FG Wilson (Engineering) Ltd. v. Charlie Kalopungi / AA7 GROUP LTD
Claim Number: FA1007001336834
Complainant is FG
Wilson (Engineering) Ltd. (“Complainant”), represented by Christopher P. Foley, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwfgwilson.com>, registered with Moniker Online Services, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2010.
On July 23, 2010, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwfgwilson.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 July 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 2010 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@wwwfgwilson.com by e-mail. Also on July 29, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 25, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <wwwfgwilson.com> domain name is confusingly similar to Complainant’s FG WILSON mark.
2. Respondent does not have any rights or legitimate interests in the <wwwfgwilson.com> domain name.
3. Respondent registered and used the <wwwfgwilson.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, FG Wilson (Engineering) Ltd., holds trademark registrations with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,417,351 issued December 8, 2006), United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,750,710 issued February 16, 2010), and the European Union’s Office of Harmonization for the Internal Market (“OHIM”) (e.g., Reg. No. 5,282,603 issued June 18, 2007) for its FG WILSON mark. Complainant uses its FG WILSON mark in connection with the manufacturing of generator sets.
Respondent, Charlie Kalopungi / AA7 GROUP LTD, registered the <wwwfgwilson.com> domain name on May 31, 2010. The disputed domain name resolves to a website containing unrelated third-party hyperlinks from which Respondent presumably receives click-through fees.
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.
As Complainant holds trademark registrations with the UKIPO
(Reg. No. 2,417,351 issued December 8, 2006), USPTO (Reg. No. 3,750,710 issued
February 16, 2010), and OHIM (e.g.,
Reg. No. 5,282,603 issued June 18, 2007) for its FG WILSON mark, the Panel finds
that Complainant has established rights in its FG WILSON mark under Policy ¶
4(a)(i) even though Complainant does not hold a
trademark registration within the country Respondent resides in, Panama. See Miller Brewing
Complainant claims that Respondent’s <wwwfgwilson.com>
domain name is confusingly similar to Complainant’s FG WILSON mark as the
disputed domain name simply removes the space separating the terms of
Complainant’s mark, adds the prefix “www,” and adds the generic top-level
domain (“gTLD”) “.com.” The Panel finds
these additions do not adequately distinguish the disputed domain name from
Complainant’s mark. See U.S. News & World Report, Inc. v.
Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of
punctuation and the space between the words of Complainant’s mark, as well as
the addition of a gTLD does not sufficiently distinguish the disputed domain
name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr.
10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com”
does not serve to adequately distinguish the Domain Name from the mark.”); see also Bank of Am. Corp. v. InterMos,
FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain
name <wwwbankofamerica.com> is confusingly similar to the complainant’s
registered trademark BANK OF
The Panel finds Policy ¶ 4(a)(i) has been satisfied by Complainant.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <wwwfgwilson.com> domain name. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <wwwfgwilson.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); 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 contends that Respondent is not commonly known by the <wwwfgwilson.com> domain name. Complainant asserts that it has not authorized Respondent to use its FG WILSON mark. The WHOIS information identifies the domain name registrant as “Charlie Kalopungi / AA7 GROUP LTD,” which Complainant argues indicates that Respondent is not commonly known by the <wwwfgwilson.com> domain name. Respondent has failed to provide any evidence that would suggest that Respondent is commonly known by the <wwwfgwilson.com> domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Respondent’s <wwwfgwilson.com> domain name resolves to a website that contains a list of third-party hyperlinks that resolve to websites unrelated to Complainant. Complainant contends that Respondent commercially benefits through the receipt of click-through fees each time an Internet user clicks on one of the hyperlinks. The Panel finds Respondent’s use of the confusingly similar disputed domain name to provide unrelated hyperlinks from which Respondent profits is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the 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); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Complainant alleges that Respondent attempts to take advantage of a typographical error through its use of the <wwwfgwilson.com> domain name. Complainant claims that Respondent is attempting to redirect Internet users that forget to type the period separating the prefix “www” and Complainant’s mark away from Complainant’s website and to Respondent’s website for Respondent’s commercial gain. The Panel determines that Respondent’s use of the disputed domain name does constitute typosquatting which is further evidence that Respondent lacks rights and legitimate interests in the <wwwfgwilson.com> domain name pursuant to Policy ¶ 4(a)(ii). Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where the respondent used the typosquatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the complaint).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied by Complainant.
Respondent uses its <wwwfgwilson.com> domain
name to resolve to a website featuring hyperlinks unrelated to
Complainant. Respondent presumably receives
click-through fees from the aforementioned hyperlinks. Internet users will likely become confused as
to Complainant’s sponsorship of, or affiliation with, the disputed domain name
due to Respondent’s use of the confusingly similar disputed domain name. Based on Respondent’s attempt to profit from
this confusion, the Panel concludes that Respondent’s registration and use of
the <wwwfgwilson.com> domain name is in bad faith under Policy ¶
4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum
June 11, 2006) (holding that the respondent’s previous use of the
<bankofamericanfork.com> domain name to maintain a web directory was
evidence of bad faith because the respondent presumably commercially benefited
by receiving click-through fees for diverting Internet users to unrelated
third-party websites); see also The Ass’n of Junior Leagues Int’l Inc. v.
This Domain Name My Be For
The Panel has previously determined that Respondent’s use of the disputed domain name constitutes typosquatting. The Panel finds Respondent’s typosquatting provides further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwfgwilson.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 7, 2010
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