WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rheem Manufacturing Company v. Domaincar c/o Perthshire Marketing and Domaincar
Case No. D2006-0502
1. The Parties
The Complainant is Rheem Manufacturing Company, New York, New York, United States of America, represented by Arent Fox PLLC, United States of America.
The Respondents are Domaincar c/o Perthshire Marketing, Tortola, Virgin Islands, United Kingdom of Great Britain and Northern Ireland; and Domaincar, Panama, Panama (referred to hereafter collectively as “the Respondent”).
2. The Domain Names and Registrars
The disputed domain name is registered with DSTR Acquisition VII, LLC d/b/a D. The disputed domain name is registered with Capitoldomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2006. On April 20, 2006, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a D and Capitoldomains, LLC requests for registrar verification in connection with the domain names at issue. On April�21,�2006, DSTR Acquisition VII, LLC d/b/a D and Capitoldomains, LLC transmitted by email to the Center their verification responses confirming that the respective Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May�16,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2006.
The Center appointed Sir Ian Barker as the sole panelist in this matter on June 2, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a leading producer of water-heaters, furnaces, air-conditioners, swimming pool heaters and commercial boilers. The Complainant produces and markets its products under a variety of brands and trademarks, including the RUUD� brand. The Complainant uses the mark RUUD�, along with various word and design marks containing or comprising RUUD�, including the marks RUUD�, RUUD & Design�, RHEEM-RUUD UNIVERSAL & Design� and RUUD RELIABLE & Design�, in connection with a variety of air-conditioning and heating products.
The RUUD� brand is a well-recognized brand of air-conditioning and heating products in North America.
The Complainant and/or its predecessors have continuously used:
(i) the RUUD & Design� mark in the United States in connection with furnaces, heat pumps, and air conditioners since as early as 1991;
(ii) the RHEEM-RUUD UNIVERSAL & Design� mark in the United States in connection with commercial hot water heaters since as early as 1996; and
(iii) the RUUD RELIABLE & Design� mark in the United States in connection with air conditioning, heat pumps, furnaces, and air handlers since as early as 1998.
The Complainant is the owner of the following United States registered trademarks.
Mark
Registration No.
Registration Date
U.S. First Use
RUUD�
0737477
Sept. 11, 1962
1961
RUUD & Design�
1804327
Nov. 16, 1993
1991
RHEEM-RUUD UNIVERSAL & Design�
2125860
Dec. 30, 1997
1996
RUUD RELIABLE & Design�
2335049
March 28, 2000
1998
The Complainant is also the owner of 72 registrations/applications for the RUUD� marks in 55 countries, including Panama, for goods, such as air-conditioning and heating products. The Complainant is also the owner of domain names incorporating the RUUD� marks and operates websites at the domain names and , as well as at the domain name . These websites are used in connection with promoting products offered by the Complainant under the RUUD� marks.
The Complainant advertises and markets its air-conditioning and heating products under the RUUD� marks through printed publications, radio, television, the Internet, and a network of recognized dealers. The Complainant has expended significant resources in advertising and promoting its products that are sold and distributed with the distinctive RUUD� marks.
The websites accessed through the disputed domain names provide multiple sponsored links and hyperlinks to websites advertising and promoting air conditioning and heating products of firms other than the Complainant. The site has hyperlinks with titles such as “Ruud Heat Pumps” and “Ruud Air Conditioning”. There are also pop-ups for various commercial websites.
A recent search of public records concerning the Respondent shows no results for the registrant “Domaincar” or “Unasi” or the phone numbers 734-413-4989 and 309-406-7818. These phone numbers contain area codes for Michigan and Illinois, respectively, not for Panama or the Virgin Islands. The new postal address for the domain name corresponds to a listing for the Trident Trust Company (BVI) Ltd., not for “Perthshire Marketing” as listed in the Whois record.
The Respondent and/or an associated entity “Unasi” has been found to have registered and used numerous other domain names in bad faith in at least 70 UDRP proceedings. A review of these decisions shows many similarities to the present proceeding:
(i) the same or similar registrant name, postal address, email address and telephone/fax numbers;
(ii) links to third party websites offering a variety of products, with many being in direct competition to the Complainant;
(iii) pop-up advertisements;
(iv) false and inaccurate domain name registration contact details;
(v) fictitious registrant; and
(vi) registration and use of a domain name incorporating a third party’s trademark.
5. Parties’ Contentions
A. Complainant
The disputed domain names are confusingly similar to the Complainant’s registered marks.
The addition of the generic term “air conditioning” to the Complainant’s distinctive mark RUUD� in the disputed domain name does nothing to dispel the confusing similarity between this domain name and the RUUD� marks. It enhances confusion because the term “air conditioning” has an obvious relationship to the Complainant’s business.
Similarly, the addition of the descriptive word “direct” to the Complainant’s distinctive mark RUUD� in the disputed domain name also fails to dispel the confusing similarity between this domain name and the RUUD� marks. The descriptive term “direct” merely implies that the Complainant’s RUUD�-branded products may be purchased on the “www.” website.
The Respondent has no rights or legitimate interests in the disputed domain names. The Complainant gave it none. The Respondent does not come within paragraph 4(c) of the Policy nor has it endeavoured to show that it does.
The Respondent registered the disputed domain names in bad faith in order to prevent the Complainant from reflecting its marks in corresponding domain names.
The Respondent has shown an extensive “pattern of conduct” of registering domain names incorporating the trademarks of others in which the Respondent has no rights or legitimate interests. The evidence of the numerous UDRP decisions against the Respondent constitutes a “pattern of domain name warehousing” by the Respondent, thus supporting a finding of bad faith registration and use of the domain names by the Respondent in this proceeding. See, e.g., Duane Morris LLP v. Unasi Inc., WIPO Case No. D2005-1313 (“Respondent’s pattern of conduct and repeated appearance in UDRP proceedings as a respondent is another factor which the Panel has taken into account and which it considers to be strongly indicative of the Respondent’s bad faith registration and use”).
The Respondent, in using the disputed domain names is bad faith, has intentionally attempted to attract, for commercial gain, Internet users to the websites at the disputed domain names and has suggested an affiliation or association with the Complainant’s air-conditioning and heating products by trading upon the image and goodwill associated with the Complainant’s marks through its registration and use of the domain names, in which the Respondent has no legitimate rights or interests. As a result of such registration and use of the domain names and in view of the distinctiveness of the marks incorporated therein, the Respondent has created a likelihood of confusion with respect to the RUUD� marks as to the source, sponsorship, affiliation, and endorsement of the corresponding websites and of the products and services offered on the sites.
In addition, the Respondent – by using the domain names and associating the disputed domain names with the Respondent’s and sites – has intentionally directed Internet users looking for the Complainant’s official websites to the Respondent’s unauthorized sites. Thus, any sites accessible at the domain names will result in Internet users assuming, without conducting any further investigation, that the domain names were registered to the Complainant, and that such sites, and any content, advertising, and links thereon, were authorized and/or operated by the Complainant.
The Respondent registered the domain names as “Unasi” and has now changed the registration information to reflect “Domaincar” as the registrant. Since registering these domain names, the Respondent has also changed the postal addresses, telephone and fax numbers listed in each registration. The actual registrant of the domain names will never provide the correct contact information in the Whois records for the domain names but rather continue to hide behind false and inaccurate contact details. A review of the numerous UDRP decisions brought against the Respondent only confirms that providing such false and inaccurate contact information is common practice for the Respondent.
B. Respondent
The Respondent has made no submissions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy in order to succeed.
(i) the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(i) the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain names have been registered and are being used in bad faith.
The Complainant is entitled to the relief it seeks, having established all three elements under the Policy, as discussed below.
A. Identical or Confusingly Similar
The disputed domain names are confusingly similar to the Complainant’s numerous RUUD trademarks.
The addition of the word “airconditioning” in one disputed domain name is merely descriptive of one of the Complainant’s products marketed under the trademarks and does not diminish the confusion.
The word “direct” in the other disputed domain name implies that the Complainant’s products are available without the intervention of a retailer or other middle man. See Washington Mutual, Inc. v. Ashley Khong, WIPO Case No. D2005-0740 – domain name , mark WAMU.
B. Rights or Legitimate Interests
The Complainant has given the Respondent no rights in respect of the disputed domain names. Nor has the Respondent attempted to set up any of the matters covered by paragraph 4(c) of the Policy, which might have established a legitimate use of the disputed domain names. Based on the evidence in the case file, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Bad Faith Registration and Use
The Panel is able to infer bad faith use and registration from the pattern of conduct of the Respondent alleged by the Complainant. The Panel accepts the Complainant’s submissions on this element of the Policy. The Panel also notes that the Respondent has not denied the Complainant’s allegations, particularly that it or an associated entity has been involved as a respondent in numerous disputes under the Policy.
The Respondent, or its alter ego, knows well the provisions of the Policy and has a practice of targeting well-known marks. Moreover, its setting-up of websites which direct users to the products of the Complainant’s competitors is confusing, as are the references to the Complainant’s own products on those websites.
Also, the Respondent’s unreliable contact information strengthens a bad faith inference.
This is a clear case of cybersquatting with a respondent seeking to use well-known marks for its own purposes.
The Complainant must therefore succeed.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, and , be transferred to the Complainant.
Hon. Sir Ian Barker, QC
Sole Panelist
Dated: June 15, 2006
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