Complainants are Johnson Controls Inc., Johnson Controls Battery Group, Inc., and Johnson Controls Technology Company, of United States of America (“USA”), represented by Abelman Frayne & Schwab, USA.
Respondent is Gary Hansen, of USA.1 2. The Domain Names and Registrar
The disputed domain names , and are registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2011. On July 22, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On July 22, 2011, Tucows Inc. 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 August 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 24, 2011.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on September 1, 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
Complainants are Johnson Controls, Inc. (“Johnson Controls”) and its wholly-owned subsidiaries Johnson Controls Battery Group, Inc. and Johnson Controls Technology Company (“JCTC”). Johnson Controls is a Fortune 100 global diversified technology company and industrial leader doing business in more than 150 countries. Johnson Controls creates and provides products and services, as well as solutions for optimizing energy and operational efficiencies in buildings; lead-acid automotive batteries and advanced batteries for hybrid and electric vehicles; and interior systems for batteries. For over 50 years, Johnson Controls has played a dominant role in automotive batteries.
JCTC is the owner via assignment of USA Trademark Registration No. 1,706,318 for the mark OPTIMA, as used on vehicle starting, lighting and ignition batteries. The registration issued on August 11, 1992, based on a claimed date of first use of June 25, 1990. Johnson Controls Battery Group owns USA Trademark Registration No. 2,905,282 for the mark OPTIMA BATTERIES, as used on batteries. The registration issued on November 23, 2004, based on a claimed date of first use of June 25, 1990. See Complaint, Annexes D and E. Johnson Controls also owns the domain name . To date, Johnson Controls has spent millions of dollars for advertising and promotions for Optima brand products.
The disputed domain name was registered on July 9, 2001. The disputed domain names and were registered on February 20, 2007. The disputed domain names all resolved in the past to an identical website homepage that offers for sale Complainants’ Optima batteries, as well as products that are not made by Complainants, such as the CTEK battery chargers and Optima Battery Billet Aluminum Trays. The site includes a disclaimer at the bottom of the homepage that reads, “First Optima Battery Sales is an independent company and is not affiliated with or sponsored by OPTIMA® Batteries or Johnson Controls, Inc. OPTIMA and SPIRALCELL® are registered trademarks of Johnson Controls, Inc.” See Complaint, Annexes F and G.
On July 1, 2011, Complainants’ counsel sent a letter concerning the domain name to Respondent requesting him to assign the disputed domain name to Johnson Controls. A follow-up letter was sent on July 13, 2011. See Complaint, Annex G. No response was received. 5. Parties’ Contentions A. Complainant
Complainants assert that the disputed domain names are identical or confusingly similar to Complainants’ trademarks because they wholly incorporate such marks. Complainants contend that the specific top level of the domain names does not affect the domain names for the purpose of determining whether they are identical or confusingly similar.
Complainants further argue that Respondent has no rights or legitimate interests in respect of the disputed domain names. Complainants indicate that Respondent has not been licensed, authorized, contracted or otherwise permitted to use the Complainants’ marks or to apply for any domain name incorporating such marks or any mark confusingly similar thereto, nor have Complainants acquiesced to such use or application by Respondent. On information and belief, Complainants maintain that, prior to registration of the disputed domain names, Respondent did not use any marks containing OPTIMA as a trademark, company, business or trade name and Respondent is not commonly known as OPTIMA or OPTIMA BATTERIES.
Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services, Complainants contend, since the website is offering for sale products not made by Complainants. “The use for commercial gain of a domain name that incorporates a well-known trademark to direct visitors to a website unconnected with the trademark owner cannot constitute use in connection with a bona fide offering of goods or services or otherwise be considered a legitimate interest in a domain name,” Complainants assert.
On information and belief, Complainants contend that Respondent, in registering the disputed domain names, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of such site and/or of the goods found at such site.
Complainants note that their adoption and use of the OPTIMA and OPTIMA BATTERIES marks long predates registration of the disputed domain names and that, given “the fame, goodwill and notoriety associated with [such] marks, it is impossible to conceive of a circumstance in which Respondent could legitimately use these domain names without creating a false impression of association with Complainants.” Indeed, Complainants assert, the disclaimer posted on Respondent’s site dispels any notion that he was not aware of the proprietary rights held by Complainants in the OPTIMA and OPTIMA BATTERIES marks. Complainants argue that such disclaimer cannot cure bad faith once bad faith has been established by other factors.
Complainants further assert that Respondent, by offering for sale goods made by parties other than Complainants, may be considered to be a direct competitor of Complainants and to be disrupting the Complainants’ business. B. Respondent
Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that each of the disputed domain names is either identical or confusingly similar to marks in which Complainants have rights. Each disputed domain name incorporates in full the OPTIMA and OPTIMA BATTERIES marks or slight variations thereof. The inclusion of descriptive matter, e.g. “1st” and “first,” or hyphens, as well as of the top-level domain “.com” in the disputed domain names is immaterial for purposes of this element of the policy.
The evidence further indicates that Complainants, through their ownership and longstanding use of the OPTIMA and OPTIMA BATTERIES marks, have rights in such marks. B. Rights or Legitimate Interests
The Panel concludes that Complainants have met their burden of establishing that Respondent has no rights or legitimate interests in any of the disputed domain names. There is no evidence that Respondent is commonly known by any of the disputed domain names or is making a noncommercial or fair use of such names. Moreover, given the fact that the disputed domain names are identical or confusingly similar to Complainants’ marks and resolve to a website at which products not made by Complainants may be purchased, Respondent may not be found to be using the disputed domain names in connection with a bona fide offering of goods and services. C. Registered and Used in Bad Faith
The Panel holds that each of the disputed domain names were registered and are being used in bad faith. The evidence supports the determination that Respondent, in registering the disputed domain names, has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of such site and/or of the goods found at such site. As earlier determined, each disputed domain name is identical or confusingly similar to marks owned by Complainants. The evidence also indicates that Respondent’s website offers for sale Optima batteries and battery accessories not made by Complainants.
The disclaimer that appears on Respondent’s homepage does not negate a finding of bad faith registration and use. Such disclaimer appears at the end of many pages of text and does not stand out sufficiently from the surrounding text. Thus, Internet users are unlikely to read it. Moreover, as noted in paragraph 3.5 of the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition,” “by the time such user reaches and reads any disclaimer under the domain name, any registrant objective of attracting visitors for financial gain to its website through use of the trademark in the domain name will generally have been achieved. A disclaimer can also show that the respondent had prior knowledge of the complainant’s trademark.”
Respondent’s failure to respond to Complainants’ counsel’s “cease and desist” letter is further evidence of bad faith registration and use. 7. Decision
For 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 , and be transferred to Complainants.
Jeffrey M. Samuels
Sole Panelist
Dated: September 14, 2011
1 The Panel notes that on August 3, 2011, Z. Danhauer sent an email to the Center, claiming that he is the owner of the disputed domain names, having purchased them from Gary Hansen on May 2, 2008. The Center, thereafter, communicated with the registrar, Tucows Inc., requesting that it confirm that Gary Hansen is the registrant of the disputed domain names. On August 4, 2011, Tucows Inc. confirmed that Gary Hansen is the listed registrant for all the disputed domain names in this dispute. On September 12, 2011, the Center received and forwarded to the Panel a copy of an “Asset Purchase Agreement,” dated May 2, 2008, between Z. Danhauer and Pleasant Hill Farm, Inc., whose president is Respondent Gary Hansen. Under the terms of the Agreement, Mr. Danhauer purchased, among other assets, the domain names that are the subject of this dispute. The Agreement further provided that Respondent was to cooperate with and assist Mr. Danhauer and to execute such authorizations, consent or other documents as may be necessary to obtain the transfer of the disputed domain names to Mr. Danhauer, provided Mr. Danhauer paid any fees or charges connected with such transfers. While it appears that the Asset Purchase Agreement contemplated the sale and transfer of the disputed domain names to Mr. Danhauer, the fact remains that Respondent Hansen remains, according to the concerned registrar Tucows Inc., the holder of the domain name registrations in issue and, thus, the Panel finds is the proper Respondent in this action. However, it is appropriate in the interest of justice, for a copy of this decision to be forwarded to the parties and to Mr. Z. Danhauer as mentioned in the relevant Purchase Agreement, and the Panel so orders. Additionally, the Panel’s decision under the Policy would in no way be binding on a court of a competent jurisdiction in the event that the matter be pursued further in such judicial forum.
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