTO. See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
The <honeywellcsplans.com> domain name is confusingly similar to Complainant’s HONEYWELL mark pursuant to Policy ¶ 4(a)(i), because it contains the entire mark and merely adds the generic term “csplans,” which describes Complainant’s employee savings and benefits plan. In Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000), the Panel found that the addition of generic words to the end of the Sony mark rendered the respondent’s domain names confusingly similar because “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY.”
Therefore, Respondent’s addition of the term “csplans” to
the HONEYWELL mark in its domain name is also confusingly similar because
Complainant’s mark is the dominant part of the domain name. See
also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant claims that Respondent lacks rights and
legitimate interests in the <honeywellcsplans.com> domain name. Complainant must first make a prima facie case in support of its
allegations, and then the burden shifts to Respondent to show it does have
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has
asserted that the respondent has no rights or legitimate interests with respect
to the domain name, it is incumbent on the respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <honeywellcsplans.com>
domain name. See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond); see
also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20,
2000) (“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”).
However, the Panel will now
examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Domains
Ventures,” and there is no other evidence in the record suggesting that
Respondent is commonly known by the <honeywellcsplans.com> domain
name. Thus, Respondent has not
established rights or legitimate interests in the <honeywellcsplans.com> domain
name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. 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.”).
Furthermore, Respondent’s <honeywellcsplans.com> domain name, which is confusingly similar to Complainant’s HONEYWELL mark, resolves to a third-party website featuring links to content unrelated to Complainant. In Elsevier B.V. v. Domain Deluxe, FA 237520 (Nat. Arb. Forum Mar. 24, 2004), the panel held that the respondent’s use of the <sciencdirect.com> domain name, which was confusingly similar to the complainant’s SCIENCE DIRECT mark, to operate a “portal website” that generated revenue through advertisements was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. Because Respondent also presumably earns “click-through fees” from diverting Internet users seeking Complainant’s products to a search engine containing links to third-party websites, its use of the disputed domain name does not constitute a
bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use of the <honeywellcsplans.com> domain name pursuant to Policy ¶
4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to websites unrelated to Complainant's business does not
represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <honeywellcsplans.com> domain name, which is confusingly similar to Complainant’s HONEYWELL mark, to induce Internet users seeking Complainant’s products and services into believing that they have reached the authorized employee website of Complainant, when in fact they are misdirected to a search engine displaying links to content unrelated to Complainant. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the respondent registered the <mailonsunday.com> domain name, which included the complainant’s THE MAIL ON SUNDAY mark, and was using the domain name to provide links to competing newspapers and to third-party websites. The panel held that such use provided evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent “presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’” In this case, the Panel infers that Respondent receives referral fees for each consumer it diverts to other websites and is, therefore, taking advantage of the confusing similarity between the disputed domain name and Complainant’s HONEYWELL mark. Such use of the disputed domain name to profit from of the goodwill associated with Complainant’s mark is indicative of bad faith registration and use under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <honeywellcsplans.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 9, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum