WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren
Case No. D2000-0021
1. The Parties
The Complainant is Ingersoll-Rand Co., a corporation organized under the laws of the State of New Jersey, United States of America, having its principal place of business at Woodcliff Lake, New Jersey, United States of America. The Respondent is Frank Gully, an individual resident in Salisbury, Maryland, United States of America, d/b/a Advcomren.
2. The Domain Name(s) and Registrar(s)
The domain names at issue are , , and which domain names are registered with Network Solutions, Inc. ("NSI") based in the State of Virginia, United States of America.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on January 28, 2000, and the signed original together with four copies forwarded by express courier under cover of a letter of the same date. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated February 4, 2000.
On January 31, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain names at in issue are registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar�s Whois database for the registrant of the disputed domain names, the technical contact, the administrative contact, and the billing contact; (4) provide a copy of the registration agreement that was in effect at the time of the original registration of the domain names, as well as any subsequent amendments to the agreement; (5) provide a copy of the domain name dispute policy (if different from ICANN�s Uniform Domain Name Dispute Resolution Policy) that was in effect at the time of the original registration of the domain names, as well as any subsequent amendments to the policy.
On January 31, 2000, NSI confirmed by reply e-mail that the domain names , , and are registered with NSI and that the Respondent, Advcomren, was the current registrant of the names, identifying Frank Gully as administrative, technical, zone, and billing contact.
NSI confirmed that the Service Agreement in effect bound the Respondent to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy").
A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on February 1, 2000. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules"), as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on February 4, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of February 23, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI�s Whois confirmation, as well as to postmaster@, postmaster@ and postmaster@; no e-mail addresses were found at any web page relating to the disputed domain names. In addition, the complaint was sent by express courier to all available postal addresses. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
On February 23, 2000, in view of the Complainant�s designation of a single panelist (but without prejudice to any election to be made by the Respondent) the WIPO Center invited M. Scott Donahey to serve as a panelist in Case No. D2000-0021, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
On February 24, 2000, having received no Response from the designated Respondent, using the same contact details and methods as were used for the Commencement Notification, the WIPO Center transmitted to the parties a Notification of Respondent Default.
Having received on February 23, 2000, M. Scott Donahey�s Statement of Acceptance and Declaration of Impartiality and Independence, on February 25, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was March 10, 2000. The sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the file documents, the parties� Agreement, the Policy, the Uniform Rules, and the WIPO Supplemental Rules, , and without the benefit of any Response from Respondent.
4. Factual Background
The Complainant has provided evidence of the trademark "Ingersoll-Rand," registered with the United States Patent and Trademark Office for a term of 20 years from September 6, 1921, and renewed for three subsequent twenty-year terms, the fourth term of 20 years beginning on September 6, 1981. Complaint, Exhibit 1. The Respondent registered the domain names and on August 26, 1999, and the domain name on August 27, 1999. Complaint, Exhibit 2. Respondent is not authorized by Complainant to use Complainant's trademark. Complaint, 8.
Complainant is authorized to use and has used its trademark in connection with steam-engines, steam turbines, turbo-compressors, turbo-blowers, turbo-exhausters, reciprocating compressors, portable air-compressors, gas-compressors, gas boosters, gas-expanders, gasoline-extraction compressors, regulating devices for compressors, valves for compressors, airlift pumps, return-air pumping systems, vacuum-pumps, centrifugal pumps, reciprocating pumps, sinking-pumps, marine pumps, tire pumps, steam-condensers, air receivers, inter-coolers, after-coolers, air-filters, air-reheaters, pneumatic motors, pneumatic hoists, rock-drills, hammer-drills, pneumatic drills, rotary drills, submarine drills, pile-drivers, core-drills, coal-punchers, core-breakers, coal-drills, coal shearing machines, stone-channeling machines, coal cutters and loaders, coal-picks, drillbits, hollow and solid drill-blanks, chisel-blanks, mountings for drills, rock-drill columns, quarry-bars, tripods and gadder-frames, lubricating devices, water-spray attachments, drill-throttles, drill manifolds and headers, shank and bit punches, drill-sharpeners, blacksmith-tools for forming shanks and bits on rock-drill steel, sand-pumps, pneumatic stone-dressing tools, pneumatic saws, pneumatic rammers, portable pneumatic grinders, mounted grinding wheels, pneumatic hammers, riveting-hammers, chipping hammers, scaling-hammers, wood-boring machines, close-quarter drills, tamping-machines, railway-tie tampers, spike drivers, drift-bolt drivers, plug-drills, calking-machines, rivet-sets and retainers therefor, jam-riveters, rivet holders-on, grease-guns, fusible signal-plugs, oil-engines, ticket-canceling boxes, component parts of and repair parts for all of the above devices. Complaint, 5 and Exhibit 1.
Respondent's only commercial use of the domain names was to use them as links to web sites known as and , both of which displayed pornographic content in exchange for the payment of fees. Complaint, 9. Respondent has since agreed to cease and apparently has ceased such use. Complaint, 11. Respondent has denied Complainant's offer to pay the expenses Respondent incurred in registering the domain names in consideration for an assignment of the registrations to Complainant. Complaint, 11.
The domain names at issue are not, nor could they be contended to be, a nickname of Respondent or other member of his family, the name of a household pet, or in any other way identified with or related to a legitimate interest of Respondent.
5. Parties� Contentions
A. Complainant
Complainant contends that Respondent has registered as domain names marks which are identical or confusingly similar to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.
B. Respondent
Respondent has not contested the allegations of the Complaint.entered
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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." Since both the Complainant and Respondent are domiciled in the United States, and since United States� courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
that the respondent has no legitimate interests in respect of the domain name; and,
the domain name has been registered and used in bad faith.
The domain names registered by Respondent are identical or confusingly similar to Complainant's trademark, Ingersoll-Rand. Respondent has demonstrated no legitimate interests in respect of the domain names, nor is it reasonably possible that Respondent could do so, since the trademark, a hyphenated name combination, is venerable and distinctive.
The questions remaining are whether the domain names (1) have been registered in bad faith, and (2) are being used in bad faith. Robert Ellenbogen v. Mike Pearson, ICANN Case No. D00-0001, 6,B at 6; Telstra Corporation Limited v. Nuclear Marshmallows, ICANN Case No. D2000-0003, 7.4, at 8. It is Complainant's burden to establish bad faith registration and bad faith use. Policy, 4,a.
Paragraph 4,b of the Policy sets forth "in particular but without limitation" circumstances which "shall be evidence of registration and use of a domain name in bad faith." Those circumstances are:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The Panel believes that, while in some instances the question is a close one, Complainant has failed to meet its burden as to any of the four particular set of circumstances set out in Paragraph 4,b. The Panel is not persuaded that the registration of three very similar or identical domain names arises to the "pattern of conduct" required by 4,b(ii), and although Respondent appears to have realized commercial gain by intentionally attracting Internet users searching for the web site of Ingersoll-Rand Co. and by offering links to pornographic web sites where services were available for fees, it is highly unlikely that such Internet users, who were seeking the web site of a long-standing United States corporation, were likely to be confused that Complainant would deign to sponsor such links as or , or endorse the products or services offered there.
However, under the proper facts and circumstances even inaction can constitute "bad faith" use (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, ICANN Case No. D2000-0003, 7.12, at 10-11), and the Panel finds that Respondent has registered and is using the domain names at issue in bad faith. Respondent has failed to respond to the offer by the trademark holder to purchase the domain names at Respondent's out of pocket costs. Respondent has failed to respond to the allegations of the Complaint, and the Panel is permitted to draw such inferences therefrom as it considers appropriate. Uniform Rules, Rule 14(b).
Moreover, without deciding whether the trademark at issue is a "well-known" or "famous" mark, which decision is currently outside the scope of the mandate of this Panel, the Panel notes that the trademark has been registered and in continuous use for almost 80 years. In this regard, the Panel believes that the tarnishment rationale set out in the case of Panavision Int'l v. Toeppen, 945 F. Supp. 1296, 1304 (C.D. Cal. 1996), is applicable to the present situation, where the domain names were used by Respondent as links to pornographic sites.
The Panel is cognizant of the fact that 4,a(iii) uses the present tense when referring to use. The Panel believes that the term "is being used" does not refer to a particular point in time (such as when the Complaint is filed or when the Panel begins deliberations), but refers to the period of time following registration of the domain name at issue. See, Telstra Corporation Limited v. Nuclear Marshmallows, ICANN Case No. D2000-003, 7.6, at 9. If at any time following the registration the name is used in bad faith, the fact of bad faith use is established. Thus, the fact that upon remonstrance by Complainant's counsel, Respondent ceased using the domain names at issue as links to pornographic sites, cannot alter the fact that the bad faith act had occurred during the period following registration.
It should be noted that in the present situation there is no evidence or suggestion that Respondent's use of the links to pornographic sites was intended either as satire or as protected comment.Indeed, paragraph 4,b,i of the Policy, provides that "the following circumstances . . . shall be evidence of the registration and use of a domain name in bad faith: . . . circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark . . . for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name." Accordingly, the panel determines that respondent�s attempts to sell the domain name for consideration in excess of his investment of time and money relative to the domain name constitutes "use" of the domain name in bad faith.
7. Decision
For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are identical or confusingly similar to the trademark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain names, and that the Respondent�s domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4,i of the Policy, the Panel requires that the registration of the domain names , , and be transferred to the Complainant.
M. Scott Donahey
Panelist
Dated: March 9, 2000
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