The Complainant is General Electric Inspection Technologies, LP of Fairfield, Connecticut, United States of America, represented by Enns & Archer LLP, United States.
The Respondents are Advanced Inspection Technologies and Domains By Proxy, LLC of Melbourne, Florida, United States and Scottsdale, Arizona, United States, respectively. 2. The Domain Name and Registrar
The disputed domain names: ; ; and are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2012. On May 1, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain names. On May 2, 2012, GoD, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 2, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant declined to file an Amendment to the Complaint.
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 May 7, 2012. On June 1, 2012, due to an error in the transmission of the Notification of Complaint, the Response due date was extended until June 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2012.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on July 2, 2012. 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 is a leading manufacturer of video borescopes, which are instruments that facilitate remote inspection of industrial equipment and machinery parts. The Complainant’s video borescope products are marketed and sold in the United States, the European Union, and elsewhere in the world. They have been well received in the Non-Destructive Testing Industry as essential tools for professionals in that field, and the XLG3 and VIDEOPROBE marks have each become well-known by actual and potential customers.
The VIDEOPROBE mark was first adopted and used as early as 1984 by the Complainant’s predecessors in interest, on and in connection with electronic remote imaging equipment. Today the Complainant uses the VIDEOPROBE mark to designate its entire line of video borescopes systems. The XLG3 mark was adopted by the complainant in 2006 to designate one specific model in its line of VIDEOPROBE video borescopes systems.
The Complainant is the owner of trademark registrations for the mark VIDEOPROBE in the United States, Trademark Registration No. 1673317 issued January 28, 1992; Japan, Trademark Registration No. 4796806 issued August 20, 2004; and China, Trademark Registration No. 441921 issued October 7, 2005, each in International Class 9 for borescopes and other goods. The Complainant is also the owner of trademark registrations for the mark XLG3 in the United States, Trademark Registration No. 3290834 issued September 11, 2007; the European Community, Trademark Registration No. 005066162 issued June 14, 2007; and Japan, Trademark Registration No. 5130584 issued April 18 2008, each in International Class 9 for borescopes and other goods.
The Respondent Advanced Inspection Technologies, Inc. (“AIT”) lists an address in Melbourne, Florida, with a Mr. Fitzgerald being the administrative and technical contact, as indicated by the WhoIs database. The Respondent Domains by Proxy, LLC (“DBP”) apparently is in the business of providing proxy or domain name registration services to others.
The domain name was registered by Respondent AIT on May 28, 2011, and resolves to the website “/vuman-video-borescope.html” on which the “Vuman Video Boreoscope”, a product directly competing the Complainant’s XLG3 video boreoscope, is presented for sale by Respondent AIT. The domain name was created by Respondent AIT on April 17, 2008, and resolves to the website “www.” on which the Respondent AIT offers products directly competing the Complainant’s VIDEOPROBE products for rent. The domain name was registered on January 10, 2009, by Respondent DBP and resolves to the website “www.” which is also, the Panel finds, held by Respondent AIT and on which this Respondent offers products directly competing the Complainant’s VIDEOPROBE products for sale. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant contends that each of the disputed domain names is identical or confusingly similar to a trademark in which it has rights.
The disputed domain name is identical to the Complainant’s XLG3 mark, adding only the “.com” generic top level domain designation. The disputed domain name is identical to the Complainant’s VIDEOPROBE mark, adding only the “.net” generic top level domain designation. Domain names consisting of the distinctive and registered trademark of another followed by the generic top level domain designation inherently imply to Internet users that the site is associated with the owner of the trademark. Thus, the simple addition of a URL designation does not distinguish the disputed domain name from the Complainant’s trademark.
According to the Complainant, the domain name is confusingly similar to the Complainant’s VIDEOPROBE mark, in that it incorporates the entirety of the mark and adds only the generic or descriptive term “rental” and the “.com” generic top level domain designation. UDRP panel decisions recognize that the mere addition of non-distinctive text to the Complainant’s trademark constitutes confusing similarity, as visitors to the site are likely to assume that they will find Complainant’s VIDEOPROBE products offered for rental. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names, because the Respondent AIT is not commonly known by the , , or domain names or any corresponding name. The Respondent AIT does not sell or rent XLG3 branded products, VIDEOPROBE branded products, or any other of the Complainant’s products. Neither has the Complainant ever authorized this Respondent to use XLG3 or VIDEOPROBE marks. The Respondent AIT itself states on the “About Us” page on one of its web sites that it “offers the exact same image as the leading brand name manufacturers at a fraction of the cost”. Finally, the Respondent AIT is not making legitimate non-commercial or fair use of the domain names at issue, nor is the Respondent using them in connection with a bona fide offering of goods or services. Instead, it is using the confusing similarity of each of the disputed domain names to the Complainant’s marks, to divert Internet users to its own web page and thereby to promote competing goods that it offers. Registration and Use in Bad Faith
The Complainant states that the disputed domain names were registered and are being used in bad faith.
All the disputed domain names were registered after the Complainant began use of its VIDEOPROBE and XLG3 trademarks and registered them in the United States. The Respondent had both actual and constructive notice of the Complainant’s prior rights in the XLG3 and VIDEOPROBE marks at the time it registered the domain names at issue.
In an email sent on December 19, 2011, to the Complainant by Mr. Fitzgerald as a response to the Complainant’s cease and desist letter of December 9, 2011, concerning the disputed domain name , the Respondent AIT offered the URL “www.” for sale.
In this email Mr. Fitzgerald also asserted that because the Complainant had not itself registered the domain name, this “effectively placed the url www. on the open market” and that the Respondent AIT was “fortunate enough” to acquire it. The Respondent AIT had “spent a great deal of time, money and effort to acquire” the domain name and this “is just one of many such urls AIT has chosen to add to our portfolio of over 130 urls”.
In his Email of January 5, 2012, Mr. Fitzgerald even states that “the url holds value for AIT for traffic and visitors that are eventually converted into orders“.
Therefore, according to the Complainant, the Respondent AIT clearly had actual knowledge of the Complainant’s prior rights to the XLG3 mark at the time it registered the domain name. The Complainant was not aware of the Respondent AIT’s use of the and disputed domain names at the time of its correspondence with the Respondent, so that these disputed domain names were not mentioned.
The Complainant contends that the circumstances make clear that the Respondent AIT registered and is using the and disputed domain names for exactly the same purposes, since each resolves directly to sites on which the Respondent AIT offers for sale or rental directly competing products to Complainant’s well-known and highly regarded VIDEOPROBE products. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issue: Consolidation of multiple domain names
The Complaint refers to more than just one domain name. Therefore, it is primarily necessary to take under consideration whether the Complainant was entitled to bring in the complaint in respect of multiple domain names in the current case.
The Policy does not contain a provision on when a Complainant may relate to more than just one domain names, but, according to Paragraph 3(c) of the Rules “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”
Thus, the question arises, of whether all three domain names at issue are registered by the same holder. According to the WhoIs database, the registrant of the domain names and is Respondent Advanced Inspection Technologies, whereas the registrant of is Respondent Domains by Proxy.
At first sight this indicates that of the three disputed domain names only and were registered by the same holder as required by Paragraph 3(c) of the Rules. However, paragraph 1 of the Rules defines the “Respondent” to be “the holder of a domain-name registration against which a complaint is initiated”. Using the word “holder” instead of “registrant” suggests that the “holder” of a domain name does not necessarily have to be the registrant, but could be a third person holding the true interests in and having the practical control over the domain name as opposed to the merely apparent control of the registrant. (See Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim,WIPO Case No. D2009-1345).
This interpretation of paragraph 1 does not annul the purpose of paragraph 3(c) of the Rules, which is to prevent an unfair treatment of different respondents (see Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim,WIPO Case No. D2009-1345). When different domain names are registered by different respondents, but just one of those respondents actually holds all of those domain names, there is no danger of an unfair treatment, as there is a connection between the respondents. A connection of this kind, that reduces the potential of unfair treatment radically, is especially given when one respondent uses the privacy or proxy registration service of the other respondent and actually has the power to determine the use of the domain name itself (see Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim,WIPO Case No. D2009-1345). This is the case here. Although the disputed domain name was not registered by the Respondent AIT but by the Respondent Domains by Proxy, it is very similar to one of the disputed domain names registered by the Respondent AIT and it resolves to a web site of Respondent AIT used by this Respondent to offer goods and services for sale and rental.
This leads to the conclusion that due to the obvious link between the two Respondents it was appropriate for the Complainant to refer to all three domain names, including the one not registered by the Respondent AIT, in this Complaint.
For the same reason, as from this point on, the Respondents will be treated as an entity. 7. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this proceeding in relation to each of the disputed domain names, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds the disputed domain names and to be identical to the Complainant’s VIDEOPROBE and XLG3 trademarks, and the disputed domain name to be confusingly similar to the Complainant’s VIDEOPROBE trademark.
The mere addition of the generic top-level domains (gTLD) “.net” and “.com” to the Complainant’s VIDEOPROBE and XLG3 trademarks are of no significance in this proceeding as they do not serve to distinguish the disputed domain names and from the Complainant’s trademarks, but are just two of the several possible gTLDs that must be used by a domain name registrant.
Furthermore, regarding the disputed domain name the Panel finds that the adjective “rental” that was added to the Complainant’s VIDEORPOBE trademark, merely describes the type of services offered by the Respondents but does not distinguish the disputed domain name from the Complainant’s VIDEOPROBE trademark enough as to lessen the inevitable confusion caused by the incorporation of the Complainant’s trademark in the disputed domain name (see Nintendo of America Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434; and Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim,WIPO Case No. D2009-1345). The Panel finds that this disputed domain name may very likely make Internet users assume that the website that is linked to it offers products of the Complainant’s VIDEOPROBE product line for rental.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain names.
There is no evidence that the Respondents are commonly known by the names “videoprobe” or “xlg3” or any corresponding name. The Respondents do not sell or rent VIDEOPROBE or XLG3 branded products, but rather appears to sell and rent equipment that is directly competing with the Complainant’s VIDEOPROBE and XLG3 products. Furthermore, there is no evidence that the Respondents were authorized to use the Complainant’s XLG3 or VIDEOPROBE marks. The Complainant states that it did not authorize this use of its marks by the Respondents and that a cease and desist letter concerning the use of XLG3 trademark was sent to the Respondents in December 2011. According to the Complainant, the VIDEOPROBE mark was not mentioned in this cease and desist letter because the Complainant did not have knowledge of the use of its VIDEOPROBE trademark by the Respondents at that point. In absence of any response by the Respondents, there is no contest against any of these facts stated in the Complaint.
The Complainant’s evidence further reveals that the Respondents did not use the disputed domain names in association with a bona fide offering of goods and/or services and therefore the Panel finds it had no other legitimate interest in the disputed domain names whatsoever. The Complainant provided evidence that the Respondents deliberately registered the disputed domain names in order to attract Internet users interested in the Complainant’s products to its own web site, where products directly competing with the Complainant’s VIDEOPROBE products are offered for sale or rent. In light of this evidence, that constitutes a prima facie showing by the Complainant, the burden shifts to the Respondents to provide an explanation for their putative rights (see Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; and Defever Yachts International LLC v. Yachts West,WIPO Case No. D2009-0624). Again, in absence of any response, the Respondents have failed to satisfy the Panel that there are in fact any rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Respondents registered and are using the disputed domain names in bad faith according to paragraph 4(a)(iii) of the Policy. Registration in Bad Faith
The Respondent’s awareness of the Complainant’s trademark rights at the time of registration of the disputed domain names suggests bad faith at the moment of registration (see Nintendo of America Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434).
The Complainant has provided substantial evidence that the Respondents registered the disputed domain names cognizant of the Complainant’s VIDEOPROBE and XLG3 trademarks. In his Email dated December 19, 2011, Mr. Fitzgerald on behalf of Respondent AIT, stated that “Advanced Inspection Technologies Inc. has spent a great deal of time, money and effort to acquire the url www.. This is just one of many such urls AIT has chosen to add to our portfolio of over 130 urls.” He continues by stating that the Complainant “chose not to reregister the url at some point in the past and demonstrated their disinterest and lack of perceived value of the url. This effectively placed the url www. on the open market and AIT was fortunate enough to acquire the url.” The Panel finds that this statement alone proves that Respondent AIT was not only well aware of Complainant’s XLG3 trademark at the moment of registration of the domain name, but intentionally registered the domain name containing the Complainant’s XLG3 mark in awareness of its perceived value.
Nothing else can be assumed for the registration of the other disputed domain names and . The Panel is convinced that the Respondent AIT registered in the course of its widely followed tactic on gathering a portfolio of urls that incorporated famous names of products directly competing the ones offered for rent on the Respondents’ website. Likewise, the Panel is convinced that Respondent AIT had the disputed domain name registered by Respondent DBP in course of that same tactic, while being well aware of the Complainant’s VIDEOPROBE trademark.
In defaulting, the Respondents have failed to satisfy the Panel that there was no awareness of the Complainant’s trademarks at issue, and that therefore there was no bad faith at the time of the registration of the disputed domain names. Use in Bad Faith
The Panel finds that the Respondents used the disputed domain names for the purpose of intentionally attracting users to the Respondent AIT’s web sites for commercial gain by suggesting that these websites are affiliated with or endorsed by the Complainant and thus, creating a likelihood confusion with the Complainant’s mark. Therefore, bad faith in use of the disputed domain names is indicated under paragraph 4(b)(iv) of the Policy.
All three of the disputed domain names lead to the Respondent AIT’s websites as discussed above under section 4. On these websites, Respondent AIT offers for sale or rent such products that are directly competing the Complainant’s VIDEOPROBE line of products and XLG3 product models. The Complainant has also provided sufficient evidence for the Panel to be convinced that the Respondents are not only using the Complainant’s trademarks to redirect Internet users to the Respondent AIT’s website, but do this in order to obtain commercial gain. Respondent AIT itself through Paul Fitzgerald, made it clear in its Email dated January 5, 2012, that “the url holds value for AIT for traffic and visitors that are eventually converted into orders”. Respondent AIT even offered the disputed domain name for sale and suggested to calculate the price for it according to the number of hits per month multiplied by the value of an average order.
Thus, Respondent AIT clearly did not use the disputed domain names in a legitimate form of comparative advertising but intentionally used them to redirect Internet users interested in buying the Complainant’s products to its own website, in order to draw their attention to the competing products offered by the Respondent AIT for sale or rent and convert those visits into orders. This clearly constitutes bad faith in the use of the disputed domain names. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names , and , be transferred to the Complainant.
Maxim H. Waldbaum
Sole Panelist
Dated: July 20, 2012
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