WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Teledyne Technologies Incorporated v. Marketing Instincts
Case No. D2006-1071
1. The Parties
The Complainant is Teledyne Technologies Incorporated of Los Angeles, California, United States of America, represented by McGuireWoods LLP, United States of America.
The Respondent is Marketing Instincts of Temecula, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <teledynecompanystore.com> is registered with Melbourne IT, trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2006. On August 24, 2006, the Center transmitted by email to Melbourne IT (trading as Internet Names Worldwide) a request for registrar verification of the domain name at issue. On August 25, 2006, Melbourne IT transmitted by email to the Center its response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center 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”).
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 August 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for a Response was September 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2006. On September 25, 2006, Jon Buller of Marketing Instincts sent the Center an email indicating that Respondent was willing to transfer the disputed domain name to Complainant. On September 28, 2006, Complainant requested the Center to suspend the proceeding for 30 days because of “settlement talks”, which the Center did. On October 27, 2006, Complainant requested the Center to reinstitute the proceeding because “[w]e have encountered difficulties in our settlement talks,” which the Center did.
The Center appointed Miriam Sapiro as the sole panelist in this matter on November 8, 2006. 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 owns trademarks related to its business of providing electronic components, instruments and communications products, including defense electronics, data acquisition and equipment for aircraft, monitoring and control instruments for industrial and environmental applications and components, and subsystems for wireless and satellite communications. These marks include, for example, TELEDYNE (No. 1,769,780) (May 11, 1993) and TELYDYNE (No. 1027815) (December 23, 1975), which are registered with the U.S. Patent and Trademark Office. Complainant’s business of providing goods and services relating to defense electronics, electronic instruments and commercial electronics dates back to 1960. Today Complainant consists of more than 40 companies around the world (see, e.g., ”http://www.teledyne.com/aboutus/companies.asp”).
Respondent is using the disputed domain name to resolve to the website “www.marketing instincts.com”, which advertises a company called “Marketing Instincts” that offers “marketing services for today’s and tomorrow’s competitive business strategies” (see “http://www.marketinginstincts.com/flashversion/flash.html”).
5. Parties’ Contentions
Complainant contends that the domain name registered and being used by Respondent is confusingly similar to trademarks in which Complainant has established rights through use and registration of TELEDYNE in the United States and other jurisdictions. Complainant argues that the “words ‘company’ and ‘store’ are generic terms with no distinctive character and appear to be used in association with the trademark TELEDYINE in order to cause increased confusion” when a user is searching for the Complainant’s goods and services. Noting that Marketing Instincts and its website are unrelated to Complainant or its registered mark TELDYNE, Complainant contends that Respondent has no rights or legitimate interest in the domain name, Accordingly, Complainant concludes that Respondent is using “teledynecompanystore.com” in bad faith in order to attract users to its own website for commercial gain.
The Respondent did not reply to the Complaint, although its email of September 25, 2006, to the Center confirms that it is aware of this dispute.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present in order to prevail:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Because the Respondent failed to reply to the Complaint, in accordance with paragraphs 5(e) and 14 of the Rules, the Panel will base its decision on the Complaint and draw such inferences from Respondent’s failure to reply as it considers appropriate. See, e.g., Plymouth State College v. Domains, Best Domains, WIPO Case No. D2002-0939 (December 20, 2002).
A. Identical or Confusingly Similar
It is undisputed that Complainant is the holder of trademark registrations for TELEDYNE in the United States and is using those marks in commerce, see, e.g., TELEDYNE (No. 1,769,780) (May 11, 1993) and TELYDYNE (No. 1027815) (December 23, 1975). In addition, the Complaint contains detailed information about eight other trademark registrations with the U.S. Patent and Trademark Office. Complainant’s rights in the TELEDYNE mark arose before Respondent registered <teledynecompanystore.com> in 2005.
Respondent’s registration of <teledynecompanystore.com> (1) incorporates Complainant’s distinctive mark TELEDYNE and (2) adds generic words that are descriptive of Complainant’s business, namely “company” and “store”. These two generic words, however, do not create new or different marks in which Respondent could have legitimate rights. See, e.g., Kabushiki Kaisha Toshiba d/b/a Toshiba Corp. v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464 (July 27, 2000) (“use of suffix ‘store’ [in <toshibastore.com>], a generic word is an irrelevant distinction, which does not change the likelihood for confusion”); Briggs & Stratton, Corporation v. Suresource, WIPO Case No. D2000-1582 (March 29, 2001) (“Complainant has proved it has rights in the trademark BRIGGS & STRATTON and that the disputed domain name <briggsandstratton-store.com> is confusingly similar thereto).
This Panel concludes that <teledynecompanystore.com> is confusingly similar to Complainant’s mark within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy describes three ways in which a Respondent may establish rights or legitimate interests in a disputed domain name. They are:
(i) before any notice of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the domain name, even if [it has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the Record suggesting that Respondent was using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods or services. There is also no evidence in the Record that Respondent has been commonly known by the name of Teledyne. Finally, Respondent has failed to establish that it is making legitimate noncommercial or fair use of the domain name. On the contrary, as of the date of this decision, Respondent continues to use <teledynecompanystore.com> to lure users to “www.marketinginstincts.com”, a commercial website that advertises its marketing services. This website claims that “[w]e are experts in this field. We know what works, what’s hot, what will appeal to your specific target market, and what will help you improve your bottom line”, see “http://www.marketinginstincts.com/flashversion/flash.html”.
The Complainant further states that it has not authorized the Respondent to use its mark in the disputed domain name. In addition, the Complainant alleges that a search at the United States Patent and Trademark Office indicates that the Respondent holds no trademark rights for marks including the term “TELEDYNE”.
The Panel therefore finds no evidence that would support a finding that Respondent has any rights to, or legitimate interests in, the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, shall constitute 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 who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) [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) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of [the Complainant]; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 the web site or location or of a product or service on [the] web site or location.
The Panel finds evidence of the registration and use of the domain name in bad faith under the fourth paragraph of paragraph 4(b) of the Policy. As noted above, Respondent is using the disputed domain name to redirect traffic to its own commercial website, which offers marketing services. Respondent has created a likelihood of confusion with Complainant’s TELEDYNE mark as to the “sponsorship, affiliation [and] endorsement” of its marketing business. Indeed, Respondent’s website claims that “[m]any Fortune 500 businesses have put their trust in us to protect the integrity of their corporate logos and assist them in accomplishing their marketing goals”, see “http://www.marketinginstincts.com/flashversion/flash.html”. By using <teledynecompanystore.com> to resolve to “www.marketinginstincts.com”, Respondent has created confusion as to the sponsorship, affiliation and endorsement of its marketing business. As noted above, the Panel finds evidence of the registration and use of the domain name in bad faith under the fourth paragraph of paragraph 4(b) of the Policy.
Accordingly, the Complainant has demonstrated that each of the elements of paragraph 4(a) of the Policy is satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <teledynecompanystore.com> be transferred to the Complainant.
Dated: November 20, 2006