Complainant is Genie Industries, Inc. of Redmond, Washington, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
Respondent is Material Flow of Donald, Oregon, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2012. On November 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 3, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name.
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 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2012. The Response was filed with the Center on December 30, 2012.
The Center appointed Lynda M. Braun as the sole panelist in this matter on January 18, 2013. 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.
On January 3, 2013, Complainant submitted an unsolicited supplemental filing for the consideration of the Panel. The Panel has decided not to take into account Complainant’s supplemental filing as it does not change the substance of the material evidence already in the case file. In any event, even if this Panel had taken into consideration such supplemental filing, it would not have changed the outcome of the proceeding. 4. Factual Background
Complainant is a wholly owned subsidiary of Terex Corporation (“Terex”), an American-based global manufacturer of a broad range of heavy equipment for a variety of industries. Complainant was founded in 1966 and was sold to, and became a part of, Terex in 2002. Complainant manufactures work lifts and platforms, including man-lifts, stick booms, articulated booms, light towers and telehandlers.
Complainant is the owner of more than one hundred trademark registrations in sixty countries worldwide for marks that consist of or contain the term “genie” (the “GENIE trademark”).
Terex registered the domain name on July 26, 1995, which Complainant uses in connection with a website describing its products and services.
Respondent registered the Disputed Domain Name on July 13, 2004, which Respondent uses in connection with a website that prominently displays the Disputed Domain Name in bold letters at the top of all pages and offers for sale a variety of products and services, including Complainant’s trademarked products as well as products of Complainant’s competitors. 5. Parties’ Contentions A. Complainant
The following are Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the GENIE trademark.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- Respondent is not an authorized reseller of Complainant’s products.
- The Disputed Domain Name was registered and is being used in bad faith.
- Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the GENIE trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
- Respondent knew of Complainant’s GENIE trademark when it registered the Disputed Domain Name.
- The GENIE trademark pre-dates Respondent’s registration of the Disputed Domain Name by more than thirteen years. B. Respondent
Respondent, in an unsigned, uncertified Response that does not explicitly address the three requirements of paragraph 4(a) of the Policy, makes the following assertions:
- Respondent has owned the Disputed Domain Name for eight years.
- Respondent has spent over USD 316,800 in advertising on the Disputed Domain Name.
- Complainant and other dealers of Complainant’s products have benefited by Respondent’s advertising.
- The home page of Respondent’s website clearly states that the website is sponsored by “Material Flow & Conveyor Systems”.
- Respondent considers itself a distributor of Complainant and does not market other brands. 6. Discussion and Findings
In order for Complainant to prevail and have the Disputed Domain Name transferred to Complainant, Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that Complainant has established rights in the GENIE trademark based on both longstanding use as well as its United States and foreign trademark registrations for the GENIE trademark. The Disputed Domain Name consists of the GENIE trademark plus the descriptive word “lift” connected by a hyphen, and followed by the generic top-level domain (“gTLD”) “.com”. “The fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Numerous UDRP panel decisions have reiterated that the addition of a descriptive or generic word to a trademark is insufficient to avoid confusing similarity. Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. See also Hoffman-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923 (The addition of a descriptive or generic word to a trademark will not avoid a determination that the domain name at issue is confusingly similar); Nintendo of America, Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434 (same); Weight Watchers International, Inc. v. Kevin Anthony,WIPO Case No. D2011-2067 (same). This is especially true when the descriptive or generic word is associated with complainant and its goods or services. See, e.g., Gateway, Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name confusing similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).
Further, although the Disputed Domain Name contains a hyphen between the words “genie” and “lift”, this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. Six Continents Hotels, Inc. v. Helen Slew,WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown, Inc., WIPO Case No. D2003-0214 (hyphens do not “serve to dispel Internet user confusion here”); Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281 (“[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY).
Finally, the addition of a gTLD such as “.com” after a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, the Panel finds that Complainant has made out a prima facie case, showing that Complainant has not licensed or authorized Respondent to use its GENIE trademark and that Respondent is not affiliated or in a contractual relationship with Complainant. Respondent, however, did not carry its burden of demonstrating rights or legitimate interests in the Disputed Domain Name. Respondent filed a short reply to the Complaint in the form of an email communication which was administratively deficient.
After considering Respondent’s submission, the Panel concluded that it could not be considered technically valid for several reasons. First, it did not contain a certification or signature as required by the Rules, paragraph 5(b)(viii). See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Second, Respondent’s submission did not address the requirements of the Response as set forth in the Rules, paragraph 5. Finally, Respondent failed to attach any concrete documentary or other evidence upon which Respondent relied, together with a schedule indexing such documents, as required by the Rules, paragraph 5(b)(ix). The Panel concludes that the lack of signature, certification and concrete supporting documentation notwithstanding, it has decided to take into account the substance of Respondent’s submission.
Accordingly, the second element of paragraph 4(a) has been met by Complainant. C. Registered and Used in Bad Faith
Complainant has developed a reputation for the GENIE trademark in the heavy equipment industry for decades and its trademarked products are sold worldwide. Respondent’s unauthorized advertising and sale of Complainant’s products very strongly suggests that Respondent knew of Complainant’s trademarks prior to registration of the Disputed Domain Name. Thus, it is reasonable to infer from the circumstances of this case that the aim of the registration and use of the Disputed Domain Name is to exploit consumer confusion for commercial gain. It was also done for the specific purpose of trading on the name and reputation of Complainant and its trademark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law.”). This behavior constitutes bad faith registration and use of the Disputed Domain Name under the Policy. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763. The website at the Disputed Domain Name also offers for sale products of Complainant’s competitors.
Moreover, the registration of a domain name reproducing in its entirety the registered trademark of Complainant is clearly aimed to disrupt Complainant’s business by diverting Internet users who are searching for Complainant’s products from its genuine website as well as to prevent Complainant from registering the Disputed Domain Name. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552. The Panel thus concludes that Respondent has registered and is using the Disputed Domain Name in bad faith.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by Complainant. 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 Name, , be transferred to Complainant.
Lynda M. Braun
Sole Panelist
Date: January 22, 2013
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