WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Victor Equipment Company v. Domain Park Limited
Case No. D2008-0049
1. The Parties
The Complainant is Victor Equipment Company, United States of America, represented by Thompson Coburn LLP, United States of America.
The Respondent is Domain Park Limited, Germany.
2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC (herein the domain name in dispute).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2008. On January 15, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On January 15, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 January 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2008.
The Center appointed J. Nelson Landry as the sole panelist in this matter on February 18, 2008. 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 has designed and manufactured a broad range of gas torch and welding equipment, and marketed and sold same in association with the trademark VICTOR since 1916, according to the date of first use in commerce mentioned in U.S. registration 896,882. The Complainant has also expended efforts and money in developing goodwill under the VICTOR trademark throughout the world.
The Complainant has established a multinational family of VICTOR trademarks throughout the world including three U.S. registrations and over twenty-nine foreign registrations including Germany, the country of the Respondent, for the said trademarks in association with cutting and welding torches as well as other gas regulating equipment (herein the “VICTOR Trademark” or the “Trademark”).
The Complainant maintains an active presence on the Internet, primarily through the website of its parent company, Thermadyne Holdings Corporation. The said website is located at “/victor”, on which the Complainant promotes many of its products under its VICTOR Trademark.
The domain name in dispute was registered by the Respondent on October 12, 2007.
The Respondent is not a licensee of the Complainant and has never been affiliated, connected, sponsored or endorsed by the Complainant. The WhoIs record in evidence does not show that the Respondent is a corporation commonly known by the name “victor-torch” and a search of the current U.S. Patent and Trademark Office records reveals no applications or registrations for any trademarks incorporating the term “victor” in the name of the Respondent.
In 2007, the Complainant learned that the Respondent had registered the domain name and did not send any cease and desist letter nor any request to the Respondent seeking the transfer of the domain name in dispute.
According to the evidence submitted by the Complainant, it appears that the Respondent has previously registered several domain names incorporating other well-known trademarks such as NIKE, REEBOK, and BMW. A review by the Complainant of about twenty WIPO and National Arbitration Forum UDRP proceedings and panel decisions rendered in 2007 in which the present Respondent was the named respondent, discloses that the Respondent did not file a response in any of those proceedings in which it was a party respondent.
5. Parties’ Contentions
A. Complainant
The Complainant represents that it has designed, manufactured and marketed a broad range of gas torch and welding equipment for nearly a century in association with the VICTOR Trademark and has expended efforts and sums of money developing the fame and goodwill of its trademarks throughout the world and that, as a result thereof, the Complainant contends to be the world leader in gas apparatus in providing both superior quality and reliable and safe products and that the VICTOR Trademark in which it has rights, is one of the most famous trademarks in the world for gas torch equipment and welding products.
The Complainant submits that the domain name in dispute wholly incorporates its VICTOR Trademark, merely combining the Trademark with the descriptive term “torch” wherein the term “victor” is the dominant portion of the domain name in dispute and that the descriptive term “torch” has no legal significance in this context and consequently the domain name in dispute is confusingly similar to the Complainant’s Trademark. See Volvo Trademark Holdings AB v. Unasi, Inc.,WIPO Case No. D2005-0556 and AT&T Corp. v.WIlliam Gormally,WIPO Case No. D2005-0758.
The Complainant further submits that the term “torch” clearly describes the goods with which the Complainant uses its VICTOR Trademark and that the Respondent’s use of the Complainant’s Trademark in connection with this term is likely to increase consumer confusion. See Dr. Ing. H.c.F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888.
The Complainant contends that the Respondent has no rights or legitimate interests in the domain name in dispute in view of the fact that the domain name in dispute was first registered on October 12, 2007, with over 90 years of continuous use of its VICTOR Trademark in connection with gas torch equipment and welding products. According to the Complainant, it is the world leader in gas apparatus, providing products of reliable, safe and superior quality.
The Complainant further represents that the Respondent has not used the domain name in dispute in connection with a bona fide offering of goods or services. Rather, the Respondent is using the domain name in dispute in connection with a site to divert visitors to unrelated websites which kind of use has been repeatedly held by UDRP panels as not qualifying as a bona fide use of a domain name. See Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo,WIPO Case No. D2004-0990; Air Austral v. WWW Enterprise, Inc.,WIPO Case No. D2004-0765 and Microsoft Corporation v. Gioacchino Zerbo,WIPO Case No. D2005-0644.
According to the Complainant, the Respondent is not a licensee of the Complainant and has never been affiliated, connected, sponsored or endorsed by the Complainant, is not one commonly known by the name “victor-torch” and finally, does not have in its name any U.S. Patent and Trademark Office applications or any registrations for at least one trademark incorporating the term “victor”. Under such circumstances, it is inconceivable to the Complainant that the Respondent would have any rights or legitimate interests in the use of the domain name in dispute. See Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403. It is reasonable to presume that the Respondent’s only interest in using the domain name in dispute is to trade off the goodwill of the Complainant for its commercial benefit. See Saint-Gobain Performance Plastics Corporation v. Forum LLC,WIPO Case No. D2006-0204 and MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC,WIPO Case No. D2006-0550.
The Complainant contends that the Respondent registered the domain name in dispute and began operating a website offering links only to sites that provide information about virtually identical goods under a domain name incorporating the Complainant’s Trademark and that the Respondent is thus competing with the Complainant by providing sponsored listings that link to websites offering the goods of the Complainant’s competitors and that these facts support a finding that its registration and use of the domain name in dispute is in bad faith. See Microsoft Corporation. v. Gioacchino Zerbo,WIPO Case No. D2005-0644.
The Complainant further contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the services provided thereby. The term “victor” has absolutely no relationship to torches except to the extent the Complainant has established such relationship through longstanding and worldwide use of its VICTOR Trademark.
According to the Complainant, the Respondent presumably obtains a commercial benefit by providing such sponsored listings on its site, as operators of websites of this type generally receive revenue for each “click-through” by on-line consumers and such use of the domain name in dispute in connection with the relevant sites evidences the user’s bad faith use and registration thereof. See Volvo Trademark Holdings AB v. Unasi, Inc.,WIPO Case No. D2005-0556.
Considering the stated fame of the VICTOR Trademark, it is inconceivable to the Complainant that any entity may have registered the domain name in dispute in good faith and without knowledge of the Complainant’s Trademark, particularly in view of the fact that the website of Respondent provides links to sites of competitors of the Complainant. See Nike, Inc. v. B. B. de Boer,WIPO Case No. D2000-1397.
Paragraph 4(b)(ii) of the Policy provides that evidence of bad faith also exists if the circumstances indicate that the respondent has registered or acquired 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”. Thus, previous panels have repeatedly cited a pattern by the same Respondent of registering domain names that incorporate well-known trademarks of others in finding bad faith on the part of that respondent. See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409. The Respondent has, according to the evidence presented by the Complainant, engaged in such a pattern of conduct in that the Respondent has registered domain names incorporating other famous marks such as NIKE, REEBOK and BMW, amongst others, where each of these domain names is used in connection with a website that offers nothing more than “sponsored listings” providing advertisements for competitive products.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) 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
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has clearly established that it has used the VICTOR Trademark since 1916 in association with a broad range of gas torch and welding equipment and that pursuant to its use and registration of the VICTOR Trademark, it has rights in the said Trademark.
It has registered the Trademark in the United Sates of America and in many countries of the world, including Germany where the Respondent is located, claiming this long use. The Complainant states that it has spent considerable efforts and sums in developing and promoting its products under the Trademark and thereby built considerable distinctiveness, goodwill and fame associated with its VICTOR Trademark. Yet it does not adduce any factual evidence of sales volume and promotion costs to fully support this conclusion of fame. The Panel nevertheless finds that the Complainant has valuable rights in the Trademark VICTOR and has, by its use, marketing and promotion, developed considerable goodwill thereunder.
The domain name in dispute consists of the distinctive term Victor to which the Respondent added the descriptive word “torch”. This additional word does not diminish in any way the confusion that is created by the domain name in dispute. It has been found in many UDRP panel decisions that the addition of such descriptive term does not alter the presence of confusing similarity. See Volvo Trademark Holdings AB v. Unasi, Inc.,WIPO Case No. D2005-0556 and AT&T Corp. v. WIlliam Gormally,WIPO Case No. D2005-0758. Furthermore, as the Complainant contends, this Panel concurs with earlier panel findings that the Respondent’s use of the Complainant’s Trademark in connection with this descriptive torch term is likely to increase consumer confusion. See Dr. Ing. H.c.F. Porsche AG v. Vasiliy Terkn,WIPO Case No. D2003-0888.
This Panel finds that the domain name in dispute is confusingly similar to the Trademark of the Complainant.
The first criterion has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks right or legitimate interest in the domain name in dispute by stating that the Respondent has never been known by the domain name in dispute and is not making any legitimate non-commercial or fair use of the domain name in dispute.
Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to register the domain name in dispute and make use of the Complainant’s Trademark. There is no evidence that the Respondent has ever engaged in any legitimate business under the domain name in dispute, was known by the name “victor-torch” and has any rights or legitimate interest in said domain name. It is certainly fair for this Panel to conclude that the holding of the domain name in dispute denies the Complainant access to the use of the domain name corresponding to its Trademark.
The Complainant, relying on earlier UDRP panel decisions, has demonstrated that the Respondent has engaged in objectionable activities, quite the opposite of the bona fide type of activities contemplated under the Policy, namely the diversion of Internet traffic by the Respondent to other unrelated websites, the intentional attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the services provided thereby. It is inconceivable to this Panel that the Respondent has no knowledge of the Complainant’s Trademark when the Respondent associated it with the word torch which describes the class of products of the Complainant upon registering the domain name in dispute.
The Panel finds that the Respondent does not have any right or legitimate interest in the domain name in dispute.
The second criterion has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to he 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 website 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 website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the domain name in dispute was registered and used in bad faith.
The evidence and circumstances of this case are such and overwhelming so as to leave no other conclusion to this Panel that the domain name in dispute has been registered in bad faith. Not only is the VICTOR Trademark registered and used in at least 30 countries in the world, including Germany where the Respondent is located, the combination of the distinctive term “victor”, the Trademark, with the descriptive word “torch” clearly related to the products of the Complainant and also of competitors of the Complainant to which the Internet visitors to the website of the Respondent are directed by sponsored links and the impressive number of twenty panel decisions in the past year involving the same Respondent, leaves no room for any other conclusion to this Panel that the domain name in dispute was registered in bad faith in full awareness of the Trademark rights of the Complainant with the deliberate intention of benefiting from the confusion caused by the similarity between the Trademark and the domain name in dispute and from the good-will associated with the VICTOR Trademark.
The evidence adduced by the Complainant indicates to this Panel that the Respondent uses the domain name in dispute to intentionally attempt to attract, for commercial gain Internet users by creating a likelihood of confusion with the Trademark of the Complainant. This conduct constitutes evidence of bad faith use, in that the Respondent is trying to profit from the reputation of the Complainant’s Trademark, by increasing the traffic on its website through the exact reproduction of a third party trademark.
Finally, the mere fact that the Respondent has been involved in a pattern where so many similar registrations and use of other parties’ trademarks and violation of their owners’ rights as in the present case support this Panel in finding that the Respondent has used the domain name in dispute in bad faith, having engaged in a pattern of objectionable conduct, capitalizing on the good-will associated with the VICTOR Trademark and the confusion of the Internet visitors generated by the similarity of the Trademark and the domain name in dispute.
The Panel finds that the domain name in dispute has been registered in bad faith and also used in bad faith.
The third criterion has been met.
7. Decision
The Panel concludes that:
(a) the domain name is confusingly similar to the Complainant’s Trademark; and
(b) the Respondent has no rights or legitimate interest in the domain name in dispute; and
(c) the domain name in dispute has been registered and is being used in bad faith.
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.
J. Nelson Landry
Sole Panelist
Date: March 3, 2008
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