WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Auto-C, LLC v. Chip Brown
Case No. D2003-0288
1. The Parties
The Complainant is Auto-C, LLC ("Auto-C"), a limited liability company organized and existing under the laws of Delaware, United States of America ("USA") maintaining its principal place of business in Memphis, Tennessee, USA. Auto-C is a wholly-owned subsidiary of Johnson Diversey, Inc.
The Respondent is Chip Brown, an individual resident of Cordova, Tennessee, USA.
2. The Domain Names and Registrar
The disputed domain names are <auto-chlor.com> and <auto-chlor.net> registered with Innerwise, Inc. d/b/a YourDomain.com of Schaumburg, Illinois, USA.
3. Procedural History
Auto-C filed a Complaint with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2003. The Center subsequently verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").
The Center notified the Respondent of the Complaint on April 23, 2003. On May 10, 2003, a response to the Complaint was served by a non-party identifying itself as "Electro Wiring Systems, Inc."
The Center appointed the undersigned as Sole Panelist in this matter on June 4, 2003.
4. Factual Background
Complainant is a leading U.S. manufacturer of commercial dishwashing machines and accessories sold under the mark AUTO-CHLOR. Complainant is the owner of several incontestable United States registrations of trademarks comprising the phrase AUTO-CHLOR, including the following:
- U.S. Reg. No. 363,438 for AUTO-CHLOR SYSTEM (stylized) issued December 27, 1938, reciting "chlorinating units for use with water systems" and use since February 4, 1937.
- U.S. Reg. No. 505,303 for AUTO-CHLOR (stylized) issued December 28, 1948, reciting "chemical solutions for sterilizing eating utensils" and use since January 1, 1938.
- U.S. Reg. No. 845,387 for AUTO-CHLOR (stylized) issued March 5, 1968, reciting "commercial dishwashing machines" and use since 1955.
- U.S. Reg. No. 1,018,200 for AUTO-CHLOR SYSTEM (stylized) issued August 12, 1975, for "maintenance and repair of dishwashing equipment" and use since February 4, 1937.
- U.S. Reg. No. 1,617,277 for AUTO-CHLOR issued October 16, 1990, for various goods in International Class 3 including "grease removing preparations for commercial dishwashers."
Respondent and his company, Electro Wiring Systems, Inc., market and sell what they call "a digital timer designed to replace the traditional analog timer found in chemical dispensing commercial dishwashers sold by businesses such as the Complainant" (Response at 2-3). According to Respondent, the timer marketed by him "replicates the functions of a chemical dispensing commercial dishwasher that have traditionally been controlled by a cam timer. This device replicates the functions of the cam timer with electronic precision that provides vastly improved accuracy and reliability in functioning for commercial dishwashers" (id. at 3). Respondent markets his timer product under the name DISHMACHINE and does so via an Internet website associated with the domain name <ew-sys.com>. In addition to the DISHMACHINE product, the "www.ew-sys.com" site features advertisements for diverse third parties offering telephone long distance services, telephone calling cards, satellite television, personal computers, home security services, and other goods and services. Among the third-party advertisers on the "www.ew-sys.com" website is "www.esoapers.com" whose site posts listings of used commercial dishwashing machines being offered for sale.
From time to time between March 29, 2001, and March 29, 2002, Respondent contacted Complainant and dealers in new AUTO-CHLOR dishwashers and attempted to interest them in purchasing DISHMACHINE timers from Respondent or his company. Respondent's solicitations were rebuffed. Then on April 8, 2002, Respondent registered the domain name <auto-chlor.com>. Approximately three weeks later on April 24, 2002, Respondent registered the domain name <auto-chlor.net>. Respondent caused these names to resolve to the "www.ew-sys.com" website. Respondent subsequently refused Complainant's demands that the domain names be transferred to Complainant.
5. Partiesí Contentions
Complainant contends that the domain names <auto-chlor.com> and <auto-chlor.net> are identical or confusingly similar to registered trademarks in which Complainant has rights. Complainant further contends that Respondent has no rights or genuine interests in the domain names <auto-chlor.com> or <auto-chlor.net>. Finally, Complainant alleges Respondent registered and has used the domain names <auto-chlor.com> and <auto-chlor.net> in bad faith.
Respondent "concedes that Complainantís Ďauto-chlorí trademarks are identical or confusingly similar to Respondentís registered domain names <auto-chlor.com> and <auto-chlor.net>" (Response at 3-4). Respondent nonetheless contends that his use of the domain names in question "is protected as fair use because the mark Ďauto-chlorí is descriptive in nature" (id. at 6). Respondent denies having registered or used the disputed domain names in "bad faith" within the meaning of the Policy.
6. Discussion and Findings
Paragraph 4(a) of the Policy entitles a Complainant to seek an administrative transfer of a second level Internet domain name in the event that it "proves," to the satisfaction of the Panel, three predicates: (1) an accused domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) a registrant has no rights or legitimate interests in respect of the accused domain name; and (3) a registrantís domain name has been registered and is being used in bad faith. A fact is "proved," for purposes of the Policy, when it is "more likely to be true than not true based on the evidence." Ciccone v. Parisi, WIPO Case No. D2000-0847 (October 12, 2000).
A. Similarity of the Disputed Domain Name and Complainantís Marks
As noted above, Respondent concedes that the domain names <auto-chlor.com> and <auto-chlor.net> are confusingly similar to Complainantís registered trademark, AUTO-CHLOR.
B. Rights or Legitimate Interests
Respondent has submitted no evidence that he had any rights or legitimate interests in the mark AUTO-CHLOR at any relevant time. The record shows, on the contrary, that Respondent registered the domain names <auto-chlor.com> and <auto-chlor.net> with full knowledge of Complainant's prior use of AUTO-CHLOR and after attempting, and failing, to establish a vendor-vendee relationship with Complainant. Respondent makes no claim, and submits no evidence, that he has ever been known as "AUTO-CHLOR," that he has ever marketed any goods or services identified by the mark AUTO-CHLOR, or that he has any other cognizable basis for claiming "rights" in the name AUTO-CHLOR.
Respondent contends he is within Paragraph 4(c)(i) of the Policy because he used the disputed domain names in connection with a commercial website "well in advance of any knowledge of this domain name dispute" (Response at 5). The contention is baseless. Paragraph 4(c)(i) of the Policy is addressed to cases of bona fide concurrent uses of names, as "where two parties independently are employing the same mark upon goods of the same class, but in separate markets wholly remote the one from the other." Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 415 (1916). Paragraph 4(c)(i) of the Policy has no proper application to a person, such as Respondent, who registers and commences use of a domain name with full knowledge of another's pre-existing use of an identical trademark, in the same geographic area, on closely related goods.
Equally baseless is Respondent's argument that its use of the domain names in question "is protected as fair use because the mark Ďauto-chlorí is descriptive in nature" (Response at 6). Respondent is making commercial, not "fair," use of the disputed domain names, in order to attract attention to products adapted for use in AUTO-CHLOR and other makes of commercial dishwashing machines, as well as to other goods and services totally unrelated to dishwashing machines that Respondent is marketing and selling. The "fair use" doctrine is patently inapplicable to such commercial advertising activity. Furthermore, in view of Complainant's ownership of an incontestable federal registration of AUTO-CHLOR as a mark for, among other things, commercial dishwashing machines, supplies for commercial dishwashing machines, and servicing of commercial dishwashing machines, Respondent's assertion that AUTO-CHLOR purportedly is merely descriptive of commercial dishwashing machine timers is both unsupported and, at all events, no basis on which Respondent could claim "rights" of use vis a vis the Complainant in this case. See Park ĎN Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 205 (1985) ("the holder of a registered mark may rely on incontestability to enjoin infringement and . . . such an action may not be defended on the grounds that the mark is merely descriptive").
Complainant has proved, to the Panel's full satisfaction, that Respondent has no rights or legitimate interests in the disputed domain names.
C. Bad Faith Registration and Use
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances which, if found by a Panel to be present, constitute "evidence of the registration and use of a domain name in bad faith." The Policy makes clear that a "bad faith" determination can be based on circumstances other than the four examples listed in Paragraph 4(b) of the Policy.
Here the record overwhelmingly supports a conclusion that Respondent registered the domain names <auto-chlor.com> and <auto-chlor.net> with bad faith intent to profit from pre-existing goodwill associated with those marks. The Panel rejects, as pretextual and false, Respondent's assertion that these names were adopted because they purportedly were "descriptive" of commercial dishwasher timers or any of the other goods and services offered at the "ew-sys.com" website.
The present case falls squarely within Paragraphs 4(c)(iii) and (iv) of the Policy which provide:
(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 website or other on-line location, by creating a likelihood of confusion with the Complainantís 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.
Both of the above-quoted provisions well describe the conduct of this Respondent as shown by the record. The Panel finds that it is more likely true, than not true, that Respondent registered and used the disputed domain names for the improper purpose of attempting to induce the Complainant, by wrongful and extortionate means, to purchase DISHMACHINE timer products from Respondent or his company. Appropriating Complainantís registered trademark, and preventing Complainant from using <auto-chlor.com> or <auto-chlor.net> to identify genuine AUTO-CHLOR commercial dishwashing equipment and accessories, were ways that Respondent could seek to induce Complainant into doing business with Respondent that Complainant would not otherwise engage in.
The Panel further finds that it is more likely true, than not true, that Respondent registered and has used the disputed domain name because Respondent was aware of the renown of the AUTO-CHLOR mark among potential purchasers of DISHMACHINE timer products, and Respondent intentionally attempted to attract, for commercial gain, Internet users to its "www.ew-sys.com" website by means of confusion or deception of persons seeking information concerning genuine AUTO-CHLOR products. Such conduct falls within the core of the proscribed "bad faith" justifying a transfer of a domain name under Paragraph 4(c)(iv) of the Policy.
I find in favor of the Complainant. The disputed domain names are legally identical to trademarks in which Complainant has rights. Complainant has proved to my satisfaction that the Respondent had no rights or legitimate interests in the disputed domain names at any relevant time. Complainant also has proved to my satisfaction that the disputed domain names were registered and are being used in bad faith. It is, therefore, ORDERED and ADJUDGED that the domain names <auto-chlor.com> and <auto-chlor.net> be transferred to Complainant.
James W. Dabney
Dated: June 18, 2003