WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BEI Industrial Encoders v. Jonathan Phillips
Case No. D2007-0702
1. The Parties
The Complainant is BEI Industrial Encoders, Goleta, California, United States of America, represented by an internal representative, United States of America.
The Complainant has named two Respondents: Jonathan Phillips, Chicopee, Massachusetts, United States of America; and OneandOne Private Registration, B, 1&1 Internet, Inc., Chesterbrook, Pennsylvania, United States of America. The Registrar has confirmed that the registered owner of the domain name is Jonathan Phillips, Chicopee, Massachusetts, United States of America. Accordingly, the Panel will treat Jonathan Phillips as the sole Respondent.
2. The Domain Name and Registrar
The disputed domain name is registered with Schlund + Partner.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2007. On May 11, 2007, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. On May 16, 2007, Schlund + Partner transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed amendments to the Complaint on May 25 and June 6, 2007. The Center verified that the Complaint, together with the amendments to 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 Respondent of the Complaint, and the proceedings commenced on June 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 10, 2007.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on July 20, 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.
4. Factual Background
Complainant BEI Industrial Encoders USA (BEI) makes rugged, reliable, well-sealed encoders, position sensors and signal conditioning electronics used for demanding industrial motion control applications in factory automation, motor feedback, robotics, web process control and instrumentation. It is the market leader in North America.
BEI owns U.S. Trademark Registration Nos. 2,380,305 and 2,380,306 for the mark BEI, as used in connection with detection, measurement or control of motion or pressure, including sensors, accelerometers, potentiometers, shaft encoders, linear encoders, gyroscopes and angular rate of change devices, electronic servo control circuits, and micro-electromechanical structures, namely pressure sensors, fluidic and optical control circuits. The mark was first used at least as early as July 9, 1976. Complaint, Annexes 4a and 5a. In addition to the ownership of the BEI marks, Complainant also owns a number of domain names that incorporate the term “bei”, including , and .
The disputed domain name was registered on September 29, 2005. The domain name was parked at the “S” website. In March 2006, Complainant’s counsel sent a “cease and desist” letter to S requesting that S take down the web page that had been posted at “www.b”. Complaint, Annex 3. S complied with this request. Complaint, Annex 25. Currently, the “www.b” address resolves to a blank page with no content. Despite S’s action, the Registrar, Schlund + Partner, permitted Respondent to renew the contested domain name with a “client transfer prohibited” status.
5. Parties’ Contentions
A. Complainant
Complainant asserts that the disputed domain name is identical to Complainant’s other beinencoders TLD domain names and confusingly similar to BEI’s other trademarks.
Complainant further argues that there is no evidence of Respondent’s use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. It contends that a “domain parking program” cannot legally be considered a bona fide offering of goods or services. Complainant notes that Respondent had an opportunity to produce evidence of any legal trademarks it might have associated with the domain name when the “cease and desist” letter was sent to S, but chose not to do so.
With respect to the issue of “bad faith” registration and use, Complainant maintains that the parking of a domain name can be considered an act of bad faith in view of the fact that Complainant’s marks are well-established and the BEI brand name and services are well-respected in the encoder industry. Complainant also indicates that the persistent pointing of the domain to the domain servers is further evidence of bad faith.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel concludes that that the disputed domain name is confusingly similar to the mark BEI. The addition of the descriptive term “encoders” and the use of the top-level domain “net” carry little weight in the analysis of confusing similarity under the Policy in view of the fact that both the mark and the domain name share the distinctive term “bei”
The Panel further finds that, as a result of its registrations and longstanding use of the BEI mark, Complainant has rights in the mark.
B. Rights or Legitimate Interests
Complainant contended that Respondent does not have any rights or legitimate interests in the disputed domain name and Respondent offered no evidence to the contrary. Under the circumstances, and as Complainant asserts, Respondent’s use of the domain name in connection with a “domain parking program” cannot be considered a legitimate use of the name in connection with the bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that, in view of Respondent’s passive holding of the disputed domain name, its failure to submit a Response, and the longstanding use of the BEI marks, Complainant has established that the domain name in issue was registered and is being used in bad faith. See Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
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 Complainant.
Jeffrey M. Samuels
Sole Panelist
Dated: August 3, 2007
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