Complainant is Dayton Electric Manufacturing Co. of Lake Forest, Illinois, United States of America (“United States”), represented by Steven M. Levy, United States.
Respondent is Damon Nelson - Manager, Quantec, LLC / Novo Point, LLC of Dallas, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 29, 2017.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on October 6, 2017. 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
Complainant, Dayton Electric Manufacturing Co., manufactures and sells in the United States electric motors, fans, pumps, power tools and the like under the name and mark DAYTON. Complainant owns several federal trademark registrations in the United States for the DAYTON mark in connection with its products, the earliest of which dates back to September 1964 (Registration No. 0776889).
The disputed domain name appears to have been registered on March 1, 2005 under the name of Texas International Property Asscociates. At some point thereafter, and as early as December 21, 2010, the disputed domain name WhoIs records changed and the disputed domain name was then listed under a privacy service. In September 2013, Complainant filed a UDRP complaint with the National Arbitration Forum (“NAF”) against the disputed domain name under the heading Dayton Electric Manufacturing Co. v. Whois Privacy Services Pty Ltd / Domain Hostmaster, Customer ID: 76322852424457, NAF Case No. FA1309001518612 (the “NAF Proceeding”). That proceeding was apparently suspended for almost four years on account of a bankruptcy proceeding involving Jeffrey Baron and Ondova Limited Company. During the time of the suspension the WhoIs records for the disputed domain name changed and the Respondent became the listed registrant of the disputed domain name. On July 13, 2017, Complainant sought and obtained a withdrawal of the NAF Proceeding without prejudice.
Currently, the disputed domain name resolves to either a rotating series of third-party websites or to a webpage with pay-per-click links to offerings related to industrial or heavy equipment type items. 5. Parties’ Contentions A. Complainant
Complainant asserts that it owns and has used since 1938, through its parent company W.W. Grainger, the DAYTON mark in connection with the sale and distribution of electric motors, fans, pumps, heaters, power tools and the like. Complainant further asserts that it owns rights in the DAYTON mark by virtue of having obtained trademark registrations in the United States for the DAYTON mark.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s DAYTON mark because it contains the DAYTON mark in its entirety. Complainant also contends that the inclusion in the disputed domain name of the descriptive suffix “mfg” heightens confusion because “mfg” is an abbreviation for “manufacturing” and when used with the DAYTON mark will likely be perceived by consumers as suggesting a website related to Complainant, who is known as a manufacturing company.
Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain name because Respondent (a) has not used the disputed domain name for a bona fide offering of goods and services, (b) is not commonly known by the disputed domain name, and (c) is not making a legitimate noncommercial or fair use of the disputed domain name, as Respondent has used the disputed domain name to either redirect web users to a rotating series of third-party websites under what is known as the “fast flux technique” (a DNS technique used by botnets to hide phishing and malware delivery sites) or to pay-per-click webpages with links to third-party offerings, including offerings from companies in Complainant’s field of business.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith as Respondent was aware of Complainant’s rights in the DAYTON mark given the fact that the disputed domain name consists of the DAYTON mark with an intentional abbreviation of Complainant’s corporate name. Complainant also asserts that Respondent’s bad faith registration and use of the disputed domain name is established by Respondent’s use of the “fast flux technique” to redirect web users to third-party websites, including websites that deliver malware for purposes of hacking, phishing or identity theft, and by Respondent’s use of the disputed domain name with a pay-per-click website for commercial gain. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Preliminary Issue Concerning the Prior NAF Proceeding
This proceeding is the second UDRP proceeding initiated by Complainant against the disputed domain name. Complainant’s first proceeding against the disputed domain name was filed in September 2013 and was ultimately withdrawn by Complainant in July 2017 after having been suspended by NAF for four years. Pursuant to a July 13, 2017 order issued by NAF, the NAF Proceeding was dismissed without prejudice. No decision on the merits of the matter issued in the NAF Proceeding
Based on the foregoing, the preliminary question before the Panel is whether the Panel should accept Complainant’s refiled Complaint concerning the same disputed domain name. Refiled complaints are generally viewed as exceptional and are only accepted in highly limited circumstances. See section 4.18 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Here, the original NAF proceeding appears to have been suspended for four years on account of a pending bankruptcy proceeding involving Jeffrey Baron and Ondova Limited Company. Such four-year suspension is in itself unusual in a UDRP proceeding. Given that the NAF Proceeding was withdrawn by Complainant without prejudice while the matter was suspended and before a decision issued, it is evident that there has been no prior ruling by a panel denying the Complaint on the merits. Accordingly, this Panel concludes that the refiled Complaint should be accepted and that the Panel should proceed to a decision on the merits. 7. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(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.
Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See WIPO Overview 3.0, section 4.3; see also The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns and uses the DAYTON mark, which has been registered and used in the United States well before Respondent registered the disputed domain name. Complainant has also submitted ample evidence that the DAYTON mark has been used in the United States in conection with Complainant’s electric motors, fans, pumps, heaters, power tools and other related products.
With Complainant’s rights in the DAYTON mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s DAYTON mark as it incorporates the DAYTON mark in its entirety at the head of the disputed domain name. The addition of the abbreviation “mfg” (which stands for “manufacturing”) does not distinguish the disputed domain name from Complainant’s DAYTON mark and in fact increases the confusion by suggesting that the disputed domain name is related to Complainant and/or Complainant’s company, products or services. See, e.g.,Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the DAYTON mark and in showing that the disputed domain name is identical or confusingly similar to that trademark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it appears that Respondent registered the disputed domain name well after Complainant adopted and developed its rights in the DAYTON mark. While the disputed domain name was originally registered in 2005 by Texas International Property Associates, the disputed domain name appears to have changed ownership at some point after September 2013 and was then registered in the name of Respondent. Given that Respondent has chosen not to file a response in this matter, there is no evidence before the Panel to confirm whether or not there is or was a relationship between the current Respondent and Texas International Property Associates. The Panel thus concludes that Respondent’s rights in the disputed domain name likely arose at some point after September 2013, a date well after Complainant developed its rights in the DAYTON mark and well after Complainant obtained multiple trademark registrations in the United States for the DAYTON mark.
Complainant has also provided ample evidence that Respondent has used the disputed domain name to redirect web users to a rotating series of third-party websites offering products or services unrelated to Complainant and/or to a webpage with click through links to offerings by various third parties. Such evidence, when viewed in the context of Respondent’s intentional registration of a domain name that incorporates the DAYTON mark with an abbreviation that directly relates to Complainant’s company name, makes it more likely than not that Respondent, who is not commonly known by the disputed domain name or the DAYTON name, registered the disputed domain name not for a legitimate noncommercial purpose, but did so for commercial gain.
Given that Complainant has established with sufficient evidence that it owns rights in the DAYTON mark, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your website or location or of a product or service on your website or location.”
Here, the evidence before the Panel establishes that Respondent registered and has used the disputed domain name in bad faith to intentionally redirect web users for commercial gain. The disputed domain name creates a likelihood of confusion as it fully incorporates Complainant’s DAYTON mark with the abbreviation for manufacturing. Such combination likely suggests to consumers that the disputed domain name is related to Complainant or its business. Moreover, the evidence submitted shows that Respondent has only used the disputed domain name to redirect web users to rotating third-party websites or to a webpage with click-through links to offerings by third parties that relate directly to Complainant’s business and products. As Respondent does not dispute any of the evidence presented, the Panel concludes that it is more likely than not that Respondent specifically targeted Complainant and its DAYTON mark, and has done so opportunistically and in bad faith.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy. 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 disputed domain name be transferred to Complainant.
Georges Nahitchevansky
Sole Panelist
Date: October 16, 2017
Full & Egal Universal Law Academy