The Complainant is Sensormatic Electronics, LLC, Boca Raton, Florida, United States of America, represented by Fair Winds Partners, LLC, United States of America.
The Respondent is PPA Media Services, Ryan G Foo, Santiago, Chile, / Fundacion Private Whois, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on April 9, 2013. On April 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 17, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 18, 2013. The Complaint included a request that despite the Respondent being based in Chile the proceedings take place in the English language. Having regard to the Complainant’s submissions on this point, including the fact that the disputed domain name is comprised of words which are clearly recognized in the English language and the Respondent’s website under the disputed domain name appears entirely in the English language, this is plainly appropriate.
The Center verified that the amended 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 April 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2013.
The Center appointed Antony Gold as the sole panelist in this matter on May 31, 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. 4. Factual Background
The Complainant, Sensormatic Electronics LLC, operates a business under the name AMERICAN DYNAMICS which includes the marketing and sale of residential and commercial security systems including closed circuit television, video surveillance cameras and related equipment and services. The Complainant says that it has used AMERICAN DYNAMICS as a trading name since at least 1986.
The Complainant has trade mark protection for AMERICAN DYNAMICS including, by way of example only, a Community Trade Mark number 002999613 dated May 24, 2004 for AMERICAN DYNAMICS in Class 9 (Word only) and a US Trademark Number 3,365,452 dated January 8, 2008, also in Class 9 and also Word only. This latter mark claims a first use in commerce date of January 6, 1986. Class 9 services include security systems and video surveillance equipment.
The Respondent’s business includes the registration of domain names. The disputed domain name was first registered on May 17, 2001. According to the Complainant, the disputed domain name was acquired by the Respondent in either June 2008 or February 2010.
The Complainant has provided screen prints of the web pages to be found at the website of the disputed domain name. These indicate that the home page (headed “A”) contains a series of links to third party websites for a range of services including the sale of video surveillance equipment and cameras. 5. Parties’ Contentions A. Complainant
The Complainant asserts that;
(i) The disputed domain name is identical or confusingly similar to trademarks in which it has rights.
In support of this contention, the Complainant relies on, amongst other matters, the two registered trademarks for AMERICAN DYNAMICS referred to above as well as on two stylized trade marks for “AD AMERICAN DYNAMICS”, the earliest of which was filed in 2003. The Complainant asserts that the .com suffix should be disregarded for the purpose of assessing whether its trademarks are identical, or confusingly similar, to the disputed domain name.
The Complainant has provided extensive evidence of its use of the AMERICAN DYNAMICS marks, both on its own account and by its parent company, Tyco International Limited, as well as evidence of the fame of the AMERICAN DYNAMICS’ brand, particularly in the United States.
(ii) The Respondent has no rights or legitimate interest in the disputed domain name.
The Complainant contends that none of the circumstances set out at section 4(c) of the Policy which might indicate that the Respondent has rights or legitimate interests in the disputed domain name are applicable. In particular, the Complainant states that the website established at the disputed domain name is a pay per click site which will divert actual and potential customers of the Complainant to third party websites which provide goods and services which compete with those of the Complainant. The Complainant says that this does not constitute a bona fide offering of goods and services.
The Complainant says also that the Respondent is not known by the name AMERICAN DYNAMICS and does not own any trademark or service mark rights in the AMERICAN DYNAMICS name. It says that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. It points out that searchers for the Complainant’s AMERICAN DYNAMICS products and services who visited the website at the disputed domain name would be confused and think they were visiting a site of the Complainant’s until they discovered that they were forwarded to other websites offering related or competing services. Lastly, the Complainant says that the effect of the Respondent’s use of the website is to diminish its customers’ capacity to associate its AMERICAN DYNAMICS marks with the goods and services offered by it.
(iii) The Respondent has registered and is using the disputed domain name in bad faith.
The Complainant draws attention to the fact that the Respondent has been a Respondent to many previous domain name proceedings under the UDRP (it says that at least 45 prior UDRP cases have been successfully brought against the Respondent) and it specifically cites eight previous proceedings, each of which resulted in an order for transfer of the disputed domain names in issue.
The Complainant’s contention in respect of the bad faith registration of the disputed domain name is that, notwithstanding the fact that the disputed domain name does not appear to have been registered in bad faith as at the time of first registration, there is a growing body of cases which have determined that a change of control of the disputed domain name should be regarded as a new registration for the purpose of assessing whether the registration is in bad faith. Applying this approach, registration would be deemed to have taken place in either June 2008 or February 2010 at a time when the fame of the Complainant was extensive and, the Complainant would maintain, was in bad faith.
So far as bad faith use is concerned, the Complainant explains that paragraph 4(b)(iv) of the Policy which explains that bad faith can be found where a Respondent intentionally attempts to attract for commercial gain, Internet searchers to its 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 website or location or of a product or service on the website or location. The Complainant says that the Respondent’s use of the website at the disputed domain name fits precisely within these criteria. It says that pay per click sites of this nature generate commercial gain for the Respondent and cause confusion of the type envisaged by this sub-paragraph of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 14(b) of the Rules provides that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the domain name is identical or confusingly similar to a trade mark 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 domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant owns and is using, trademarks which (once the .com suffix is disregarded) are identical to the disputed domain name. It has shown that those marks are extensively used in the course of its business. Accordingly, the Panel is satisfied that the domain name is identical to a trade mark in which the Complainant has rights and accordingly the condition set out in paragraph 4(a)(i) of the Policy is made out. B. Rights or Legitimate Interests
There is no evidence in this case to suggest that the Respondent is known by the name AMERICAN DYNAMICS or that it is using that trading style in connection with a bona fide offering of goods and services. The Panel accepts the Complainant’s arguments in support of its contentions that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as outlined above, and accordingly concludes that the requirement of paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the disputed domain name must have been both registered and used in bad faith.
The Panel is satisfied that the disputed domain name is being used in bad faith. The website at the site of the disputed domain name follows a form which commonly features in Complaints under the Policy namely a directory page which contains links incorporating trademarks of the Complainant which, when clicked, take the browser to a variety of destinations including to websites of competitors of Complainant. Generating income by using the Complainant’s marks, in a domain name and in links on a directory page, as bait to attract those searching for the Complainant is, as the Complainant asserts, bad faith use of the type envisaged by 4(a)(iii) of the Policy.
The question of whether the disputed domain name was registered in bad faith is more problematic. The Complainant’s evidence of use of its AMERICAN DYNAMICS marks prior to the date on which the disputed domain name was first registered in 2001 is very scant, comprising a 1986 newspaper article and a 1987 product brochure. It is questionable whether this is sufficient to support a claim that the initial registrant acted in bad faith when registering the disputed domain name.
The date of registration would normally be interpreted, for the purpose of proceedings under the Policy, as the date on which the disputed domain name was first registered. Domain names already registered can be transferred between parties. A transfer and a registration are, in many respects, two different things. There is a strong argument that, if paragraph 4(a)(iii) of the Policy had been intended to cover a bad faith acquisition of a disputed domain name through transfer as well as bad faith registration, it would have been a straightforward matter for the Policy wording to have stated this. Accordingly, a relatively narrow interpretation of this provision would exclude bad faith acquisitions through transfer on the basis that a transfer is not the same as a registration.
The argument in favor of a more liberal construction of this provision is that when it comes to considering both the intention of the Respondent and the impact of its conduct on the Complainant, the consequence of a Respondent securing registration of a disputed domain name through registration or through transfer is exactly the same. Moreover, it is also arguable that, as each transfer is recorded (or, to use a synonym, “registered”) and reflected in the WhoIs record, and as the Policy does not expressly state that it is only the first registration which is applicable for the purpose of 4(a)(iii) of the Policy, this is a further reason why the term “registered and use in bad faith” should extend to transfers which take place subsequent to the first registration.
The Panel does not accept the assertion made on behalf of the Complainant that “it is a well- accepted standard in UDRP cases to consider the date on which the Respondent acquired the domain-at-issue rather than the creation date”. The Panels in two of the three decisions cited by the Complainant in support of this proposition, do not give any reasoning for their findings in terms of the appropriate date for assessing bad faith registration (DIRECTV.Inc y. Toshi Amori NAF Claim No 1394254 and Bayer HealthCare LLC v. Eighty Business Names,WIPO Case No. D2010-1024). However, thepPanel in the third cited decision, Celilo Gropu Media, Inc. v. Domain Administrator,WIPO Case No. D2010-119 provided some reasoning for his approach, namely that “in the view of the Panel, there has been a change of control amounting to a new registration for the purposes of this element of the Policy”.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") offers helpful guidance on this issue at section 3.1; “Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?”. The overview comments that “This is a developing area of UDRP jurisprudence” and, indeed, a review of the decisions in the WIPO Legal Index for this section of the overview reveals that this is an area where differing interpretations of the phrase “registered and used in bad faith” are being adopted.
Some panels are adhering to a very literal interpretation of the Policy wording. Other panels are finding nuances in the specific factual matrix under review which inclines them to take a more liberal construction of these words (see, for example, the decision of the panel in Glasgow 2014 Limited v. Tommy Butler,WIPO Case No. D2012-2341). And at least onepPanel has concluded that these words should be read purposively so that “the requirement that the domain name “has been registered and used in bad faith” can, in certain circumstances, be satisfied in the absence of bad faith intent upon initial registration where such registered domain name is being used in bad faith”; see Jappy GmbH v. Satoshi Shimoshita,WIPO Case No. D2010-1001, decided by a three member Panel.
The argument that, for the purpose of this provision, the acquisition of a domain name through transfer is equivalent to a new registration and that the deemed date of registration is the date of transfer has coherence. For the purpose of the present case, at least, it makes sense in that, first, the Respondent’s conduct and motivation would have been essentially the same irrespective of the precise means by which the disputed domain name was acquired by the Respondent. Second, the Complainant has comfortably satisfied the other criteria necessary for a successful claim under the Policy. It has, in particular, adduced persuasive evidence that the Respondent’s business involves the registration of domain names, many of which have infringed third party rights and have been recovered by those parties under other Complaints. Third, the Respondent has not filed a Response putting in issue any of the Complainant’s contentions nor is there any other evidence before the Panel that the Respondent has any belief that it is entitled to retain the disputed domain name.
In the light of the above, and notwithstanding the fact that the approach of panels to the question of the operative date for bad faith registration is not as uniform as the Complainant has suggested, the Panel concludes that, on these facts, the operative date for the date of registration is the date on which the Respondent acquired the disputed domain namely June 2008 or February 2010. By the earlier of these dates the Complainant’s AMERICAN DYNAMICS business was very well known and there cannot have been any good faith explanation for the Respondent’s acquisition of the disputed domain name. On that basis the Panel finds that both the registration and use of the disputed domain name were in bad faith. 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 the Complainant.
Antony Gold
Sole Panelist
Date: June 6, 2013
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