WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Empro Manufacturing Company, Inc. v. Graf Computers LLC, Justin Graf Case No. D2009-1732 1. The Parties
Complainant is Empro Manufacturing Company, Inc of Indianapolis, Indiana, United States of America, represented by Baker & Daniels, United States.
Respondent is Graf Computers LLC of Indianapolis, Indiana, United States, which is also referred to in the Response as Justin Graf (collectively “Respondent”) who is internally represented. 2. The Domain Names and Registrars
The Disputed Domain Names , and are registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2009. On December 17, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain names. On that same day, Network Solutions, LLC transmitted by email to the Center its verification response confirming that 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” or “UDRP”), 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 December 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2010. The Response was filed with the Center on January 12, 2010. The Center appointed Richard W. Page as the sole panelist in this matter on January 21, 2010. 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 claims rights in the trademark EMPRO SHUNTS (and design) dating back to as early as June 9, 1969, when it first started using the EMPRO SHUNTS mark in association with electrical shunts. Complainant filed for federal United States (U.S.) Registration of its EMPRO SHUNTS (and Design) mark and EMPRO SHUNTS (standard character) mark with the United States Patent and Trademark Office on February 24, 1970 and August 8, 2001, respectively. Registrations were entered on the principal registry on October 27, 1970 and August 6, 2002 respectively. These registrations shall be collectively referred to as the “EMPRO SHUNTS Marks”.
Complainant has been using EMPRO as part of its trade name for an even longer period of time, since at least 1950 when it started as a sole proprietorship, and since 1963 when Empro incorporated, as demonstrated in part by the “Articles of Incorporation of Empro Manufacturing Co., Inc.” approved and filed with the Indiana Secretary of State on August 29, 1963.
Respondent (Justin Graf) was an employee of Complainant which is controlled by David Graf, who is the father of Justin Graf.
Respondent acquired control over the Disputed Domain Names on October 3, 2009 with respect to and October 20, 2009 with respect to and . 5. Parties' Contentions A. Complainant
Complainant alleges that it has enforceable trademark rights in the EMPRO SHUNTS Marks and in the EMPRO trade name. The basis of Complainant's claims is its registrations of the EMPRO SHUNTS Marks and it continuous use of the name EMPRO for decades.
Complainant argues that the Disputed Domain Names are confusingly similar to the EMPRO SHUNTS Marks, pursuant to Paragraph 4(a)(i) of the Policy, because they wholly incorporate the phrase EMPRO SHUNTS with the addition of generic terms. The additional terms are the gTLD's “.com”, “.net” or “.biz” which are not distinctive.
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names, pursuant to paragraph 4(c)(i) of the Policy, and that Respondent cannot demonstrate any of the three circumstances of paragraph 4(c) of the Policy that may constitute rights to or legitimate interests in the Disputed Domain Names.
Complainant contends Respondent cannot demonstrate rights or legitimate interest in the Disputed Domain Names under paragraph 4(c)(i) of the Policy because Respondent has not made use of, or demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services.
Complainant alleges that Respondent only obtained control over the registration for the Disputed Domain Names through information gained by Justin Graf as an employee in charge of domain name filings for Complainant. Justin Grafhad possession and knowledge of the access codes for the registrations of the Disputed Domain Names while with Complainant. Respondent became the registrant of record with respect to the Disputed Domain Names on October 3, 2009 with respect to and October 20, 2009 with respect to and . Complainant alleges that this is not a bona fide or legitimate use of the Disputed Domain Names.
Complainant contends Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Names under paragraph 4(c)(ii) because it is not commonly known by any of the Disputed Domain Names. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the EMPRO SHUNTS Marks or the EMPRO trade name in a domain name or in any other manner.
Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Names under paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Disputed Domain Names. The reasons why Respondent's use of the Disputed Domain Names is neither bona fide nor legitimate are set forth above.
Complainant further alleges that Respondent has no rights or legitimate interests in the Disputed Domain Names because the Disputed Domain Names resolve to parked webpages providing links to information and vendors of various electrical tools, such as “Dc Generator,” “High Voltage Capacitor,” “DC Motor,” and more. When an Internet user clicks on these links, the user is directed to a webpage offering links to third-party products or services that compete with or complement Complainant's electrical products. Respondent is wrongfully using the Disputed Domain Names – which are virtually identical to Complainant's EMPRO SHUNTS Marks – to attract Internet users and advertisers in order to obtain commercial gain. Such conduct squarely falls within the definition of bad faith under the Policy, but also bars Respondent's action from being considered legitimate noncommercial or fair use.
Complainant contends that in the present case, the Respondent is not using the Disputed Domain Names for any legitimate commercial or fair use. Instead, Respondent is using the Disputed Domain Names to attract web traffic and divert it to the websites of third-parties in order to “wrongfully frustrate, confuse and misdirect Complainant's customers and increase Internet traffic to the websites of third–parties and competitors”.
Complainant further contends that it has not given Respondent permission, authorization, consent or license to use Complainant's EMPRO SHUNTS Marks or EMPRO trade name. Despite this fact the Disputed Domain Names resolve to a website enabling Respondent to cash in on the strength of Complainant's EMPRO SHPUNTS Marks, EMPRO trade name and the reputation of Complainant and the shunt and electrical products with which the EMPRO SHUNTS Marks are associated.
Complainant accuses Respondent of bad faith because Justin Graf is a former employee of Complainant and is the Registered Agent for Respondent. One of Justin Graf's responsibilities at the time he was an employee of Complainant was to identify and register Internet domain names that included the term EMPRO or EMPRO SHUNTS. Justin Graf registered the Disputed Domain Names while he was an employee of Complainant. The registrations for the Disputed Domain Names were secured using only monies of Complainant. Justin Graf's authorization as an Empro employee extended to registering the Disputed Domain Names on behalf and in the name of Complainant. Justin Graf was not authorized to register the Disputed Domain Names on behalf of or in the name of any other entity. Justin Graf was not authorized to change the registrant information in the WhoIs record for the Disputed Domain Names of Complainant to any other entity. Justin Graf had possession and knowledge of the access codes of the registrations of the Disputed Domain Names was a result of his employment with Complainant. Complainant never sold, transferred or otherwise provided Respondent any ownership or other interest in or claim to the Disputed Domain Names. Justin Graf is no longer an employee of Complainant. At the time when he was still an employee of Complainant responsible for maintaining Complainant's Internet domain name registrations and having possession and knowledge of the access codes for the registrations of the Disputed Domain Names, Justin Graf listed or changed the registrant in the WHOIS record for the Disputed Domain Names from Complainant to Respondent. As a result of Justin Graf's unauthorized and wrongful actions, Respondent obtained control over and became Registrant of record with respect to the Disputed Domain Names. After Justin Graf's employment with Complainant ended, Justin Graf claimed that Complainant did not own the Disputed Domain Names and prevented Complainant from using the Disputed Domain Names or accessing the registration for the Disputed Domain Names that are maintained with the Registrar.
Respondent only obtained control over the registration for the Disputed Domain Names, and became the registrant of record with respect to the disputed Domain Names, on October 3, 2009 with respect to and October 20, 2009 with respect to and .
According to paragraph 4(b)(iv) of the Policy, evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another's well-known trademark by attracting Internet users to a website for commercial gain. It is certain that Respondent knew of Complainant's EPMPRO SHUNTS Marks and EMPRO trade name at the time it obtained control over the registrations for the Disputed Domain Names in October 2009, and that it is using the Disputed Domain Names to attract Internet users for commercial gain. B. Respondent
Respondent complains that Complainant never once made an offer to purchase the Disputed Domain Names and proceeded directly to this proceeding. Respondent asserts that the Disputed Domain Names are for sale and has quoted prices for each in the Response.
Respondent asserts that this is a dispute between G. Graf (father) and Justin Graf (son) in which the father is carrying out a personal vendetta instead of simply purchasing the Disputed Domain Names.
Respondent admits that he did work for Complainant, but never had a defined job title or specified responsibilities. The Disputed Domain Names were registered either by EMG or by its current name Graf Computers. Respondent appears to allege that the Disputed Domain Names were never owned by Complainant.
Respondent points out that the term “shunts” was disclaimed in the Complainant's trademark application. The logical inference is that Respondent admits Complainant is the owner of the EMPRO SHUNTS Marks.
Respondent asserts it is making legitimate, noncommercial use of the Disputed Domain Names without specifying the nature of the current use of the websites to which the Disputed Domain Names resolve.
Respondent declares that he has no interest in hurting the Complainant. Instead, Respondent merely wants Complainant to purchase two of the three Disputed Domain Names for a USD 4,388.00 each. Respondent intends to keep for its own use. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Because both the Complainant and Respondent are domiciled in the United States and United States courts have had recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie,WIPO Case No. D2000-1772.
Paragraph 4(a) of the Policy directs that the Complainant, in order to prevail, must prove each of the following:
(i) that 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) that the Respondent has no legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant alleges that it has enforceable trademark rights in the EMPRO SHUNTS Marks and in the EMPRO trade name. The basis of Complainant's claims is its registrations of the EMPRO SHUNTS Marks and its continuous use of the name EMPRO for decades. Respondent argues that there is insufficient evidence in this record to find that Complainant is the owner of the EMPRO SHUNTS Marks, but refers to no specific evidence. Therefore, the Panel finds that Respondent has not adequately contested the assertions by Complainant that it has valid registrations of the trademark. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the EMPRO SHUNTS Marks.
Complainant argues that the Disputed Domain Names are confusingly similar to the EMPRO SHUNTS Marks, pursuant to paragraph 4(a)(i) of the Policy, because they wholly incorporate the phrase EMPRO SHUNTS with the addition of generic terms. The only additional terms are the gTLDs “.com”, “.net” or “.biz” which are not distinctive. The disclaimer of the term “shunt” in Complainant's trademark registration does not make the use of the same phrase in the Disputed Domain Name distinctive. The Panel cannot make out any other argument by Respondent to refute Complainant's contention that the Disputed Domain Names are confusingly similar to the EMPRO SHUNTS Marks. Therefore, the Panel concludes that the Disputed Domain Names are confusingly similar to the EMPRO SHUNT Marks pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Names under paragraph 4(c)(i) because Respondent has not made use, or demonstrable preparations to use, the Disputed Domain Names in connection with the bona fide offering of goods or services.
The details of Complainants allegations are set forth in detail above. Respondent asserts it is making legitimate, non-commercial use of the Disputed Domain Names without specifying the nature of the current use of the websites to which the Disputed Domain Names resolve. The arguments of Respondent are not supported by sufficient evidence. The Panel finds that the preponderance of the evidence favors the Complainant. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to the Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant contends that in the present case, the Respondent is not using the Disputed Domain Names for any legitimate noncommercial or fair use. Instead, Respondent is using the Disputed Domain Names to attract web traffic and divert it to the websites of third-parties in order to “wrongfully frustrate, confuse and misdirect Complainant's customers and increase Internet traffic to the websites of third–parties and competitors”.
Complainant further contends that it has not given Respondent permission, authorization, consent or license to use Complainant's EMPRO SHUNTS Marks or EMPRO trade name. Despite this fact, the Disputed Domain Names resolve to a website enabling Respondent to cash in on the strength of Complainant's EMPRO SHUNTS Marks, EMPRO trade name and the reputation of Complainant and the shunt and electrical products with which the EMPRO SHUNTS Marks are associated.
Complainant accuses Respondent of bad faith because Justin Graf is a former employee of Complainant and is the Registered Agent for Respondent. One of Justin Graf's responsibilities at the time he was an employee of Complainant was to identify and register Internet domain names that included the term EMPRO or EMPRO SHUNTS. Justin Graf registered the Disputed Domain Names while he was an employee of Complainant. The registrations for the Disputed Domain Names were secured using only monies of Complainant. Justin Graf's authorization as an Empro employee extended to registering the Disputed Domain Names on behalf of and in the name of Complainant. Justin Graf was not authorized to register the Disputed Domain Names on behalf of or in the name of any other entity. Justin Graf was not authorized to change the registrant in the WhoIs record for the Disputed Domain Names of Complainant to any other entity. Justin Graf had possession and knowledge of the access codes of the registrations of the Disputed Domain Names was a result of his employment with Complainant. Complainant never sold, transferred or otherwise provided Respondent any ownership or other interest in or claim to the Disputed Domain Names. Justin Graf is no longer an employee of Complainant. At the time when he was still an employee of Complainant responsible for maintaining Complainant's Internet domain name registrations and having possession and knowledge of the access codes for the registrations of the Disputed Domain Names, Justin Graf listed or changed the registrant information in the WHOIS record for the Disputed Domain Names from Complainant to Respondent. As a result of Justin Graf's unauthorized and wrongful actions, Respondent obtained control over and became the registrant of record with respect to the Disputed Domain Names. After Justin Graf's employment with Complainant ended, Justin Graf claimed that Complainant did not own the Disputed Domain Names and prevented Complainant from using the Disputed Domain Names or accessing the registration for the Disputed Domain Names that are maintained with the Registrar.
Respondent only obtained control over the registration for the Disputed Domain Names, and became the registrant of record with respect to the Disputed Domain Names, on October 3, 2009 with respect to and October 20, 2009 with respect to and .
According to paragraph ¶4(b)(iv) of the Policy, evidence of bad faith registration and use is shown when the registration of a domain name occurs in order to utilize another's trademark by attracting Internet users to a website for commercial gain. It is certain in the circumstances that Respondent knew of Complainant's EPMPRO SHUNTS Marks and EMPRO trade name at the time it obtained control over the registrations for the Disputed Domain Names in October 2009, and that it is using the Disputed Domain Names to attract Internet users for commercial gain.
Respondent argues that Complainant never once made an offer of purchase for the Disputed Domain Names and proceeded directly to this proceeding. Respondent asserts that the Disputed Domain Names are for sale and has quoted prices for each in the Response. These prices appear to be in excess of Respondent's costs, because the cost of registration of the Disputed Domain Names appears to have initially been borne by Complainant1.
Based upon the above evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that Complainant has demonstrated the existence of the criteria in the Policy, paragraph 4(b)(iv), and that Respondent registered and used the Disputed Domain Names in bad faith pursuant to the Policy, paragraph 4(a)(iii). 7. Decision
The Panel concludes (a) that the Disputed Domain Names , and are confusingly similar to Complainant's registered EMPRO SHUNTS Marks, (b) that Respondent has no rights or legitimate interest in the Disputed Domain Names and (c) that Respondent registered and used the Disputed Domain Names 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 Disputed Domain Names be transferred to the Complainant.
Richard W. Page
Sole Panelist
Dated: February 7, 2010
1 Respondent asserts that this is a dispute between G. Graf (father) and Justin Graf (son) in which the father is carrying out a personal vendetta instead of simply purchasing the Disputed Domain Names. Such discussion in these circumstances is outside the scope of the current dispute.
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