Systron Donner Inertial, Inc. v. Britt Myers
Claim Number: FA1608001689889
Complainant is Systron Donner Inertial, Inc. (“Complainant”), represented by Richard S. Stockton of Banner & Witcoff, Ltd., Illinois, United States. Respondent is Britt Myers (“Respondent”), Georgia, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <systrondonner.com>, registered with GoDaddy.com, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 18, 2016; the Forum received payment on August 18, 2016.
On August 19, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <systrondonner.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 August 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@systrondonner.com. Also on August 22, 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 September 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" 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.
A. Complainant
Complainant contends as follows:
Complainant uses its SYSTRON DONNER mark in connection with its business of providing products including, but not limited to, sensor systems, inertial measurement units, and gyroscopes.
Complainant has registered the SYSTRON DONNER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,768,578, registered Sept. 30, 2003), which demonstrates Complainant’s rights in its mark.
Respondent’s domain is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the domain. Respondent is not commonly known by the terms of the domain, and Complainant has not authorized Respondent to use the SYSTRON DONNER mark. Further, Respondent is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain name resolves to a website containing links to third party suppliers offering products that directly compete with Complainant.
Respondent registered and is using the domain in bad faith. Respondent’s use of the domain to host competing hyperlinks constitutes bad faith, in violation of Policy ¶¶ 4(b)(iii) and (iv). Further, based on Complainant’s trademark registrations, it is clear that Respondent registered the domain with at least constructive knowledge of Complainant’s mark and rights therein.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO trademark registrations for its SYSTRON DONNER mark.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the SYSTRON DONNER mark.
Respondent is not authorized to use Complainant’s trademark.
The website addressed by the at-issue domain name displays click-through links to Complainant’s competitors.
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.
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(f), 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 (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.”).
The at-issue domain name is confusingly similar or identical to a trademark in which Complainant has rights.
Complainant demonstrates its rights in the SYSTRON DONNER mark under Policy ¶ 4(a)(i) through registration of such mark with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s domain name contains Complainant’s entire trademark less its space, and concludes with the gTLD, “.com.” The slight differences between the at-issue domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore the Panel finds that Respondent’s <systrondonner.com> domain name is confusingly similar or identical to Complainant’s SYSTRON DONNER trademark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Britt Myers” as the registrant of the at-issue domain name and there is no evidence before the Panel which suggests that Respondent is nevertheless known by the at-issue domain name notwithstanding the contrary WHOIS record. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is using the <systrondonner.com> to address a website containing links to third party suppliers offering products that directly compete with Complainant. Using the domain name in this manner demonstrates that Respondent is neither making a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) bad faith circumstances are present as well as other circumstances from which the Panel may conclude that Respondent acted in bad faith under Policy ¶ 4(a)(iii).
As mentioned above regarding rights and interests, Respondent uses the at-issue domain name to host competing hyperlinks. Such use constitutes bad faith, under both Policy ¶¶ 4(b)(iii) and (iv). See H-D Michigan Inc. v. Buell, FA 1106640 (Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Additionally, Respondent registered the <systrondonner.com> domain name knowing that Complainant had trademark rights in the SYSTRON DONNER mark. Respondent’s prior knowledge is evident because of the uniqueness of Complainant’s SYSTRON DONNER trademark and because the <systrondonner.com> website links to Complainant’s competitors. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit the domain name’s trademark value, rather than for some benign reason. Therefore, Respondent’s prior knowledge of Complainant's trademark indicates that Respondent registered and used the <enterprise.com.co> domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <systrondonner.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 22, 2016
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