Dayton Electric Manufacturing Co. v. benjamin tan
Claim Number: FA1201001425083
Complainant is Dayton Electric Manufacturing Co. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is benjamin tan (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <speedaireaircompressor.com> (“the disputed domain name”) and it is registered with GoDaddy.com, Inc. (“GoDaddy”).
The undersigned, Mr. David H Tatham, 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.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on January 17, 2012; the Forum received payment on January 26, 2012.
On January 18, 2012, GoDaddy confirmed by e-mail to the Forum that the <speedaireaircompressor.com> domain name is registered with it, and that Respondent is the current registrant of the name. GoDaddy has also verified that Respondent is bound by its 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”) and ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy” (the “UDRP Rules”).
On January 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2012 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, as well as to postmaster@speedaireaircompressor.com. Also on January 27, 2012, 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.
An e-mail Response was received and determined by the Forum to be both timely and complete on February 9, 2012.
On February 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a subsidiary of W.W.Grainger, Inc. which is a Fortune 500 company, a global provider of maintenance, repair and operations supplies, and which ships products to 157 countries. Complainant itself claims to specialize in pneumatic products and compressed air systems which it sells under under the trademark SPEEDAIRE. It states that it owns numerous registrations of this trademark, which it first used in 1949, as well as having common law rights in it. Details of four trademark registrations for SPEEDAIRE in the USA and Canada were included in the Complaint.
Complainant claims to have made extensive use of the SPEEDAIRE name for its range of products, and to have promoted this name very widely and extensively.
Complainant contends that <speedaireaircompressor.com>, the disputed domain name, is identical or confusingly similar to its registered and distinctive trademark SPEEDAIRE, and that merely adding the words “air compressor” to its trademark within the domain name serves to heighten any confusion, as air compressors are precisely the goods offered by Complainant under its SPEEDAIRE trademark.
Furthermore, the addition of a generic word or words to an established trademark make it confusingly similar, as has been frequently held by Panels in proceedings under the Policy.
Complainant contends that Respondent’s website is a classic click-per-view site as it displays links which lead visitors to it – who may be genuine customers for Complainant’s products – away to other sites that are, or could be, associated with its competitors. This, Complainant contends, is not a bona fide offering of goods or services.
Complainant also contends that Respondent is not commonly known by the name <speedaireaircompressor.com>, does not operate any business under this name, and does not own a trademark or service mark for it.
Furthermore, users searching for its SPEEDAIRE products, on seeing the disputed domain name, will be confused into thinking that they were visiting one of Complainant’s websites. This cannot be fair or legitimate.
Complainant also contends that Respondent has tarnished and diluted its trademarks by diminishing consumers’ capacity to associate its trademark with its own quality products by using it in association with unrelated sites that provide goods or services that are not associated with, or related to, its own quality products and which, moreover, are products over which it has no control.
Bad faith is proved by the fact that Respondent has intentionally attempted to attract internet searchers to its website by creating a likelihood of confusion with its own trademark as to the source, sponsorship, affiliation or endorsement of the website, and for a product on that website.
Respondent has, according to Complainant, used its trademark SPEEDAIRE without any consent whilst he was on actual and constructive notice of Complainant’s rights through the registration and extensive use of this trademark. This registration and use predate the registration of the disputed domain name.
Complainant also claims that it has also been held in other disputes under the Policy that the receipt of income through click-thru fees from the use of a confusingly similar domain name is for commercial gain and is therefore an example of bad faith. Complainant contends that this is what Respondent is doing here.
B. Respondent
The Response took the form of two e-mails addressed to the Forum. The first, dated January 31, 2012 read –
“With reference to the case below, I write to inform you that the domain is registered with Amazon as I am an Affiliate of the Amazon Internet Marketing Program. This website gives publicity to Speedaire air compressors and you will see that users who come here are directed to buy this product from the Amazon website.
Should any user make a purchase of any product from the Amazon website, I will be paid a commission. Until today, I have not been paid any single cent which means no purchase was made as a result of this link. In other words, I did not have any monetary gain from this site. Furthermore, what I sought to do was to promote the Speedaire air compressors and it basically gives more exposure to the Speedaire products.
If your Forum is of the opinion that my site may confuse the users, we can terminate this site.
On the other hand, Speedaire Air Compressor is my company registered with Companies Commission of Malaysia. I believe I can still use the domain name where Malaysia is concerned.
Trust this clarifies. Thank you.”
The second e-mail was shorter and dated February 8, 2012. It read as follows –
“I am afraid the model response form is too complicated for me. I’ve already clarified as per my last email. I hope this is acceptable.”
C. Additional Submissions
Complainant filed an Additional Submission. This was received by the Forum on February 17, 2012. It was therefore out of time as, if one were to take Respondent’s first e-mail as his Response, any additional Response should, under Rule 7 of the Forum’s Supplemental Rules, have been received by February 5, 2012. Even if one were to calculate the date for filing any Response from Complainant from Respondent’s second e-mail, then under Rule 7 the Additional Response should have been on file before February 13, 2012, and the Additional Submission was not filed until four days after that.
However the Forum has explained that Complainant was under the mistaken impression that any Additional Response was not due until February 21.
Under Rule 10 of the UDRP Rules a Panel must “ensure that …… each Party is given a fair opportunity to present its case.” Consequently, as this Additional Submission contains further relevant information about Respondent, and as Complainant appears to have been genuinely mistaken as to the time limit for submitting it, the Panel will use its discretion under Rule 10 and take it into account.
In its Additional Submission, Complainant states that Respondent’s alleged corporate registration of the name ‘Speedaire Air Compressor’ with the Companies Commission of Malaysia is fraudulent because it was actually filed on January 31, 2012 which was after the filing of the Complaint on January 17, 2012. Complainant contends that not only is this evidence of Respondent’s bad faith but, even if it were not, then a company name registration, in the absence of any other supporting evidence, is no proof of any legitimate interest.
Furthermore, Complainant alleges to have discovered, in relation to Respondent’s submissions regarding “amazon associates”, that screen images show that Respondent is signed in as “aircomrevblo-20” which is a name that has no similarity to, or relation to, the name SPEEDAIRE AIR COMPRESSORS.
Complainant also states that Respondent is using a logo on the website at the disputed domain name that copies the colors and design elements of Complainant’s own SPEEDAIRE logo, and contends that this is evidence that Respondent is trying to confuse any visitors to the site and to pass itself off as Complainant.
In addition, Complainant contends that Respondent is a serial cybersquatter because it has discovered that Respondent is the owner of a number of domain names which, it claims, copy famous trademarks. These apparently lead a visitor to websites, some of which appear to be blogs and others of which are pay-per-click advertisements and links to the websites. Complainant listed 12 of these domain names which between them incorporate the trademarks BULOVA, CASIO, TIMEX, SKILL, and TAG.
Finally, Complainant contends that as a result of its many registrations for its SPEEDAIRE trademark, some of then being in South East Asia, Respondent must have known of Complainant and its trademark before the disputed domain name was registered.
Complainant is a long established manufacturer of air compressors which are made and shipped all over the world. These are sold under the name and trademark SPEEDAIRE.
Complainant supplied details of a number of registrations of this trademark in different countries, owned either by itself or by its parent Company W W Grainger, Inc. In particular, Complainant owns the following two US trademark registrations for SPEEDAIRE:
751,218 registered on June 19, 1963 in Class 7 for “Air Compressing and distributing apparatus and parts for use in conjunction therewith – namely, pressure regulators, pressure gauges, filters, filter-regulators, air line lubricators, air hoses, couplings, and blow guns” and claiming first use as from February 1951.
1,465,163 registered on November 17, 1987 for “Air compressors and parts therefore” and claiming first use as from January 1986.
An even earlier 1952 US trademark registration for SPEEDAIRE stands in the name of Complainant’s parent company W W Grainger, Inc.
Nothing is known, or has been supplied, concerning Respondent.
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.
The names to be compared in this case are – SPEEDAIREAIRCOMPRESSORS and SPEEDAIRE because it is customary, and well established, that when comparing a domain name with a trademark under the Policy, any gTLD suffix such as – in this case “.com” - should be ignored.
It is also well established, through a host of decisions under the Policy that if a domain name is merely the combination of a common word and a Complainant’s trademark, this is sufficient for a finding that it is confusingly similar to that trademark. For example, in the decision in the case of V Secret Catalogue, Inc. v. Wig Distributions, FA 301727 (Nat. Arb. Forum September 7, 2004) the Panel found that the domain name <victoriassecrethair.com> was confusingly similar to the trademark VICTORIA’S SECRET. Also, in The Gillette Co. v. RFK Associates, FA 492867 (Nat. Arb. Forum July 28, 2005) it was found that the domain name <duracellbatteries.com> was confusingly similar to the Complainant’s trademark DURACELL.
This present case is very similar to the case of Allianz of America Corporation v. Lane Bond ,FA 680624 (Nat. Arb. Forum June 2, 2006) in which it was found that the addition to Complainant’s trademark ALLIANZ of the generic term ‘finance’, which described the Complainant’s business, did not sufficiently distinguish the Respondent’s domain name from it. In the present case, Complainant’s trademark SPEEDAIRE has been added the words “air compressors”, which are the very products which Complainant sells under the trademark SPEEDAIRE.
As a result, the Panel finds that the trademark and the disputed domain name are confusingly similar and that paragraph 4(a)(i) is proved.
It is also well established that the burden for proving that a Respondent has no rights or legitimate interests in a disputed domain name rests with a Complainant. However, this puts him in the almost impossible position of proving a negative. So it is customary, when a Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in a disputed domain name, for the burden to shift to Respondent to show that it does have rights or legitimate interests. See, e.g., Hanna-Barbera Productions., Inc. v. Entertainment Commentaries, FA 741828 (NAF August 18, 2006); see also AOL LLC v. Jordan Gerberg, FA 780200 (NAF September 25, 2006).
In this case, the Panel finds that Complainant has indeed made out a prima facie case. Therefore, the burden for proving otherwise shifts to Respondent. However, in the opinion of the Panel he has failed to do so.
It is difficult to think of any reason why Respondent should have rights or legitimate interest in the disputed domain name which consists, as it does, of the trademark and generic term of a product which has been manufactured and sold by Complainant for many years. Moreover, it is a name and a product of which Respondent has indicated he is well aware.
Respondent attempts to justify his legitimacy by stating that he has a registered company name in Malaysia – where he is domiciled – for Speedaire Air Compressor, but detective work by Complainant has shown that this name was in fact only registered after the date when the Complaint was filed. It cannot therefore be evidence of legitimacy and, given that SPEEDAIRE air compressors have been sold all over the world for more than 60 years, it is difficult to imagine how a Malaysian individual could have any legitimate rights in the identical name.
In addition, Respondent has made no use whatsoever of the disputed domain name and it was held in Hewlett Packard Company & Hewlett Packard Development Company v. Alon Shemesh, FA 434145 (Nat. Arb. Forum April 20, 2005) that the passive holding of a domain name that is identical to a Complainant’s mark is not a bona fide offering of goods or services.
On the basis of these clear precedents, the Panel finds that paragraph 4(a)(ii) is also proved.
Complainant alleges that Respondent must have had constructive knowledge of its trademark SPEEDAIRE when he registered the disputed domain name. Constructive knowledge has not generally been held sufficient to support a finding of bad faith. However, one has to wonder why Respondent chose to use Complainant’s trademark and product name as part of his domain name.
Complainant accuses Respondent of being a serial cybersquatter on the basis of his registration of twelve domain names all of which appear to incorporate well-known trademarks. On the face of it, this could fall under the embargo set out in paragraph 4(b)(ii) of the Policy as it could constitute as pattern of conduct on the part of Respondent. However, more than the mere recital of allegedly similar domain name registrations is required to set such a pattern, and the WIPO Overview of Panel Views refers to a pattern as involving “multiple UDRP cases.” The Panel has not been presented with evidence of any Decisions under the UDRP in which Respondent has figured as a defendant. Thus, although the evidence is strong, it is circumstantial and insufficient to brand him as a ”serial cybersquatter”.
Paragraph 4(b) of the Policy sets out three other examples of what constitutes bad faith and, in this case, the Panel believes that Respondent is guilty of at least one of them. He has, the Panel believes, and by his own admission, registered the disputed domain name intentionally in order to attract users to the site. By doing so he can only thereby to create confusion with Complainant’s own product and trademark SPEEDAIRE. The fact that he has, as he says, not yet “been paid a single cent” is not relevant. He also says that his intention in registering the disputed domain name was to “give more exposure to the Speedaire products” but it is clear that his actual intention was to earn money from click-through fees by persons mistaking his site for the genuine article.
Therefore, it is the view of the Panel that when Respondent registered and used the disputed domain names, he did so in bad faith. See, e.g., Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum December 16, 2002) in which the Panel found bad faith where the method by which Respondent acquired the disputed domain names indicated that he was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum December 16, 2006) in which bad faith was found where the respondent was “well-aware” of the complainant’s YAHOO! Mark at the time of registration; and Albrecht v. Natale, FA 95465 (Nat. Arb. Forum September 16, 2000) finding registration in bad faith where there was no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name); see also Household International, Inc. v. Cyntom Enterprises, FA 95784 (Nat. Arb. Forum November 7, 2000) in which it was said that “Just as the employment of a well-known business name for no particularly good reason undermines any claim to legitimate interest, so it may also support an inference of a bad-faith attempt to use the name to harass or exploit its legitimate owner… ”
Consequently, the Panel finds that Respondent has acted in bad faith and that paragraph 4(a)(iii) has been proved.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <speedaireaircompressor.com> domain name be TRANSFERRED from Respondent to Complainant.
David H Tatham, Panelist
Dated: February 24, 2012
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