WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Danaher Corporation v. Whois IDentity Shield /
Case No. D2007-0496
1. The Parties
The Complainant is Danaher Corporation of Washington, DC, United States of America, represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States of America.
The Respondent is Whois IDentity Shield / “Danaher Corporation”, of Vancouver, BC, Canada.
2. The Domain Name and Registrar
The disputed domain name is registered with Nameview Inc.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March�30,�2007. On April�3,�2007, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On April�10,�2007, Nameview Inc. transmitted by email to the Center its verification response identifying the Complainant as the registrant. On April�26,�2007, in response to a request by the Center, the Complainant confirmed that it did not have control of the domain name. 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”).
3.2 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�27,�2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May�17,�2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May�21,�2007.
3.3 The Center appointed Mary Vitoria, QC as the sole panelist in this matter on May�30,�2007. 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.
3.4 The language of the proceeding is English.
4. Factual Background
4.1 Because there has been no response, the following facts are taken from the Complaint and are accepted as true in the circumstances of this case.
4.2 The Complainant is a diversified technology leader that designs, manufactures and markets innovative products and services including electronic factory automation control systems components, namely electrical resolvers of various types. One of the Complainant’s key product lines is the HAROWE brand resolvers. The HAROWE trade mark has been used by the Complainant or its predecessors in interest in connection with resolvers since at least November 2001. On February�20,�2006, the Complainant applied to register the trade mark HAROWE in the United States of America for electronic factory automation control systems components, namely electrical resolvers, noise resistant brushless electrical resolvers, frameless electrical resolvers and household electrical resolvers.
4.3 The Respondent registered the disputed domain name on July�16,�2003. The Respondent uses the domain name to resolve to a website “www.” “for resources and information on Encoder and Resolver”. The website provides sponsored results for “Resolver”, “Brushless resolver” and “Housed Resolver” which are unrelated websites advertising and offering for sale products that either compete with or are unrelated to the genuine HAROWE products of the Complainant. Selection of the tab on called “Advertiser Info” leads Internet users to an online form that states: “if you are interested to be an advertiser in one of our websites, please fill up the form below”.
5. Parties’ Contentions
A. Complainant
5.1 The Complainant submits that the HAROWE trade mark is a coined and fanciful term having no denotative meaning, that the HAROWE trade mark is recognised and relied on as identifying the Complainant as the sole source of HAROWE resolvers and as distinguishing its products from the goods and services of others and that as a result the HAROWE trade mark has acquired substantial goodwill and is a valuable commercial asset. The Complainant submits that under paragraph 4(a)(i) of the Policy, complainants have rights in common law trade marks that have been in use over time, especially where a trade mark application has been filed: see Adobe Systems Inc v. Domain OZ, WIPO Case No. D2000-0057 and Danaher Corporation v. DYNAPAR.COM c/o Whois Identity Shield, WIPO Case No. D2006-1395.
5.2 The Complainant submitted that the Respondent’s domain name wholly incorporated the HAROWE trade mark, was identical to it and was so clearly similar to the Complainant’s HAROWE trade mark that it was likely to cause confusion amongst the Complainant’s customers and the consuming public. It asserted that it was well established that a domain name consisting of a trade mark was confusingly similar to the mark and did not create a new or different mark in which the respondent had rights and referred to Trendwest Resorts, Inc v. Kevin Tisdel, WIPO Case No. D2001-0987 and Adobe Systems Inc v. Domain OZ, WIPO Case No. D2000-0057. The Complainant asserted that it was likely that consumers would be confused over the sponsorship or origin of the domain name in dispute because it was virtually identical and this confusingly similar to the Complainant’s distinctive HAROWE mark.
5.3 The Complainant asserted that the Respondent had no legitimate use for a website with the domain name , that the Complainant’s adoption and use of the HAROWE mark preceded the Respondent’s registration of the domain name and that the Respondent clearly had knowledge of the Complainant’s HAROWE mark prior to registering the disputed domain name, this being evidenced by the fact that the Respondent had incorporated the distinctive mark in that domain name and by the fact that the Respondent had on its website referred to those specialised items in which the Complainant traded, see Danaher Corporation v. DYNAPAR.COM c/o Whois Identity Shield, WIPO Case No. D2006-1395.
5.4 The Complainant further asserted that the Respondent used the domain name to resolve to a website that attempted to pass itself off as an official HAROWE website by promoting itself as a website “for resources and information on Encoder and Resolver”. The Complainant also stated that the Respondent provided a menu of what purported to be “related searches” that promoted products that appeared as if they could be from the Complainant but when consumers clicked on the relevant links they were diverted to unrelated websites offering products that either competed with or were unrelated to HAROWE resolver products. The Complainant submitted that the unauthorised use of a trade mark as part of a domain name that provided links to websites offering products that competed with HAROWE resolver products, as well as some genuine HAROWE resolver products, did not constitute a legitimate interest in the domain name in connection with a bone fide offering of goods and services and referred, inter alia, to Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870, Nikon Inc v. Technilab Inc, WIPO Case No. D2000-1774 and Ferrari S.p.A. v. ASDAQ.com, WIPO Case No. D2004-0342.
5.5 The Complainant also asserted that the Respondent used the website to generate advertising fees and referred to an online form for potential advertisers which was accessible via the “Advertiser Info” tab on the Respondent’s website. The Complainant asserted that this led to the conclusion that the Respondent was soliciting advertisers to pay a fee to have their websites appear in the Respondent’s list of “sponsored search results”.
5.6 The Complainant stated that the Respondent was not and never had been a representative of the Complainant licensed to use the HAROWE mark and that, on information and belief, the Respondent was not commonly known by the name “harowe”.
5.7 The Complainant asserted that the Respondent had registered the disputed domain name in bad faith alleging that the trade mark HAROWE was an invented and coined word with a strong worldwide reputation, that the Respondent clearly knew of the Complainant’s use and adoption of the trade mark HAROWE prior to registering the domain name in dispute, yet nevertheless wholly incorporated the trade mark into a domain name that was intended to and did mirror the distinctive HAROWE trade mark. The Complainant asserted that the disputed domain name deliberately and misleadingly included the HAROWE trade mark and the use of the domain name would attract Internet users to the site in the erroneous belief that it had some connection with the Complainant’s trade mark as to source, affiliation or endorsement, see Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870.
5.8 The Complainant also relied on the fact that the Respondent used the domain name in dispute to provide links to websites that advertised and sold competitors’ products, as well as at least one that sold competitors’ products along with the Complainant’s HAROWE resolver products. The Complainant alleged that the Respondent had, therefore, registered the domain name in dispute primarily for the purpose of disrupting the business of the Complainant and that this was evidence of bad faith, see Kabushiki Kaisha Toshiba d/b/a Toshiba Corp v. Liu Xingdong,WIPO Case No. D2003-0408 and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty Ltd, WIPO Case No. D2001-0110.
5.9 The Complainant asserted further evidence of bad faith registration in that the Respondent had used the domain name in dispute with the intention of attracting, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of a product or service on the Respondent’s website in those cases where the links led to websites selling unrelated products, see Pfizer v. NA, WIPO Case No. D2005-0072.
5.10 The Complainant submitted that because the Respondent had no rights or legitimate interest in the use of , the conclusion could be drawn that this domain name was registered to facilitate dilution, cybersquatting or infringement of the Complainant’s HAROWE trade mark throughout the United States and the world and referred to Guiness Son & Co Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020.
5.11 The Complainant asserted, under paragraph 4(b)(iv) of the Policy, that the Respondent’s bad faith use of the disputed domain name was indicated by its intentional use of the website to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or any of the links provided on the website and cited Casio Keisanki Kabushiki Kaisha v. Jongchan Kim, WIPO Case No. D2003-0400.
5.12 The Complainant further asserted that the Respondent sought to profit from this illegitimate use effectively by selling advertisement space on its website to the Complainant’s competitors and unrelated parties; by providing links to websites advertising and promoting competitors’ products as well as genuine HAROWE products in order to earn an advertising fee. See, Pfizer v NA, WIPO Case No D2005-0072, Pfizer Inc v The Magic Islands, WIPO Case No D2003-0870 and Downstream technologies LLC v Bartels System GmbH, WIPO Case No D2003-0088.
5.13 The Complainant requested that the domain name be transferred to the Complainant.
B. Respondent
5.14 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 According to paragraph�15(a) of the Rules, the Panel must decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
6.2 In accordance with Paragraph�4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
6.3 Paragraph�4(a) of the Policy states that the burden of proving that all these elements are present lies on the Complainant. At the same time, in accordance with Paragraph�14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel may draw such inferences therefrom, as it considers appropriate.
6.4 Since the Respondent failed to respond to the Complaint within the stipulated time, the Panel assumes that the Respondent admits, and does not contest, all the facts asserted by the Complainant in the Complaint. Upon careful review of the evidential materials submitted by the Complainant to support its contentions, the Panel finds the following:
A. Identical or Confusingly Similar
6.5 The Panel notes that the Complainant’s use of the trade mark HAROWE in connection with resolvers pre-dates the Respondent’s registration of the domain name in dispute by about 20 months. The products in which the Complainant trades are specialized items and the Respondent specifically refers to such specialized items on its website “www.”. Independent creation and use by the Respondent of the trade mark HAROWE on the self-same specialized goods as those of the Complainant is extremely unlikely. In the absence of any explanation by the Respondent for the adoption of the mark HAROWE the Panel infers that the Respondent must not only have known of the Complainant’s trade mark before registering the domain name but also must have considered it to be a valuable name to adopt in connection with these specialized goods.
6.6 The Panel thus holds that by the date of the registration of the domain name, the Complainant had established substantial goodwill in the trade mark HAROWE in connection with resolvers and that it had common law rights in the mark HAROWE.
6.7 The Respondent’s domain name incorporates the whole of the Complainant’s trade mark HAROWE. The addition of a ccTLD or gTLD to the mark does not avoid confusing similarity. See, for example, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corp Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The generic top-level domain (gTLD) name “.com” is without legal significance since use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific service provider or enterprise as a source of goods or services.
6.8 The incorporation of the entirety of the Complainant’s trade mark HAROWE into the Respondent’s domain name is bound to lead consumers familiar with the Complainant’s trade mark into the belief that the domain name is one belonging to the Complainant or that the Complainant has authorized or licensed the use of its trade mark to the Respondent. Consumers are thus likely to be confused as to the origin or sponsorship of because the domain name is virtually identical and is thus confusingly similar to the Complainant’s trade mark HAROWE in which the Complainant has common law rights.
6.9 The Panel accepts the Complainant’s submissions in relation to the disputed domain name and finds for the Complainant on the first element.
B. Rights or Legitimate Interests
6.10 There is no evidence of any rights or legitimate interest of the Respondent in the disputed domain name. The Complainant states that it has not licensed or otherwise permitted the Respondent to use the trade mark HAROWE or to apply for any domain name including these trade marks. The Complainant has prior common law rights in the trade mark HAROWE which precede for many months the Respondent’s registration of the domain name in dispute.
6.11 The Respondent currently operates a website at . This website contains a number of sponsored links to a number of sites including some which, apparently, legitimately sell the Complainant’s products while others link to sites which sell the products of the Complainant’s competitors. The Complainant has alleged that the Respondent derives advertising revenue from those whose websites appear in the Respondent’s list of sponsored links. The Respondent has not denied this allegation. The Respondent does not appear to offer any goods or services of its own and the Panel is, therefore, prepared to infer that, as alleged by the Complainant, the Respondent is using the website itself as a source of revenue. The use of the name , being a name which is confusingly similar to the Complainant’s mark, is not fair use.
6.12 The use of a name which is confusingly similar to the Complainant’s mark as a domain name clearly extends beyond what is required to indicate the goods of the Complainant where these are legitimately being promoted and sold. Previous UDRP Panels have consistently held that persons who use marks in connection with what may be the genuine goods and services of the trade mark owner are not entitled on that basis alone to register and use domain names containing the trade mark, and particularly not where the domain name is used in connection with the promotion of goods or services other than those of the Complainant. See, for example: Hoffman-La Roche Inc. v. Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793 and Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079.
6.13 The Panel accepts the Complainant’s submissions that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. The Panel finds for the Complainant on the second element.
C. Registered and Used in Bad Faith
6.14 The Complainant submits that the Respondent registered the domain name in dispute in bad faith, knowing of the reputation of the trade mark in question, in an attempt to capitalize unfairly on the goodwill of the Complainant’s trade mark.
C. Registered and Used in Bad Faith
6.15 The Panel has already found that it is likely that the Respondent selected the domain name in dispute knowing of the reputation of the HAROWE trade mark. Accordingly, the disputed domain name was registered in bad faith: America Online Inc v. Anson Chan, WIPO Case No. D2001-0004.
6.16 Under Paragraph 4(b)(iii) of the Policy the registration of a domain name primarily for disrupting the business of a competitor is regarded as evidence of bad faith. There is no evidence that the Respondent is a competitor of the Complainant. Even if the Complainant and the Respondent were to be regarded as competitors, there is no evidence from which the Panel could infer that the primary purpose of registration was to disrupt the Complainant’s business. Instead, the evidence suggests that the business of the Respondent is the operation of a website for its own commercial gain and that it is using the Complainant’s trade mark to attract Internet users to its site.
6.17 According to Paragraph 4(b)(iv) of the Policy, the use of a domain name, with the intention to attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation, or endorsement of the disputed website or location or of a product or service on said website or location is regarded as evidence of bad faith.
6.18 The Panel is satisfied on the evidence that the Respondent knew of the HAROWE mark of the Complainant when it registered and used the disputed domain name. There is no natural connection between the mark HAROWE and the Respondent. The Panel draws the conclusion that the most likely reason the Respondent chose the domain name was to associate itself and its business with that of the Complainant and to profit from the reputation of the Complainant’s trade mark and thereby to attract Internet users to its websites.
6.19 The Panel concludes that by registering and using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s HAROWE trade mark as to the source, sponsorship, affiliation, or endorsement of the business through the use of the disputed domain name . The Panel concludes that the Respondent registered and has used the disputed domain name in bad faith.
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.
Mary Vitoria, QC
Sole Panelist
Dated: June 13, 2007
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