Rockwell Automation v. Mr. Rishabh Tejpal / E & A ENGINEERING SOLUTIONS
Claim Number: FA2112001976677
Complainant is Rockwell Automation (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Mr. Rishabh Tejpal / E & A ENGINEERING SOLUTIONS (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allenbradleyplc.org>, registered with Tucows Domains 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 10, 2021; the Forum received payment on December 10, 2021.
On December 10, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <allenbradleyplc.org> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 December 13, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2022 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@allenbradleyplc.org.
Also, on December 13, 2021, 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 January 11, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the ALLEN-BRADLEY established by its ownership of its international portfolio of trademark registrations described below and furthermore claims rights established by long and extensive use of said mark in its industrial automation business by Complainant and its predecessors in title since 1903.
Complainant’s states that its business has grown to having approximately 23,00 employees and clients in over 80 countries with annual sales of goods sold under its the ALLEN-BRADLEY and its other trademark ROCKWELL amounting to USD$ 6.7 billion in the fiscal year 2019.
Complainant has adduced evidence of its established Internet presence and hosting its primary website at the domain name <rockwellautomation.com>, and that its domain name <allen-bradley.com> redirects to this same site.
Complainant contends that the disputed domain name <allenbradleyplc.org> is identical or confusingly similar to its ALLEN-BRADLEY trademark because the disputed domain name, contains the mark in its entirety, merely adding the generic, descriptive term “PLC” and omitting the hyphen between the element “ALLEN” and “BRADLEY”.
Complainant further submits that the omission of the hyphen in Complainant’s ALLEN-BRADLEY does nothing to distinguish the disputed domain name from Complainant’s trademark that the generic Top-Level Domain (“gTLD") extension <.org> may be ignored for the purposes of ascertaining confusing similarity under the Policy. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 28, 2000) (finding that the top-level domain, such as “.net” or “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar)
Complainant adds that the letters “plc” are an acronym for “programmable logic controllers” which are used in small and even micro applications produced by Complainant, and as such, the term is closely linked and associated with Complainant’s products, brand and trademark, which serves to underscore and increase the confusing similarity between the disputed domain name and Complainant’s trademark.
Complainant then submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that the Registrar has identified the Registrant as “<personal name supplied but redacted by this Panel>/ E&A Engineering Solutions”, which does not resemble the disputed domain name in any manner and as Respondent is commonly known by the disputed domain name, it cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 0768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the Whois information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant further submits that its portfolio of trademark registrations described below is prima facie evidence of its exclusive right to use the ALLEN-BRADLEY trademark in commerce on or in connection with the goods and/or services specified in the registration certificates and asserts that it has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names.
Complainant adds that Respondent is not sponsored by or affiliated with Complainant in any way.
Referring to screen captures of the web pages to which the disputed domain name has resolved in the past and more recently, Complainant alleges that Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the disputed domain name. The screen captures show that previously, Respondent was using the disputed domain name’s website to offer and attempt to sell the products of Complainant’s competitors, which directly compete with Complainant’s own offerings. Past Panels have consistently held that selling competing goods, coupled with the unauthorized use of a complainant’s trademarks in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”).
Complainant adds that the screen shots show that currently the disputed domain name redirects Internet users to a blank parking page, and argues that Respondent’s failure to make active use of this disputed domain name evinces a lack of rights or legitimate interests in the disputed domain name, as confirmed by numerous past panels. See Nenę f/k/a Maybyner Rodney Hilario v. Master, Host, FA 0924563 (Forum Apr. 10, 2007) (Holding that absence of content at website evinced a lack of rights or legitimate interests in the disputed domain name).
Complainant then alleges that the disputed domain name was registered and is being used in bad faith, asserting that its ALLEN-BRADLEY trademark is known internationally, with trademark registrations across numerous countries and Complainant has marketed and sold its goods and services using this trademark since 1909, long before Respondent’s registration of the disputed domain name on December 6, 2016.
Complainant contends that by registering the disputed domain name that incorporates Complainant’s ALLEN-BRADLEY trademark in its entirety, with the mere addition of the letters “plc”, which is a reference to one of one Complainant’s products, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business.
Complainant adds that Respondent claims to be a distributor of Complainant’s products and has been using the disputed domain name as a website address to offer for sale Complainant’s products as well as those of Complainant’s competitors.
Complainant submits that in these circumstances it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” Complainant’s brands at the time the disputed domain name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Stated differently, ALLEN-BRADLEY is so closely linked and associated with Complainant that Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith because the disputed domain name is “so obviously connected with such a well-known name and products,…its very use by someone with no connection with the products suggests opportunistic bad faith.”
Complainant further argues that because Respondent is not one of Complainant’s authorized distributors, and the website at to which the disputed domain name resolves has been used to offer Complainant’s goods or services without Complainant’s authorization or approval, the registration and use of the disputed domain name have been made in bad faith under Policy ¶ 4(b)(iii). Past panels have confirmed that using a confusingly similar domain name to mislead consumers and then offering a complainant’s goods or services is evidence of bad faith registration and use. See Fossil, Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (Respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
Complainant also argues that Respondent’s use of the disputed domain name as a website address, constituted a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy ¶4(b)(iii) because Respondent’s domain name is confusingly similar to Complainant’s trademarks and the website to which it previously resolved, offered Complainant’s competitors’ products for sale. See S. Exposure v. S. Exposure, Inc., FA 94864 (Forum Jul. 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
In conclusion Complainant adds that the inactive holding of the disputed domain name in such circumstances, does not prevent a finding of bad faith use under the Policy. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names”).
B. Respondent
Respondent failed to submit a formal Response in this proceeding, but made brief submissions by email with a copy letter attached which this Panel has considered. These documents may be quoted in their entirety as follows:
“We are unable to understand why it has been filed in the first place. The domain name in question allenbradleyplc.org via email dated 13-dec-21 has been brought in for marketing purpose after signing of the attached document provided for your kind reference.
Now, when the contract was not further extended we had asked the marketing unit to take the website down since it was signed for three years specific to rockwell automation (sic) products only. The same domain has been made inactive for the past maybe 6months or more and it is not in use by our company now, as we are not directly promoting any product of Rockwell Automation by domain Name (sic).
Website decision was based on the below certificate attached for your reference and once the timeline of certificate was over the same was taken down also, even after we signed a 3year contract with the marketing firm for the same, unable to understand the very reason of filing such an irrelevant complaint. Hope this clarifies, but we are unable to understand by filing such an issue where you are trying to land?”
The letter dated May 15, 2017 was from “Rockwell Automation India Pvt. Ltd.” addressed to Respondent and signed by representatives of both Respondent and the sender corporation and states:
“We are pleased to include you as part of our Track SI Program. We will work closely for evaluating each other for Inclusion (sic) of M/s E&A Engineering Solutions Pvt. Ltd. in our System Integrator Program.
We expect this process to take approx. 6 months’ time and will need exchange of several documentations which shall be discussed from time to time, based on which the evaluation will move forward towards formal conclusion.
As per our discussion, we would like to work closely on the following aspect:
1. Development of New Customer & Application for Mid-Range Controllers (Compact Logix).
2. Monthly review of cases in hand and the actions planned.
3. Joint Sales/Marketing Activities to be carried out for business growth.
4. Development of accounts in Tier 2 cities.
5. Development of Z3 accounts.
6. A close coordination with distributor team is required to short list the customers in such cities.
We shall be working together closely till the end of process on case to case basis by providing you our case specific Support letter and interacting with your team for Business Discussion and Competency development.
We are looking forward for a long and fruitful association with your organization.”
C. Additional Submissions
No further submissions were requested from or received from Complainant.
Complainant provides industrial automation services under the ALLEN-BRADLEY mark for which it owns a portfolio of registrations including the following:
· Indian registered trademark ALLEN-BRADLEY, application number 357906, application date January 1, 1980, registered for goods in class 9;
· United States registered trademark ALLEN-BRADLEY (typed drawing), registration number 0712800, registered on the Principal Register on March 21, 1961 for goods in international class 9;
· Canadian registered trademark ALLEN-BRADLEY, registration number TMA128375, registered on October 19, 1962 for goods in classes 4, 7, 9, and 33.
Additionally, Complainant uses the ROCKWELL AUTOMATION mark on its goods and has an established Internet presence, hosting its official website to which its primary domain name <rockwellautomation.com>, created on November 5, 1997 resolves which is also accessibly via its domain name <allen-bradley.com>, created on February 25, 1998.
The record shows that the disputed domain name <allenbradleyplc.org> was registered on December 6, 2016 and is maintained by Respondent using a privacy service to conceal its identity on the published WhoIs.
The disputed domain name formerly resolved to Respondent’s website promoting its technology business, prominently displaying images of goods branded with Complainant’s ALLEN-BRADLEY mark, and at the time of the filing of the Complaint, redirected to a third-party parking page.
Respondent describes itself on the website to which the disputed domain name formerly resolved as a manufacturer and trader, providing electrical, automation and instrumentation engineering solutions and further states that it provides “Electrical Contractor Services, Technical Consultancy Services, Electrical Project Services…”
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided uncontested convincing evidence that it has rights in the ALLEN-BRADLEY mark established by its ownership of the trademark and service mark registrations described above and its extensive use of the mark in its industrial automation business.
The disputed domain name <allenbradleyplc.org> consists of Complainant’s ALLEN-BRADLEY, the letters “plc” and the gTLD extension <.org.>.
Complainant’s ALLEN-BRADLEY mark Is the initial, dominant, and only distinctive element in the disputed domain name. The omission of the hyphen between the words “ALLEN” and “BRADLEY” in the disputed domain name has no significance in context.
The evidence is that the letters “plc” would be considered in the context of Complainant’s and Respondent’s businesses as being an acronym for “programmable logic controllers” and so have no distinguishing character for the purposes of determining whether there is confusing similarity under Policy ¶ 4(a)(i).
In the context of this Complaint, the gTLD extension <.org> would be considered by Internet users as a necessary technical requirement for a domain name and it therefore has no distinguishing character either.
This Panel finds therefore that the disputed domain name is confusingly similar to the ALLEN-BRADLEY mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· the Registrar has identified the Registrant as “<personal name provided but this Panel has redacted it / E&A Engineering Solutions”, which does not resemble the disputed domain name in any manner;
· Respondent is not commonly known by the disputed domain name and so cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of ¶ 4(c)(ii);
· Complainant’s portfolio of trademark registrations described below is prima facie evidence of Complainant’s exclusive right to use the ALLEN-BRADLEY trademark in commerce on or in connection with the goods and/or services specified in the registration certificates;
· Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names;
· Respondent is not sponsored by or affiliated with Complainant in any way;
· the screen captures of the web pages to which the disputed domain name resolved in the past and the more recent inactive holding of the disputed domain name demonstrate that Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the disputed domain name;
· Respondent has used the disputed domain name’s website to offer and attempt to sell the products of Complainant’s competitors, which directly compete with Complainant’s own offerings.
· the more recent screen capture shows that currently the disputed domain name redirects Internet users to a blank parking page and Respondent’s failure to make use of this disputed domain name evinces a lack of rights or legitimate interests in the disputed domain name.
In its informal Response, Respondent asserts that it had an arrangement with “Rockwell Automation India Pvt. Ltd.” relating to business and product development, but there is very little detail about the nature or extent of this arrangement which Respondent states continued for three years.
The letter which has been submitted as an attachment to the informal email response was apparently signed by a representative of both Respondent and said “Rockwell Automation India Pvt. Ltd.”
The Complaint makes no reference to this arrangement nor does the Complaint make any reference to said “Rockwell Automation India Pvt. Ltd.” or give any indication as to what relationship, if any it has with Complainant.
Even giving Respondent the benefit of the doubt, and for the sake of argument accepting that the letter reflects an arrangement with a member of Complainant’ group of companies, this Panel notes that the letter does not make any reference to ALLEN-BRADLEY as a trademark or otherwise. Neither does the letter make any reference to any registration or use of domain names.
On the other hand, Complainant submits that Respondent is not an authorized seller of its products and this is not inconsistent with the terms of the letter quoted above in extenso.
There is no suggestion that the business arrangement granted Respondent any right or license to use the ALLEN-BRADLEY mark or to incorporate it into a domain name. It follows that the business arrangement on which Respondent relies did not create or grant or any right or legitimate interest for Respondent in the ALLEN-BRADLEY mark or the disputed domain name.
While it has not been expressly stated, it is inferred in the Response that Respondent had been using the website to which the disputed domain name resolved. up until six months ago, for the purposes of selling exclusively Complainant’s products and that the disputed domain name now redirects to a parking page.
The Complaint on the other hand argues that Respondent’s website offers competing products for sale.
The screen capture submitted in the Complaint shows that while the website to which the disputed domain name resolved contained images of products bearing Complainant’s branding, the content of the website was otherwise entirely devoted to Respondent’s business only, making no reference to Complainant’s business.
On the website, Respondent described itself as being a manufacturer and trader, providing electrical, automation and instrumentation engineering solutions that provides “Electrical Contractor Services, Technical Consultancy Services, Electrical Project Services…”
These are clearly goods and services which compete with Complainant’s offering.
Such use of the disputed domain name to promote Respondent’s own competing business does not create any right or legitimate interest for Respondent.
It is well established that once a complainant makes out a prima facie case that a complainant has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
The submissions made and evidence adduced by Respondent has failed to discharge that burden, and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Respondent’s defense is that it had a business arrangement for three years with the eponymous “Rockwell Automation India Pvt. Ltd.” as evidenced in the letter adduced in evidence in the annex to the Response, and that it registered the disputed domain name for the purposes of promoting the business arrangement.
The letter makes no reference whatsoever to ALLEN-BRADLEY as a name, mark or otherwise. All discussion relates to Respondent and said “Rockwell Automation India Pvt. Ltd.”
Respondent does not suggest that it communicated its wish or intention to register the disputed domain name to Complainant. Neither does Respondent suggest that it sought permission to use Complainant’s ALLEN-BRADLEY mark in the disputed domain name. Complainant has however asserted that Respondent was not given any license or permission to use the ALLEN-BRADLEY, mark and this has not been denied.
When registering the disputed domain name, it is the admitted intention of Respondent that the disputed domain name would reference Complainant and its products.
Respondent has admitted such use of the disputed domain name as the address of its website until six months ago. The website to which the disputed domain name resolved made no reference to Complainant, its business or its ROCKWELL or ALLEN-BRADLEY ranges of products and services, except that it displayed some images of products bearing the ALLEN-BRADLEY brand.
Otherwise the website was entirely devoted to the promotion of Respondent’s own competing business.
This Panel finds that by registering and using the disputed domain name without license or consent, in this manner, Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or of a product or service on its web site, which constitutes bad faith registration under the Policy.
Respondent cannot avoid a finding of bad faith registration by subsequently ceasing to use the disputed domain name as its website address. The passive holding of the disputed domain name redirecting Internet traffic to an inactive web page in these circumstances, constitutes further and continuing bad faith use.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in 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 <allenbradleyplc.org> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: January 12, 2022
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