WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Teledyne Technologies Incorporated v. Digi Real Estate Foundation
Case No. D2006-1054
1. The Parties
The Complainant is Teledyne Technologies Incorporated, Los Angeles, California, United States of America, represented by McGuireWoods LLP, United States of America.
The Respondent is Digi Real Estate Foundation, Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2006. On August 22, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On August 22, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative 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 August�24,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September�13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2006.
The Center appointed John Swinson as the sole panelist in this matter on October�22,�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.
The language of the proceeding is English.
4. Factual Background
The Complainant has registered marks with the United States Patent and Trademark Office as set out in the following table:
Mark
Services
Registration Number
Registration Date
TELEDYNE
Intl. Cl. 9: computers, computer peripherals and parts thereof, and equipment comprising printed circuits, flexible printed circuits, and circuit boards; and electronic goods; namely, instrumentation hardware, airborne fire control apparatus for missiles and ammunition, airborn targeting apparatus utilizing lazers, radar and infrared sensors, airborne navigational apparatus for identifying and targeting submarines, and airborne electronic displays
1,769,780
May 11, 1993
TELEDYNE
Intl. Cl. 9: emergency escape equipment, namely, electronic sequencers, canopy fracturing units, safe/arm mechanisms, and pyrotechnic transfer units for use in the field of vehicle escape and emergency egress
Intl. Cl. 12: automobile air bag ignition apparatus
Intl. Cl. 13: skin severance apparatus for warheads incorporating linear shaped charge assemblies
2,068,209
June 10, 1997
TELEDYNE
Intl. Cl. 5: spray-on tray adhesive, impression paste and trial cement for crowns and bridges for use in dentistry
Intl. Cl. 6: cold drawn seamless steel tubing in carbon, allow, stainless and high nickel alloys; carbon and allow steels in the form of hot-rolled bars, forgings, sheets and plates, billets, rings, coils, and specialized shapes; and collapsible metal tubes
Intl. Cl. 7: manual and pressure operated valves relief and reducer valves, and lock and shuttle valves all for machines; collapsible taps; thread-cutting machines and cutters therefore, chaser grinding machines, roller pipe cutting machines, thread rolling machines; hydraulic and pneumatic valves, air press manifolds, and fluid pumps; heavy machinery and equipment for specialized use for the material handling and sod industries, namely, material handlers for use in carrying material such as sod, lumber, concrete blocks, brick roofing materials and metal piping; sod harvesters; graders for conveying or moving earth; gas turbine engines for unmanned jet targets, drones, remotely piloted vehicles, cruise missile systems and manned aircraft
Intl. Cl. 9: electric storage batteries for aircraft emergency lighting, and battery grids and plates; solenoid-operated selector valves for aircraft; traveling wave tube amplifiers; microwave acoustic solid state delay units; welding electrodes; regulator valves, check valves; medical oxygen analyzers; and pollution monitoring analyzers
Intl. Cl. 11: devices for water supply, namely, household water filter units which attach to faucets, and filter cartridges therefore
Intl. Cl. 12: self-propelled heavy machinery and equipment for specialized use for the material handling and sod industries, namely, self-propelled material handlers for use in carrying various material such as sod, lumber, concrete blocks, brick, roofing materials and metal piping
Intl. Cl. 20: injection-molded plastic closures
1,545,047
June 27, 1989
TELEDYNE
Intl. Cl. 6: zirconium and hafnium oxides and tetrachlorides; tantalum and columbium oxides; and magnesium chloride
884,867
January 27, 1970
TELEDYNE
Intl. Cl. 9: instruments for measuring pressure, and force, and accelerometers
637,429
November 20, 1956
TELEDYNE
Intl. Cl. 14: zirconium, hafnium, columbium, tantalum, tungsten, and titanium metals and their alloys in the form of sheets, bars, rods, foil, tubes, wire, powder and forged shapes
886,184
February 17, 1970
TELEDYNE
Intl. Cl. 7: internal combustion piston engines for aircraft and parts for such engines; thread cutting machines, automatic nipple machines, coupling boring machines, precision tapping machines, thread rolling machines, gear finishing machines, chaser grinding machines and special machines
1,035,647
March 16, 1976
TELEDYNE
Intl. Cl. 7: Bakery machinery and equipment, namely, proofers, conveyors and dough mixers
Intl. Cl. 11: Bakery machinery and equipment, namely, ovens and coolers
Intl. Cl. 13: explosive ordinance-namely, explosive bolts explosive nuts, initiators, igniters, detonators, pressure terminals, squips, pressurization cartridges, detonating fuse devices, time delays, explosive cutters and destructors, explosive bridgewire components and systems; and small rocket motors, drogue guns, gas generators, reefing line cutters, and cable cutters
1,034,170
February 24, 1976
TELEDYNE
Intl. Cl. 9: oxygen, thermal conductivity, hydrocarbon, near infra-red, photometric, and flue gas analyzers; oxygen detectors; aircraft navigation instruments-namely, digital controllers and mini-computers, recorders, sensors and color shade sensors; protective housings and tripods; power transformers; transponders, radio and radar test sets and interrogator test sets; dental casting machines and dental lathes for laboratory use; amplifier input units, seismic profile facsimile recorder, seismic profiler magnetic tape recorders, marine seismic profilers and high resolution amplifiers; vacuum gauges; pressure, velocity and flow measuring instruments - namely, flowmeters, mass flow transducers, track plotters, monitorscopes, position indicators and recorders, intervalometers and transmitters; automatic liquid scintillation + gamma counters, thermoluminescent dosimeters, radiation dosimeters, thermoelectric generators, fuel cells of the type which receive a continuous supply of reactants for producing electrical energy and thermoelectric generators; bending stress monitors; mild, hardfacing and stainless steel electrodes; traveling wave electron tubes; microwave filters, frequency multiplexers, rf coaxial switches, rf waveguide switches, frequency multipliers; and high temperature wire, cable and tubing for electrical systems
1,027,815
December 23, 1975
TELEDYNE
Intl. Cl. 42: professional consultation in the mechanical and electrical engineering fields; research, planning, and materials analysis of instrumentation systems, pressure vessels and piping; and forensic engineering services – namely, investigation and testimony for products liability, automotive and industrial accident casualty reconstruction
1,063,567
April 12, 1977
CONTINENTAL
Intl. Cl. 21: electrical accessory components of internal combustion engines – namely, ignition system parts, alternators, generator, and starter motors
786,333
March 9, 1965
CONTINENTAL
Intl. Cl. 37: service, rework, maintenance, overhaul, repair, design, testing, research and field engineering of internal combustion engines, transmissions, and their controls, parts and accessories, for industrial, marine, transportation and aircraft power application of commercial and military customers and users; and for design, engineering, research and field test supervision of ram jets and ram jet motors, their parts, controls and accessories
820,497
December 13, 1966
CONTINENTAL
Intl. Cl. 7: Internal combustion engines for airplanes
2,547,164
March 12, 2002
CONTINENTAL and Design
Intl. Cl. 21: Power and lighting plant assemblies, comprising an internal combustion engine and an electric generator driven thereby
523,180
March 28, 1950
CONTINENTAL and Design
Intl. Cl. 23: Internal combustion engines, for general power application; complete industrial power units for general power application; each unit comprising an internal combustion engine mounted in a frame with cooling fluid and fuel tanks; replacement and spare parts for such engines and power units – namely, carburetors, induction manifold parts, fuel economizers for the carburetors and manifold, fuel heaters for said carburetors and manifolds, engine superchargers, governors and engine speed controlling mechanisms; gearing and transmission assemblies and clutches, lubricant pressure and scavenge pumps for same; fuel pumps and fuel injecting mechanisms, accessory mountings and accessory driving mechanisms, and engine vibration dampers
537,624
February 13, 1951
5. Parties’ Contentions
A. Complainant
The Complainant contends that:
(a) the domain name is identical to the Complainant’s marks TELEDYNE and CONTINENTAL;
(b) the Respondent has no rights or legitimate interests in respect of the domain name .
(c) the name of Respondent, Digi Real Estate Foundation, bears no connection to the domain name that would suggest that the domain names are related to a mark or trade name in which the Respondent has established rights.
(d) when an Internet user enters , in his or her Internet browser, the Internet user is directed to a web page which promotes goods related to aircraft engines and parts and which includes links to the websites of Complainant’s competitors.
(e) the disputed website’s references to “sponsored links” and “related websites” heighten the likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or services.
(f) when an Internet user enters the website or clicks any of the links on this website, the Internet user is bombarded by additional browser windows, including various promotions and “national opinion polls”. Based on this activity, it appears that the Respondent engages in a type of Internet marketing typically associated with disreputable establishments that seek to stimulate traffic to various promotions and advertisements by trapping the unsuspecting Internet user.
(g) the Respondent regularly registers multiple domain names incorporating trademarks for cybersquatting purposes. See e.g., Toyata Motor Credit Corporation v. Digi Real Estate Foundation, WIPO Case No. D2005-1111; Volkswagen AG v. Digi Real Estate Foundation, WIPO Case No. D2005-0952; The Vanguard Group Inc. v. Digi Real Estate Foundation, Claim No. FA0605000701259; DaimlerChrysler AG v. Digi Real Estate Foundation, Claim No. FA0606000724594; Whitney National Bank v. Digi Real Estate Foundation, Claim No. FA0602000637811.
(h) the Respondent’s pattern of conduct is evidence that Respondent has registered the domain name primarily to prevent the Complainant from reflecting the mark and trade names in a corresponding domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed in its Claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has valid trademark rights for two separate marks TELEDYNE and CONTINENTAL.
The disputed domain name combines the two words “teledyne” and “continental”.
Panels have considered that a disputed domain name containing a combination of a complainant’s marks can be confusingly similar for the purposes of satisfying element�4(a) of the Policy. See Royal Bank of Canada, Dain Rauscher Corporation and Dain Rauscher Incorporated v. RBCD Ain Rauscher, WIPO Case No. D2001-1236 and Schott Glas and Nec/Schott Components Corp. v. Necschott, WIPO Case No.�D2001-0127.
The disputed domain name and the Complainant’s marks are not identical (as submitted by the Complainant) but, for the reasons discussed above, the Panel considers that the disputed domain name is confusingly similar to the trademarks TELEDYNE and CONTINENTAL in combination, in which the Complainant has rights.
Therefore, the Panel finds that the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
The Respondent had the opportunity to respond and present evidence that it is a legitimate business that registered the domain name without knowledge of the Complainant’s rights. The Respondent chose not to do so. The Complainant is not entitled to relief simply by default, but the panel can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales eResolution Case No. NAF-0147, May 1, 2000.
In light of the Respondent’s failure to submit a Response, the Panel has considered the available evidence to determine if the Respondent lacks rights and a legitimate interest in the domain name.
There is no available evidence that the Respondent is commonly known by either “Teledyne” or “Continental” or a combination thereof. The WHOIS information for the domain the subject of this dispute identifies the Respondent as “Digi Real Estate Foundation” which bears no resemblance to the name of the Respondent.
The Complainant has not authorized the Respondent to use the trademarks in which it has rights. This lack of authorization was expressly communicated by representatives of the Complainant to the Respondent by letters on February 16, 2006 and March�21,�2006.
The Panel visited the website the subject of this dispute on September 30, 2006. The website features links to third-party websites, some of which offer aviation goods and services in competition with the Complainant. The Panel presumes that the Respondent receives fees from advertising these third-party links or from when a user clicks on such links.
As stated in Madonna Ciccone p/k/a Madonna v. Dan Parisi and “M”, WIPO Case No. D2000-0847, “use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.”
The Panel finds that this is not a bona fide offering of goods and services pursuant to the Policy, nor is it a legitimate noncommercial fair use within the meaning of paragraph 4(c)(iii) of the Policy.
The Panel finds that the Complainant has satisfied element 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In accordance with 4(a)(iii) of the Policy, the Complainant must prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith.
The Respondent’s use of the disputed domain name relies in all probability on the expectation that a proportion of Internet users who sought the Complainant’s trademarks would visit the website. Visitors to this website are directed to other websites offering competing goods and services. It is inferred that the Respondent gains a financial revenue stream from this activity.
Further, the Respondent has a history of registering multiple domain names incorporating trademarks for cybersquatting purposes. See e.g., Toyota Motor Credit Corporation. Digi Real Estate Foundation, WIPO Case No. D2005-1111; Volkswagen AG v. Digi Real Estate Foundation, WIPO Case No. D2005-0952; The Vanguard Group Inc. v. Digi Real Estate Foundation, Claim No. FA0605000701259; DaimlerChrysler AG v. Digi Real Estate Foundation, Claim No. FA0606000724594; Whitney National Bank v. Digi Real Estate Foundation, Claim No. FA0602000637811. The Respondent’s pattern of conduct is evidence that Respondent has registered the domain name in bad faith.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(c) of the Policy.
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 name, be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: October 10, 2006
Full & Egal Universal Law Academy