State Industries Inc. v. Domain Administrator / DVLPMNT MARKETING, INC.
Claim Number: FA1605001675453
Complainant is State Industries Inc. (“Complainant”), represented by Heidi R. Thole, Wisconsin, United States. Respondent is Domain Administrator / DVLPMNT MARKETING, INC. (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statehotwaterheater.com>, registered with DNC Holdings, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically May 17, 2016; the Forum received payment May 17, 2016.
On May 20, 2016, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <statehotwaterheater.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. verified that Respondent is bound by the DNC Holdings, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 23, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 2016, 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@statehotwaterheater.com. Also on May 23, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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.
Complainant’s Contentions in This Proceeding:
Complainant uses the STATE mark in connection with its business of providing hot water heaters. Complainant registered the STATE mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,662,408, registered Dec. 17, 2002), which establishes rights in the mark. See Compl., at Attached Ex. C. Respondent’s <statehotwaterheater.com> domain name is confusingly similar to the STATE mark as it incorporates the mark in its entirety while adding the descriptive phrase “hot water heater” and the generic top-level domain (“gTLD”) “.com.” Further, Respondent’s <statehotwaterheater.com> domain name is confusingly similar to Complainant’s previously held domain name <statewaterheaters.com> as it merely adds the descriptive term “hot” and deletes the terminal letter “s.”
Respondent has no rights or legitimate interests in the <statehotwaterheater.com> domain name. Respondent is not commonly known by the disputed domain name. See Compl., at Attached Ex. B. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <statehotwaterheater.com> domain name. Rather, Complainant contends that the domain name resolves to an active website displaying pay-per-click advertising for water heaters and related goods and services. See Compl., at Attached Ex. E. Such links include: “State Water Heaters,” “Hot Water Heater Not Working,” “50 Gallon Hot Water Heater,” “AO Smith Hot Water Heater,” and “Best Electric Hot Water Heater.” Id.
Respondent is using the <statehotwaterheater.com> domain name in bad faith. First, Respondent has several adverse UDRP findings against it. Second, Respondent attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website by including pay-per-click hyperlinks which presumably redirect to competitors of Complainant. Id.
Respondent’s Contentions in This Proceeding:
Respondent did not submit a response for the Panel’s consideration. The Panel notes that Respondent registered the <statehotwaterheater.com> domain name November 9, 2005.
Complainant established rights and legitimate interests in the disputed domain name.
Respondent has no such rights or legitimate interests in the disputed domain name and/or Complainant’s protected mark, which is contained in its entirety within the disputed domain name.
Respondent registered a confusingly similar domain name using Complainant’s protected mark without license, permission or authority to do so.
Respondent registered and used the disputed domain name 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."
Paragraph 4(a) of the Policy requires Complainant to 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.
Given 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(f), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 (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.”).
Identical or Confusingly Similar:
Complainant uses the STATE mark in connection with its business of providing hot water heaters. Complainant registered the STATE mark with multiple trademark agencies, including the USPTO (Reg. No. 2,662,408, registered Dec. 17, 2002) and its demonstration of trademark registration is sufficient to establish Policy ¶ 4(a)(i) rights in the STATE mark. See Compl., at Attached Ex. C. A complainant’s valid USPTO registration is sufficient to establish rights in a mark under a Policy ¶ 4(a)(i) analysis, irrespective of a respondent’s country of origin. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), although Respondent reportedly resides in the Isle of Man). Therefore, this Panel finds that Complainant established Policy ¶ 4(a)(i) rights in the STATE mark.
Next, Complainant argues that Respondent’s <statehotwaterheater.com> domain name is confusingly similar to the STATE mark as it incorporates the mark in its entirety, while adding the descriptive phrase “hot water heater” and the gTLD “.com.” Such alterations to a mark do not overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Further, Complainant notes that it uses the <statewaterheaters.com> domain to promote its own business; and while Complainant does not assert rights in the STATEWATERHEATERS.COM mark in its entirety, the Panel agrees that such a domain holding bolsters the presumption that Respondent registered a domain name with such terms in an industry-specific context to confuse consumers searching for Complainant online. Therefore, the Panel finds that Respondent’s <statehotwaterheater.com> domain name is confusingly similar to the STATE mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006); (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <statehotwaterheater.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name and that Complainant did NOT consent to Respondent’s use of the STATE mark. See Complainant’s Exhibit B, the WHOIS information regarding the disputed domain name, listing “Domain Administrator / DVLPMNT MARKETING, INC” as registrant of record. Respondent failed to submit a response in this proceeding. Therefore, in light of the available evidence, this Panel agrees that no basis suggests that it would be appropriate to find Respondent to be commonly known by the disputed domain name under a Policy ¶ 4(c)(ii) evaluation. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Further, Complainant argues that Respondent is not making a bona fide offering of goods or services, and is not making any legitimate noncommercial or fair use through the <statehotwaterheater.com> domain name. Rather, Complainant contends that the domain name resolves to an active website displaying pay-per-click advertising for water heaters and related goods and services. See Compl., at Attached Ex. E. Such links include: “State Water Heaters,” “Hot Water Heater Not Working,” “50 Gallon Hot Water Heater,” “AO Smith Hot Water Heater,” and “Best Electric Hot Water Heater.” Id. Complainant asserts that these links directly compete with its business of providing hot water heaters. Such competitive use by a respondent of Complainant’s mark without permission is not a bona fide offering of goods or services, and is not a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant.” The Panel finds no bona fide offering or a “legitimate noncommercial or fair use.”).
This Panel agrees that Respondent is not making a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the <statehotwaterheater.com> domain name under a Policy ¶¶ 4(c)(i) and (iii) analysis.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent registered and used the <statehotwaterheater.com> domain name in bad faith. Complainant asserts that Respondent has numerous adverse UDRP findings. Complainant cites to the following cases on page 6 of the Complaint: Wal-Mart Stores, Inc. v. Domain Administrator, DVLPMNT MARKETING, INC., D2016-0077; Milltronics, USA, Inc. v. DVLPMNT MARKETING, INC., D2014-1995; and FirstMerit Corporation v. DVLPMNT MARKETING, INC., D2014-1995. Panels have seen history of adverse UDRP findings as indicative of evidence of bad faith in a current case. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶4(b)(ii).”). Accordingly this Panel finds that Respondent demonstrated bad faith under Policy ¶ 4(b)(ii) with these multiple bad faith filings and determinations.
Complainant also contends that Respondent attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation or endorsement of the website. See Compl., at Attached Ex. E. The Panel agrees with Complainant and holds that Internet user confusion subsequently results in the clicking of included competing hyperlinks, which presumably nets Respondent financial gain. This supports findings of bad faith disruption and attraction for commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See Staples, Inc. and Staples the Office Superstores, LLC v. Pablo Palermo, FA 1557032 (Forum June 9, 2014) (“Respondent’s use of the at-issue domain name in connection with a click-through website promoting links to Complainant’s competitors demonstrates bad faith under Policy ¶ 4(b)(iii) as such use disrupts Complainant’s business.”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
Complainant further argues the <statehotwaterheater.com> domain name only includes Complainant’s previously held <statewaterheaters.com> domain, while adding the descriptive word “hot” and deleting the letter “s” to make a typographical error. The argument suggests that Respondent uses typosquatting to fill out the terms of this disputed domain name and such typosquatting is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Twitter, Inc. v. Domain Admin, FA1503001607451 (Forum Apr. 2, 2015) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark when searching for the mark’s associated products or services. In doing so the wayward Internet users are directed to a web presence controlled by the domain name’s registrant where their accidental visits may be exploited. Here, Respondent simply changes a single letter in Complainant’s trademark before incorporating the mark into the instant domain name. Respondent’s typosquatting, in itself, would be evidence of Policy ¶ 4(a)(iii) bad faith.”). Although Complainant here did not argue for rights in the STATEWATERHEATERS.COM mark, Complainant complained only of Respondent’s use of the STATE mark, Complainant’s typosquatting argument might seem to fail on its face due to Respondent’s addition of “hotwaterheater.com” to the STATE mark. In its essence, the domain name misappropriates Complainant’s primary identity, the STATE mark. While Respondent adds the “hotwaterheater.com” to the STATE mark, such purposeful word usage does not amount to inadvertent misspelling or typosquatting, but it provides strong proof that Respondent had actual notice and knowledge of the association of Complainant’s STATE mark and the water heater industry. For that reason, the Panel finds no true typosquatting, but it finds a strong showing of bad faith.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <statehotwaterheater.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 30, 2016
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