The Complainant is Federal-Mogul Corporation of Southfield, Miami, United States of America (“US”), represented internally.
The Respondent is Domain Hostmaster, Customer ID: 56529003522890; Domain Hostmaster, Customer ID: 57529003555658; Whois Privacy Services Pty Ltd of Queensland, Australia / Bryan Stapp of Rome, Italy. 2. The Domain Names and Registrars
The disputed domain names and are registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2014. On September 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 19, 2014, the Registrar 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 September 23, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on September 24, 2014.
The Center verified that the Complaint together with 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 September 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2014.
The Center appointed Michel N. Bertschy as the sole panelist in this matter on October 30, 2014. 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 was founded in Detroit in 1899 by J. Howard Muzzy and Edward F. Lyon as the Muzzy Lyon Company with a focus on producing mill supplies and rubber goods. The partners also formed a subsidiary called Mogul Metal Company, which specialized in bearings made from their own proprietary metal called “Mogul”. The bearings became the focus of the company in the early 1900's, and in 1924, Muzzy Lyon Company merged with Federal Bearings and Bushing to become Federal-Mogul Corporation.
Today, the Complainant is a leading global supplier of products and services to the world's manufacturers and servicers of vehicles and equipment in the automotive, light, medium and heavy-duty and commercial vehicles, as well as in marine, rail, aerospace, power generation and industrial trademarks. In 2012, the Complainant had USD 6.7 billion in total company sales and through 2008 the Complainant was consistently ranked among Fortune Magazine’s Fortune 500 (US) companies. The Complainant employs over 44,000 people in more than 30 countries with its worldwide headquarters located in Southfield, Michigan, US.
Champion, founded in the early 1900’s, was acquired by Cooper Industries in 1989 which was in turn acquired by the Complainant in 1998. For over 100 years, Champion had been a world leader in the manufacture of spark plugs for every kind of combustion engine. Champion engineers and manufactures spark plugs in an array of materials and designs. In addition to spark plugs Champion also manufactures a full line of oil filters, air filters and wiper blades, as well as performance additives and lubricants for the automotive and lawn-and-garden trademarks. Champion brand products are used in all engines from automotive and marine to power sport and racing.
Through its wholly owned subsidiary, Federal-Mogul Ignition Company Corporation, the Complainant is the owner of various trademarks, including the CHAMPION trademark, such as
- CHAMPION (Word Mark) Goods and Services, No. 71070053; filed April 25, 1913; Registration No. 0092950; registered 12 August 1913; last registered owner Federal-Mogul Ignition Company Corporation Delaware; US trademark; and
- CHAMPION (Word Mark) Goods and Services, No. 71103011; filed April 16, 1917; Registration No. 0120167; registered 15 January 1918; last registered owner Federal-Mogul Ignition Company Corporation Delaware; US trademark; and
- CHAMPION (Word Mark) Goods and Services, No. 71302316; filed June 11, 1930; Registration No. 0280405; registered 17 February 1931; last registered owner Federal-Mogul Ignition Company Corporation Delaware; US trademark; and
- CHAMPION (Word Mark) Goods and Services, No 73732196; filed June 2, 1988; Registration No. 1551621; registered 15 August 1989; last registered owner Federal-Mogul Ignition Company Corporation Delaware; US trademark; and
- CHAMPION (Word Mark) Goods and Services, No 77211861; filed June 21, 2007; Registration No. 4415020; registered October 8, 2013; last registered owner Federal-Mogul Ignition Company Corporation Delaware; US trademark; and
- CHAMPION (Word Mark) Goods and Services, Serial No. 85799645; filed December 11, 2012; Registration No. 4379520; registered August 6, 2013; last registered owner Federal-Mogul Ignition Company Corporation Delaware; US trademark; and
- CHAMPION (Word Mark) Goods and Services, Application No. 0090198; CIPO Registration No. TMDA22506; registered April 23, 1917; last registered owner Federal-Mogul Ignition Company Corporation Delaware; Canadian trademark; and
- CHAMPION (Figurative) Goods and Services, CTM Application No. 000000836; applied for April 1, 1996; Office No. M00002444; registered September 17, 1997; last registered owner Federal-Mogul Ignition Company Corporation Delaware; OHIM European trademark.
The Respondent registered both of the disputed domain names on June 30, 2004. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
1. The disputed domain names are identical or confusingly similar to a trademark or service trademark in which the Complainant has rights;
The Complainant contends the disputed domain names and are confusingly similar to the Complainant’s trademarks (Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1)) for the following reasons:
Previous UDRP panels have long recognized complainant’s registration of a trademark with a trademark authority is sufficient to confer rights in the trademark pursuant to Policy. Furthermore, a complainant is not required to register its trademarks within the country of the respondent in order to protect its rights in those trademarks. Moreover, when comparing the disputed domain names to Complainant’s trademarks, the relevant comparison to be made is between only the second-level portion of the disputed domain names and the Complainant’s trademarks in the sense that the generic Top-Level Domain, such as “.net” or “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
Further, the disputed domain names each contain the Complainant’s CHAMPION trademark in its entirety and simply add the descriptive terms “battery” and “batteries”, thereby making the disputed domain names confusingly similar to the Complainant’s trademark. The terms “battery‟ and “batteries‟ are closely linked and associated with the Complainant’s CHAMPION brand and trademark, which only serves to underscore and increase the confusing similarity between the disputed domain names and the Complainant’s trademark. The Complainant is widely known for manufacturing a range of OE (original equipment) and aftermarket automotive parts, including batteries and battery chargers under its iconic Champion brand. The Complainant and its Champion brand and business have held a trademark in CHAMPION for “electric storage batteries” (US Reg. No. 0280405) since 1931, first used in commerce in 1929. Today, CHAMPION automotive batteries are sold across the United States in well established stores such as Walmart.
The Complainant contends therefore that the addition of the terms “battery” and “batteries”, which are descriptive terms that closely relate to and describe the Complainant’s business and products, to the Complainant’s famous CHAMPION trademark creates domain names that are confusingly similar to the Complainant’s trademark and business, since a domain name that wholly incorporates a complainant's registered trademark may be sufficient to establish confusingly similarity for purposes of the UDRP. The Complainant further notes that where a respondent’s domain name combines the complainant’s trademark with a generic term that has an obvious relationship to the complainant’s business, UDRP panels have found confusing similar between the trademark and said domain name.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain names;
The Complainant contends that the Respondent has no affiliation with the Complainant who has not authorized, licensed or otherwise permitted use of either the trademarks used in the disputed domain names and has therefore no rights or legitimate interests in the disputed domain names (Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2)).
The granting of registrations by the US Patent and Trademark Office, Canadian Intellectual Property Office and the Office for Harmonization in the Internal Market (OHIM) to the Complainant for the CHAMPION trademark is prima facie evidence of the validity of CHAMPION as a trademark; of the Complainant’s ownership of the CHAMPION trademark; and of the Complainant’s exclusive right to use the CHAMPION trademark in commerce or in connection with the goods and/or services specified in the registration certificates. The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in a domain name.
The Respondent has not been commonly known by the disputed domain names (paragraph 4(c)(ii) of the Policy). In the instant case, the relevant WhoIs information identifies the registrant as “Bryan Stapp” neither of which resembles the disputed domain names in any manner, thus, the Respondent cannot be regarded as having been commonly known by the disputed domain names so as to have acquired rights or legitimate interests in the disputed domain names within the meaning paragraph 4(c)(ii) of the Policy.
The Respondent is using the disputed domain names to redirect Internet users to nearly identical websites that both feature generic links to third-party websites, some of which directly compete with the Complainant's business. For instance, the websites at which the disputed domain names resolves feature multiple third-party links for automotive batteries and various related good, the disputed domain name features links for “car battery”, “auto battery,” and “best car battery,” while features links for “Exide batteries”, “battery supplier”, and “discount auto batteries.” Further, the Respondent’s “www.” website also features a link for “Champion Battery” that directly references the Complainant’s Champion brand, but which links to a third-party website. The Respondent presumably receives pay-per-click fees from the linked websites that are listed at the disputed domain names’ websites. Prior UDRP decisions have consistently held that registrants that monetize domain names using redirecting services and pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a domain name. As such, the Respondent is not using the disputed domain names to provide a bona fide offering of goods or services as allowed under paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use as allowed under paragraph 4(c)(iii) of the Policy. Since the Respondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under the Complainant’s trademark, the Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Respondent should also be considered as lacking rights and legitimate interests in the disputed domain names because the Respondent is seeking to solicit offers for purchase of both of the domain names. A link at the top of the website of each of the disputed domain names presents an identical message: “This premium domain name may be listed for sale. Click here to inquire.” Clicking on this link takes Internet users to a website on which users may submit inquiries as to the cost of the disputed domain names, and through which users can “Get a free price quote” for each of the disputed domain names. Exhibiting a willingness to accept solicitation to purchase the domain name strongly suggests that the Respondent does not have any rights or legitimate interests in the disputed domain names.
The Respondent registered both of the disputed domain names on June 30, 2004. This is a date that falls significantly after the Complainant filed for registration of its relevant trademarks with the CIPO and USPTO and also well after the Complainant’s first use in commerce of the CHAMPION trademark in 1907, and CHAMPION trademark for batteries in 1929.
3. The disputed domain names were registered and are being used in bad faith.
Last, the Complainant contends the Respondent registered and is using the disputed domain names in bad faith because the Complainant and the CHAMPION brand are known internationally. The Complainant has marketed and sold services in the United States and numerous other countries using the Complainant’s trademark since 1907 (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3)).
Considering the Complainant’s renown and fame, as well as the specific domain names that Respondent has chosen, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brands at the time the disputed domain names were registered. Stated differently, where a domain name is “so obviously connected with such a well-known name and products, it’s very use by someone with no connection with the products suggests opportunistic bad faith”. In light of the fact that the disputed domain names both incorporate the whole CHAMPION trademark while attaching either the term “battery‟ or “batteries‟, which both describe a product offered by the Complainant, “it defies common sense to believe that Respondent coincidentally selected the precise domain name without any knowledge of Complainant and its trademarks”.
The Policy dictates that bad faith can be established by evidence demonstrating that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] website (…) by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location of a product or service on [Respondent’s] website or location,” see Policy, paragraph 4(b)(iv). Here, by capturing the Complainant’s CHAMPION trademark in its entirety while adding the descriptive terms “battery‟ and “batteries‟ to the end of the CHAMPION trademark, the Respondent is clearly using the disputed domain names to confuse unsuspecting Internet users looking for the Complainant’s services, as well as to mislead internet users as to the source of the website. By creating this likelihood of confusion with the Complainant’s trademark, which leads to misperceptions as to the source, sponsorship, affiliation, or endorsement of the disputed domain names, the Respondent has demonstrated a nefarious intent to capitalize on the fame of the Complainant’s mark in order to increase traffic to the websites found at the disputed domain names for the Respondent’s own pecuniary gain, as evidenced by the presence of the multiple pay-per-click links posted to the Respondent’s websites.
Previous UDRP panels have found bad faith under paragraph 4(b)(iv) of the Policy where a respondent uses a confusingly similar domain name to resolve to a website featuring links that compete with a complainant and create revenue for the respondent. Such use for the Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy.
Furthermore, the Respondent’s use of the disputed domain names constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under paragraph 4(b)(iii) of the Policy because the disputed domain names are confusingly similar to the Complainant’s trademarks, and the websites at the disputed domain names feature multiple links to the Complainant’s competitors. Previous UDRP panels have held this to be evidence of bad faith registration and use. The Respondent has therefore engaged in bad faith registration and use pursuant to paragraph 4(b)(iii) of the Policy by using the disputed domain names to operate a commercial search engine with links to the products of the Complainant and to the Complainant’s competitors, as well as by diverting Internet users to several other domain names.
Considering the fact that the disputed domain names incorporate the Complainant’s CHAMPION trademark in its entirety and merely add the terms “battery‟ and “batteries‟, which describe a product offered by the Complainant, there is no plausible reason why the Respondent would hold the disputed domain names other than intent to confuse users as to its source and sponsorship of the domain names, which has been held to be evidence of bad faith registration and use. Hence, the Respondent has registered the disputed domain names in bad faith.
The Respondent’s registration of the disputed domain names also constitutes bad faith under paragraph 4(b)(i) of the Policy because the Respondent has demonstrated an intent to sell, rent, or otherwise transfer the disputed domain names for valuable consideration in excess of out-of-pocket expenses. The Respondent is currently offering to sell the disputed domain names. The “for sale‟ link posted on the websites at which the disputed domain names resolve provides proof of this intent to sell the domain names. It is well established that such actions demonstrate bad faith. The Respondent’s offer to sell the disputed domain name to the general public constitutes bad faith under paragraph 4(b)(i)) of the Policy.
Finally, the Respondent, at the time of initial Complaint filing, had employed a privacy service to hide its identity, which past UDRP panels have considered as further evidence of bad faith registration and use by a respondent.
For all of these reasons, the Complainant requests the Panel to order the transfer of the disputed domain names to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the complainant to prove that the respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. The complainant must prove each of these three elements. A. Identical or Confusingly Similar
The Complainant has rights in the CHAMPION marks. Under the UDRP, the test for identity or confusing similarity typically involves a comparison between the trademark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be identical or confusingly similar would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the identity of confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety in a domain name may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. The addition of other generic terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark (Stanley Black & Decker, Inc. v. A Domain Privacy / Ready Asset, Nish Patel,WIPO Case No. D2014-1446; Comerica Bank v. Rodica Ilea,WIPO Case No. D2013-1861; Aktiebolaget Electrolux v. Ngoc Tien Nguyen,WIPO Case No. D2012-2318; Gabrielle Studio, Inc., The Donna Karan Company LLC v. djis sdi,WIPO Case No. D2012-1704; Amegy Bank National Association v. Whois Privacy Services Pty / 21562719 Ont Ltd,WIPO Case No. D2012-1129 and references therein).
In this case, the disputed domain names incorporate the Complainant’s CHAMPION marks in their entirety and are clearly their dominant element. The presence of the words “battery” and “batteries” only increase the risk of confusion given that the business of the Complainant is the sale of car parts and batteries in particular and that the CHAMPION trademark (U.S. Reg. No. 0280405) was specifically delivered for electric storage batteries.
Given the distinctive nature of the CHAMPION marks which are readily recognisable within each disputed domain name, the Panel is satisfied that the disputed domain names and are confusingly similar to the Complainant’s trademarks and thus this element of paragraph 4(a) of the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case showing that none of the three circumstances establishing rights or legitimate interests apply, the burden of production on this element shifts to the Respondent. The burden of proof, however, remains with the Complainant to prove each of the three elements of paragraph 4(a) of the Policy (Stanley Black & Decker, Inc. v. A Domain Privacy / Ready Asset, Nish Patel,WIPO Case No. D2014-1446; Comerica Bank v. Rodica Ilea,WIPO Case No. D2013-1861; Aktiebolaget Electrolux v. Ngoc Tien Nguyen,WIPO Case No. D2012-2318; Gabrielle Studio, Inc., The Donna Karan Company LLC v. djis sdi,WIPO Case No. D2012-1704; Amegy Bank National Association v. Whois Privacy Services Pty / 21562719 Ont Ltd,WIPO Case No. D2012-1129 and references therein).
The Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in respect of the disputed domain names and there has been no rebuttal by the Respondent. Nothing in the record gives reason to believe that the Respondent has any rights or legitimate interests in respect of the disputed domain names, given that the Respondent uses the disputed domain names in association with a parking page with sponsored links utilizing the Complainant’s marks but has no known rights in the marks.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another” (Stanley Black & Decker, Inc. v. A Domain Privacy / Ready Asset, Nish Patel,WIPO Case No. D2014-1446; Comerica Bank v. Rodica Ilea,WIPO Case No. D2013-1861; Aktiebolaget Electrolux v. Ngoc Tien Nguyen,WIPO Case No. D2012-2318; Gabrielle Studio, Inc., The Donna Karan Company LLC v. djis sdi,WIPO Case No. D2012-1704; Amegy Bank National Association v. Whois Privacy Services Pty / 21562719 Ont Ltd,WIPO Case No. D2012-1129 and references therein).
In this case, the disputed domain names differ from the Complainant’s marks by the sole addition of the words “battery” and “batteries”, parts sold by the Complainant since 1929 under the trademark CHAMPION (US Reg. No. 0280405). The Complainant has thus and otherwise proved that the Respondent has intentionally registered the disputed domain names, which are confusingly similar to the Complainant’s trademarks, and has intentionally diverted Internet users to a website offering sponsored links promoting, inter alia, the same or similar products as those offered by the Complainant. Such registration and use can only be motivated by commercial gain. The Panel fails to see what other legitimate motivation the Respondent’s conduct can have.
The Panel therefore considers that the Respondent’s conduct in this case constitutes evident bad faith registration and use of the disputed domain names within the meaning of paragraph 4(b)(iv) of the Policy.
Accordingly, the Complainant has satisfied all three elements of paragraph 4(a) of the Policy. 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 the Complainant.
Michel N. Bertschy
Sole Panelist
Date: November 7, 2014
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