Industrial Products Limited v. Whois ID Theft Protection c/o Domain Admin
Claim Number: FA0606000726075
Complainant is Industrial Products Limited (“Complainant”), represented by Joseph S. Streb, 736 Neil Ave., Columbus, OH 43215. Respondent is Whois ID Theft Protection c/o Domain Admin (“Respondent”), General Delivery, Georgetown, Grand Cayman GT KY.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <industrialproducts.com>, registered with Enom, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 2, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 5, 2006.
On June 5, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <industrialproducts.com> domain name 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 June 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 28, 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@industrialproducts.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 3, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant has been continuously using the INDUSTRIAL PRODUCTS trademark in connection with the sale of ladders, scaffolding and other construction products since July 31, 2000, the date of Complainant’s incorporation.
Complainant’s principal place of business is in New Orleans, Louisiana, but Complainant also has locations in Columbus, Ohio and Pittsburgh, Pennsylvania, and offers its products throughout the United States and in international markets.
Complainant also does business through a mail-order catalog and an online store.
Respondent registered the disputed domain name <industrialproducts.com> on October 16, 2001.
Respondent’s website at the disputed domain name is a commercial search engine with links to various sources of content unrelated to Complainant.
Respondent is known by several aliases, including “Cayman Web Development,” “Modern Limited” and “JIT Limited,” and Respondent has been the subject of at least sixteen domain name disputes with the National Arbitration Forum.
Respondent’s <industrialproducts.com> domain name is identical to Complainant’s INDUSTRIAL PRODUCTS mark.
Respondent does not have any rights or legitimate interests in the domain name <industrialproducts.com>.
Respondent has registered and now uses the <industrialproducts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical 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.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant need not have registered its INDUSTRIAL PRODUCTS
trademark in order to have rights in the mark under Policy ¶ 4(a)(i). See
Great Plains Metromall, LLC v.
Creach, FA 97044 (Nat. Arb. Forum May 18, 2001): “The Policy does not
require that a trademark be registered by a governmental authority for such
rights to exist.” See also British
Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the Policy “does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant asserts, and Respondent does not deny, that
Complainant has established common law rights in the INDUSTRIAL PRODUCTS mark
pursuant to Policy ¶ 4(a)(i) through continuous use of the mark in connection
with construction products since mid-2000.
It is uncontested that, through its marketing of ladders, scaffolding
and other construction products to consumers around the world, Complainant’s
mark has acquired secondary meaning in connection with its business. See S.A. Bendheim Co., Inc. v. Hollander
Glass, FA 142318 (Nat. Arb.
Forum, Mar. 13, 2003) (holding that a complainant established rights in the
RESTORATION GLASS mark through proof of secondary meaning associated with it); see
also Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001), holding that: “[O]n account of long and
substantial use of [KEPPEL BANK] in connection with its banking business, it
has acquired rights under the common law.”
The <industrialproducts.com> domain name
contains Complainant’s entire mark and merely eliminates the space between the
terms and adds the generic top-level domain (“gTLD”) “.com.” These alterations to Complainant’s mark are
insufficient to differentiate the domain name from the mark. Thus the <industrialproducts.com>
domain name is substantively identical to Complainant’s INDUSTRIAL PRODUCTS
mark pursuant to Policy ¶ 4(a)(i). See Victoria's Secret v. Hardin,
FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> domain name is identical to a complainant’s BODY BY
VICTORIA mark); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding
that a respondent’s domain name <charlesjourdan.com> is identical to a
complainant’s marks).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the <industrialproducts.com> domain name. Complainant must first make a prima facie case in support of its allegations. The burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in
respect of the Domain Name requires the Complainant to prove a negative. For
the purposes of this sub paragraph, however, it is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
on to the shoulders of Respondent. In
those circumstances, the common approach is for respondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question.
Respondent’s failure to answer the Complaint in this proceeding raises a presumption that Respondent has no rights or legitimate interests in the <industrialproducts.com> domain name. See Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that a respondent has no rights or legitimate interests in a domain name because that respondent never submitted a response or provided the panel with evidence to suggest otherwise); 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 may nonetheless
examine the record to determine if there is any evidence indicating that
Respondent has rights or legitimate interests under Policy ¶ 4(c), and we elect
to do so now.
In this connection, we first observe that there is no
evidence in the record to suggest that Respondent is commonly known by the <industrialproducts.com>
domain name. Consequently, Respondent
has not established rights or legitimate interests in the <industrialproducts.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Great S. Wood Preserving, Inc. v.
TFA Assocs., FA 95169 (Nat. Arb.
Forum Aug. 5, 2000) (finding that a respondent was not commonly known by the
domain name <greatsouthernwood.com> where that respondent linked the
domain name to <bestoftheweb.com>); see also Gallup,
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that a respondent does not have rights in a domain name when that
respondent is not known by the mark).
Furthermore, Respondent’s <industrialproducts.com>
domain name resolves to a commercial search engine page with links to various
sources of content unrelated to Complainant.
The Panel presumes that Respondent earns referral fees for each Internet
consumer it redirects to such third-party websites. Therefore, Respondent is using the disputed domain name, which is
identical to Complainant’s INDUSTRIAL PRODUCTS mark, for its own commercial
gain. This 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).
See WeddingChannel.com Inc.
v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
a respondent’s use of a disputed domain name to
redirect Internet users to websites unrelated to a complainant’s mark, websites
where that respondent presumably receives a referral fee for each misdirected
Internet user, was not a bona fide offering of goods or services as
contemplated by the Policy); see also
Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb.
Forum Mar. 17, 2003) (finding that a respondent’s diversionary use of a
complainant’s mark to attract Internet users to its own website, which
contained a series of hyperlinks to unrelated websites, was neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use of the disputed domain names).
For these reasons, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The panel must conclude, on the basis of the facts of
record, that Respondent registered and is using the <industrialproducts.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). Respondent does not deny that it is
operating a commercial search engine web page at the disputed domain name,
which contains links to content unrelated to Complainant. In Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002), a respondent registered the <bigkmart.com>
domain name and used it to operate a website featuring links to various sources
of content unrelated to a complainant.
The panel there inferred that that respondent made a profit from the
Internet traffic it diverted to other websites, and that that respondent was
therefore “commercially benefiting from the likelihood of confusion it has
created through the use of the complainant’s mark” in violation of Policy ¶
4(b)(iv). Id. Similarly, in this instance, Respondent
likely profits from diverting Internet users seeking Complainant’s construction
products to third-party websites via Respondent’s search engine page. The Panel therefore concludes that
Respondent is taking advantage of the substantive identity between the domain
name <industrialproducts.com> and Complainant’s INDUSTRIAL
PRODUCTS mark to profit from the goodwill associated with the mark. Therefore,
Respondent falls within Policy ¶ 4(b)(iv).
See G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that a respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because it used a confusingly similar domain name
to attract Internet users to its commercial website).
The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <industrialproducts.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 17, 2006
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