The Complainant is Sylvan R. Shemitz Designs, Inc. of West Haven, Connecticut, United States of America, represented by Cantor Colburn LLP, United States.
The Respondent is BlueHostDomains of Las Vegas, Nevada, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with DSTR Acquisition VII, LLC d/b/a D. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2010. On November 19, 2010, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a D a request for registrar verification in connection with the disputed domain name. On November 19, 2010, DSTR Acquisition VII, LLC d/b/a D 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” 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 the Respondent of the Complaint, and the proceedings commenced on November 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2010.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on January 12, 2011. 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 owns numerous trademark registrations in the United States and several other countries for the mark ELLIPTIPAR for use in connection with electrical illuminating devices, namely, lighting fixtures, spotlights and flood lights. The Complainant’s United States Trademark Registration No. 912720 issued June 8, 1971 and claims a date of first use of March 10, 1970. Copies of the registrations are attached as Exhibit B to the Complaint.
The disputed domain name was registered on October 4, 2007. 5. Parties’ Contentions A. Complainant
The Complainant contends that it has extensively used its ELLIPTIPAR mark in the United States since 1970 and in numerous other countries, and that its ELLIPTIPAR mark has gained widespread recognition. The Complainant contends that the Respondent’s domain name is confusingly similar to the Complainant’s ELLIPTIPAR trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order 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 disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
The Complainant has shown that it is the owner of valid registered trademarks for the mark ELLIPTIPAR in the United States and several other countries. The disputed domain name incorporates the Complainant’s mark in its entirety. The addition of the term “lighting” does not add any distinctive subject matter. Rather, it increases the likelihood of confusion because it describes the Complainant’s business. The Panel finds that the domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Complainant contends that there is no connection between the Complainant and the Respondent and that the Respondent has never been known by the name “Elliptipar Lighting” or any other name incorporating the mark ELLIPTIPAR.
There is no evidence apparent from the record that the Respondent is or has been commonly known by the disputed domain name or has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. 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 disputed domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 the documented out of pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location of a product or service on the respondent’s website or location.
Given the Complainant’s longstanding use of the ELLIPTICAR mark in the United States and other countries in connection with lighting products, it is highly likely that the Respondent was aware of the Complainant’s mark before registering the disputed domain name. This is supported by the Respondent’s addition of the word “lighting” to the disputed domain name.
The disputed domain name currently resolves to an index pages, where the majority of the links are broken or resolve to an inactive web page. This is not a bona fide use of the domain name. It is not possible to conceive of a use by the Respondent of the disputed domain name that would not constitute an infringement of the Complainant’s rights in its mark.
In September, 2010, the Complainant wrote to the Respondent, by certified mail, requesting transfer of the disputed domain name. On October 19, 2010, the Complainant’s letter was returned “unclaimed” and “unable to forward.” The Complainant’s email also went unanswered. The fact that the Respondent apparently provided false contact information to the registrar and failed to respond to the complainant’s efforts to contact the Respondent provide strong support for a determination of bad faith registration and use.
Accordingly, the Panel finds that the Respondent has registered and is using 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.
Lynda J. Zadra-Symes
Sole Panelist
Dated: January 24, 2011
Full & Egal Universal Law Academy