Hubbell Incorporated v. Christopher Roy / CK Battery, Inc.
Claim Number: FA1404001554729
Complainant is Hubbell Incorporated (“Complainant”), represented by Roberta S. Bren of Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P., Virginia, USA. Respondent is Christopher Roy / CK Battery, Inc. (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dual-litebatteries.com>, registered with Wild West Domains, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 17, 2014; the National Arbitration Forum received payment on April 18, 2014.
On April 17, 2014, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <dual-litebatteries.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 April 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 2014 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@dual-litebatteries.com. Also on April 18, 2014, 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.
A timely Response was received and determined to be complete on May 8, 2014.
Complainant filed an Additional Submission which was received and determined to be complete on May 13, 2014.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
Policy ¶ 4(a)(i)
Complainant has marketed its battery, AC back-up, and emergency electrical lighting products under the DUAL-LITE mark for years. DUAL-LITE has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,748,239 registered Jan. 26, 1993).
Respondent’s <dual-litebatteries.com> domain name is confusingly similar to the DUAL-LITE mark. The domain name contains the addition of the descriptive term “batteries” and the generic top-level domain (“gTLD”).
Policy ¶ 4(a)(ii)
Complainant and its subsidiaries have never authorized Respondent’s use of the DUAL-LITE mark.
Respondent operates an online store through the <dual-litebatteries.com> domain name selling batteries by various manufacturers under the trade name “Dual-Lite Batteries.”
Policy ¶ 4(a)(iii)
Respondent sells the same types of goods as Complainant through this <dual-litebatteries.com> domain name, evidencing an intent to disrupt Complainant’s business.
Respondent’s use of the <dual-litebatteries.com> domain name for the offering of competing goods evidences Respondent’s aim to profit through the likelihood of Internet users’ confusion.
B. Respondent’s Contentions
Policy ¶ 4(a)(ii)
Respondent is “CK Battery, Inc. d/b/a Sta-Brite Electronics.” Respondent has been an authorized DUAL-LITE service center for many years.
Respondent received Complainant’s prior consent to use this domain name in November 2009, so long as Respondent included a disclaimer noting it was not associated with Complainant.
Policy ¶ 4(a)(iii)
Complainant is not harmed by Respondent’s use of the domain name. Complainant instead authorized Respondent to use the domain name in 2009, on condition Respondent included a disclaimer.
Respondent never had the requisite bad faith intent at registration. Respondent has been an authorized distributor of Complainant’s goods for over twenty-five years. When Complainant initially told Respondent to stop using the <dual-litebatteries.com> domain name, Respondent complied. Respondent only began using the <dual-litebatteries.com> domain name again when Complainant explicitly consented to its use on the basis that Respondent would include a disclaimer.
C. Complainant’s Additional Submission
Policy ¶ 4(a)(ii)
There is no evidence showing Respondent operated any website through the disputed domain name in 2009. Complainant understood Respondent would be using <dlbattieries.com> and not continue its use of the disputed <dual-litebatteries.com> domain name.
Policy ¶ 4(a)(iii)
Respondent changed its website after receiving this complaint. The website now references “DL Batteries” instead of “Dual-Lite Batteries.” This does not defeat the fact the domain name is confusingly similar, but being used to promote various competing goods.
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.
Complainant has marketed its battery, AC back-up, and emergency electrical lighting products under the DUAL-LITE mark for years. DUAL-LITE has been registered with the USPTO (e.g., Reg. No. 1,748,239 registered Jan. 26, 1993). The Panel agrees that the DUAL-LITE mark has been shown to be vested in Complainant for purposes of Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant further claims Respondent’s <dual-litebatteries.com> domain name is confusingly similar to the DUAL-LITE mark. Complainant notes the domain name contains the addition of the descriptive term “batteries”. The Panel finds that the descriptive term “batteries” does not add distinction to this domain name. See Cargill, Inc. v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)). Thus, the Panel determines that the <dual-litebatteries.com> domain name is confusingly similar to the DUAL-LITE mark under Policy ¶ 4(a)(i).
Complainant and its subsidiaries claim to have never authorized Respondent’s use of the DUAL-LITE mark. The Panel notes that Respondent identifies as “Christopher Roy” of “CK Battery Inc. d/b/a Sta-Brite Electronics.” The Panel agrees that Respondent has presented no evidence that it has been known by this <dual-litebatteries.com> domain name.
Complainant notes that Respondent operates an online store through the <dual-litebatteries.com> domain name selling batteries by various manufacturers under the trade name “Dual-Lite Batteries.” In Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) the panel found no basis for a bona fide offering when the domain name was used to operate an independent business that sold competing goods. Because Respondent here sells both Complainant’s goods as well as competing goods, the Panel agrees that Respondent’s use fails to conform to a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant claims Respondent sells the same types of goods as Complainant through this <dual-litebatteries.com> domain name, evidencing an intent to disrupt Complainant’s business. The Panel notes that Respondent is using the disputed domain name to sell both Complainant’s goods as well as similar goods sold by third-party competitors. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel therefore finds Policy ¶ 4(b)(iii) bad faith on part of Respondent.
Complainant argues Respondent’s use of the <dual-litebatteries.com> domain name for the offering of competing goods evidences Respondent’s aim to profit through the likelihood of Internet users’ confusion. In Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) the panel found a likelihood of confusion when the domain name was used to sell off goods, some of which competed with the complainant’s business. Similarly, here, the Panel finds that Respondent’s actions evince an intent to profit from the likelihood of Internet confusion—evidence of bad faith under Policy ¶ 4(b)(iv).
The Panel notes that Respondent tacitly admits its knowledge of the mark, in that it alleges that it has been an authorized distributor of Complainant’s goods for over 25 years. However, Respondent does not allege that Complainant authorized it to register the disputed domain name. The Panel therefore determines that Respondent registered the domain in bad faith.
Complainant has thus also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dual-litebatteries.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: May 29, 2014
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