Complainant is Amp Plus, Inc. d/b/a Elco Lighting of Vernon, California, United States of America (“U.S.”) represented by Bryan Cave, LLP, U.S.
Respondent is James Gold of New York, New York, U.S. 2. The Domain Names and Registrar
The Disputed Domain Names and are registered with GoD, Inc (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2011. On October 20, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 20, 2011, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 11, 2011.
The Center appointed Steven Auvil, Lynda J. Zadra-Symes and Lynda M. Braun as panelists in this matter on December 9, 2011. The Panel finds that it was properly constituted. Each member of 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
According to Complainant, it is a supplier of quality lighting products and fixtures. Complainant has continuously been engaged in the provision of quality lighting products and fixtures under its ELCO and ELCO LIGHTING marks since at least as early as 1992. Complainant is the registered owner of the U.S. Trademark Registration No. 3,882,112 for ELCO LIGHTING in connection with the following goods and services:
(1) “electric exit signs, emergency warning lighting, emergency lighting for buildings, electrical wires, electrical relays, electric switches, power switches, transformers, lighting ballasts and traffic-light apparatus for rail systems” in International Class No. 9; and
(2) “Lighting products, namely, recessed lighting fixtures, LED lighting fixtures for architectural purposes, electric track lighting units, electric outdoor lighting fixtures and landscape lighting installations, wall lighting, namely, sconce lighting fixtures, pendant lighting fixtures, lamps, lighting accessories, namely, bulbs, light fixture lenses, socket extenders for electric lights, socket adapters for electric lights, lamp and lighting fixture shades, and mounting parts for installation of light fixtures sold as a unit thereof” in International Class No. 11.
The trademark application was filed on April 2, 2009 and granted on November 30, 2010.
Additionally, Complainant states that for over fourteen (14) years, Complainant has owned its domain name and operated its “www.m” website to promote and advertise its quality ELCO and ELCO LIGHTING lighting products and fixtures.
The Disputed Domain Names were both registered on July 20, 2010. 5. Parties’ Contentions A. Complainant
Complainant identifies itself as a leading and long-standing supplier of quality lighting products and fixtures. In addition to using its registered ELCO LIGHTING mark, Complainant also refers to
itself and its products as ELCO in its advertising and promotional materials.
Complainant contends that Respondent is using the Disputed Domain Names to improperly misdirect Internet users looking for Complainant or its products to Complainant’s direct competitor’s website. Complainant contends that the Disputed Domain Names, when accessed, directly, automatically and immediately resolve to a website for competing goods offered by Complainant’s direct competitor.
Complainant contends that the Disputed Domain Names are identical to Complainant’s ELCO and ELCO LIGHTING marks. Complainant states that the Disputed Domain Names are character-by-character copies of Complainant’s ELCO and ELCO LIGHTING marks, with the omission of the space between ELCO and LIGHTING, and the addition the country code TLD “.co”. Complainant contends that the fact that one of the Disputed Domain Names, , does not include the descriptive term “lighting” still renders it identical to Complainant’s established trademark ELCO, and furthermore, does not preclude a finding of confusing similarity to Complainant’s registered trademark ELCO LIGHTING.
Complainant contends that Respondent cannot demonstrate any rights or legitimate interests in the Disputed Domain Names for the following reasons:
(1) Respondent cannot show that it uses the Disputed Domain Names or the marks or names ELCO LIGHTING and ELCO in connection with a bona fide offering of goods and/or services;
(2) Respondent has no means to establish that it is or ever has been commonly known as “ELCO” or “ELCO LIGHTING”; and
(3) Respondent is not making any legitimate noncommercial use of the Disputed Domain Names.
Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith for the following reasons:
(1) Respondent is intentionally diverting, for commercial gain, Internet users to a competing website;
(2) Respondent’s conduct is designed to disrupt and harm Complainant’s business;
(3) Respondent has absolutely no legitimate trademark, service mark or other intellectual property rights in or to the Disputed Domain Names, or any similar marks or names;
(4) Respondent plainly knew of Complainant’s long and continuous use of its ELCO and ELCO LIGHTING marks at the time of registration and that it had no right, title or interest, whatsoever, in the mark or the Disputed Domain Names;
(5) Respondent provided false registrant information. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Panel’s jurisdiction is limited to a determination of whether Complainant has proved the necessary elements of a claim for transfer or cancellation of the Disputed Domain Names under the Policy and the Rules. Policy, paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.
To obtain relief, the Policy, paragraph 4(a), requires Complainant to prove each of the following elements:
(1) that the Disputed Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interests in the Disputed Domain Names; and
(3) that the Disputed Domain Names have been registered and are being used in bad faith.
In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding based on Complainant’s undisputed allegations for which there are support, pursuant to the Rules, paragraphs 5(e), 14(a), and 15(a), and draw such inferences it considers appropriate, pursuant to the Rules, paragraph 14(b). A. Identical or Confusingly Similar
Complainant has demonstrated that it owns rights in the registered trademark ELCO LIGHTING. Additionally, Complainant has demonstrated that it owns rights in the unregistered mark ELCO in connection with lighting products and fixtures through its use of the term to identify its products.
The Panel finds that the Disputed Domain Names are identical and confusingly similar to Complainant’s ELCO LIGHTING registered trademark and its unregistered ELCO mark. When comparing the Disputed Domain Names with the mark in which Complainant has rights, it is well established under the Policy that the top-level domain, i.e., in this case, the ccTLD “.co”, should not be considered. See, e.g., Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000-0127 (stating that “the addition of the generic top-level domain (gTLD) name ‘.com’ is [. . .] without legal significance since use of a gTLD is required of domain name registrants”). Accordingly, the Disputed Domain Names consist of Complainant’s registered trademark ELCO LIGHTING and its unregistered mark ELCO in their entirety, without any additional matter. It is well established that “incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark.” PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696.
Many Internet users would suppose that the Disputed Domain Names were registered by Complainant or would type them by mistake when seeking Complainant’s principal website at “www.m”. See Turkcell Iletisim Hizmetleri A.S. v. Volkan Turk,WIPO Case No. DCO2011-0001.
For these reasons, the Panel concludes that the Disputed Domain Names are identical and confusingly similar to the ELCO LIGHTING and unregistered ELCO trademarks in which Complainant has rights. B. Rights or Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the Disputed Domain Names; or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. Policy, paragraph 4(c).
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on the complainant, but panels have long recognized that the information needed to prove such a right or interest is normally in the possession of the respondent. In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have typically accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the burden of production passes to the respondent to show that it does indeed have such a right or interest. See, e.g., Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names. For the reasons that follow, the Panel finds that Complainant has made a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case.
Nothing in the record suggests that Respondent is commonly known by the Disputed Domain Names or that, before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services. In fact, Complainant has provided evidence that Respondent is using the Disputed Domain Names to re-direct Internet users to other websites offering goods and services that directly compete with Complainant’s goods and services. Respondent’s use of the Disputed Domain Names to provide links to goods and services that are related to those of Complainant does not constitute a bona fide offering of goods or services. See, e.g., St. Baldrick’s Foundation Inc. v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0705 (stating that prior panels “have decided that the use of confusingly similar domain names in connection with a ‘click-through’ scheme does not serve to establish a bona fide offering of goods and services”).
The undisputed record indicates that Respondent registered the Disputed Domain Names 18 years after Complainant established rights in the ELCO LIGHTING and unregistered ELCO trademarks and many years after Complainant registered and began using the domain name in connection with Complainant’s goods. Given the record before the Panel, it is a reasonable inference that Respondent was aware of Complainant and Complainant’s business when Respondent registered the Disputed Domain Names and that Respondent deliberately incorporated Complainant’s ELCO LIGHTING and unregistered ELCO trademarks in the Disputed Domain Names with intent for commercial gain to misleadingly divert customers.
The Panel, especially in the absence of any response from Respondent, considers that the circumstances described in the Policy, paragraph 4(c), of proof of legitimate interest by Respondent in the Disputed Domain Names, are not likely to exist. For these reasons, in accordance with the Policy, paragraph 4(a)(ii), the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Names. C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith.
The Policy identifies the following circumstances that, if found, are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Names; or
(ii) Respondent has registered the Disputed Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Disputed Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product on Respondent’s web site or location.
Policy, paragraph 4(b).
As already mentioned, the Panel finds that it is likely that Respondent was aware of Complainant and its business when Respondent registered the Disputed Domain Names, which evidences bad faith on Respondent’s part. See PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”); see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
In fact, Complainant has submitted evidence that the Disputed Domain Names resolve to a website for competing goods offered by Complainant’s direct competitor. In other words, Respondent appears to have used the Disputed Domain Names in order to intentionally trade on the goodwill in the ELCO and ELCO LIGHTING marks and to attract traffic to third party websites for commercial gain, which previous panels have concluded may support a finding of bad faith. See St. Baldrick’s Foundation Inc. v. Web Advertising, Corp.,WIPO Case No. D2007-0707 (“Prior panel decisions have consistently recognized that the registration of domain names which are then used to operate ‘click-through’ sites, can be considered to be evidence of bad faith.”).
In this case, in which Respondent failed to respond to the Complaint, the Panel finds that the totality of the circumstances supports the conclusion that Respondent registered and is using the Disputed Domain Names in bad faith. Therefore, the Panel concludes that the bad faith element of the Policy is satisfied. 7. Decision
For all 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 Complainant.
Steven Auvil
Presiding Panelist
Lynda J. Zadra-Symes
Panelist
Lynda M. Braun
Panelist
Dated: December 23, 2011
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