WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Danaher Corporation v. DYNAPAR.COM c/o Whois Identity Shield
Case No. D2006-1395
1. The Parties
The Complainant is Danaher Corporation, Washington DC, United States of America, represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States of America.
The Respondent is DYNAPAR.COM c/o Whois IDentity Shield, Vancouver, Canada.
2. The Domain Name and Registrar
The disputed domain name <dynapar.com> is registered with Nameview Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2006. On November 3, 2006, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On November 3, 2006, Nameview Inc. transmitted by email to the Center its verification 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”).
On November 8, 2006, the Complainant confirmed that, notwithstanding its name appearing on the registration document as registrant, it had no control over the disputed domain name.
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 November 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2006.
The Center appointed Clive N.A. Trotman as the sole panelist in this matter on December 19, 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
The facts are summarized from information provided by the Complainant.
Danaher Corporation (“Danaher”) designs, manufactures and markets innovative products and services including professional instruments, tools, microscopes, dental diagnostics, large-scale disinfection systems, transaction systems and network analyzers.
Dynapar has been part of the Danaher Industrial Controls Group since 1984, and makes rotary encoders, absolute and incremental encoders, motor mount encoders, and other products.
The DYNAPAR mark has been used in commerce by the Complainant since at least as early as 1984. The trademark DYNAPAR is a coined and fanciful word having no denotative meaning. The Complainant’s predecessor in interest, Dynapar Corporation, previously owned U.S. Trademark Registration No. 896,866 for the trademark DYNAPAR, for a wide range of instruments. The registration was inadvertently allowed to expire in 2001. Nevertheless both the Complainant and its predecessor in interest have continually used the DYNAPAR mark. On February 20, 2006, Danaher applied to register the mark for electronic factory automation control systems and a wide variety of instrumentation (United States Trademark Application No. 78819040).
The disputed domain name <dynapar.com> is recorded as having been first registered on November 15, 2001, and most recently updated on November 1, 2005. The registration document names the registrant to be Dynapar.com but the domain name was not registered by the Complainant. The registration document intentionally conceals the true identity of the registrant by means of a service called IDentity Shield provided by the Registrar.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights. The disputed domain name (i) wholly incorporates the DYNAPAR trademark; (ii) is identical to the DYNAPAR trademark; and (iii) is so clearly similar to the Complainant’s trademark that it is likely to cause confusion among consumers and the Complainant’s clients. The Complainant submits that it is well established that a domain name incorporating a trademark does not create a new or different mark.
The Complainant contends that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant’s registration of its trademark well predates the Respondent’s registration of the domain name. There has never been any connection between the Complainant and the Respondent. The Respondent is not and never has been a representative of the Complainant or licensed to use the DYNAPAR mark. The Respondent is not commonly known by the name “dynapar”.
The nature of the specialized items in which the Complainant trades, such as encoders, and the references to these and the use of the Complainant’s name and trademark in the Respondent’s website, show that the Respondent must have known of the Complainant’s trademark before registering the domain name.
The uses to which the Respondent puts the website include the offering of advertising space for sale. Visitors are offered links to other websites operated by suppliers of items similar to or related to the Complainant’s goods and services or in competition with them. Diversion to sites that might possibly sell genuine products of the Complainant, without the Complainant’s authority, would not constitute bona fide use of the domain name.
The Complainant contends that, for the foregoing reasons, the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complaint to be proceeded with, the Complainant and the dispute service Provider must endeavor to serve notification of the Complaint on the Respondent in accordance with the Rules. The Respondent has taken steps to conceal its identity and to avoid receiving communications by availing itself of a service marketed as “IDentity Shield” by the Registrar.
In accordance with paragraph 1 of the Rules, the Respondent is defined as follows:
“Respondent means the holder of a domain-name registration against which a complaint is initiated.”
The best identification of the Respondent is therefore the entity named as registrant, which is “DYNAPAR.COM c/o Whois IDentity Shield” at the address and contact details provided. The Respondent’s physical contact address is given as the address of the Registrar, namely, 142-757 W. Hastings St., Suite #777, Vancouver BC, Canada V6C 1A1. Exactly the same particulars are provided for the Administrative Contact and the Technical Contact, except that they each provide different temporary email addresses that have now passed a pre-arranged expiry date.
The particulars provided are taken to be sufficient information for the Registrar to identify its client, the registrant, and therefore the best available and sufficient address for the service of the Complaint upon the Respondent. The Panel is satisfied that the Complainant and the dispute service Provider have discharged their obligations under paragraph 2 of the Rules to employ reasonably available means to contact the Respondent.
It is noted that the Registrar says, in its literature reproduced and appended by the Complainant, that it will reveal domain ownership information “to an ICANN-approved UDRP arbitrator if required as part of an ongoing UDRP dispute.” The Panel, whilst acknowledging that the Complainant in an undefended case must still prove its case, nevertheless considers that the onus is on the Respondent to reply with any information about its identity that could have a bearing on the legitimacy or otherwise of its registration. It is not necessary for the Panel to know the identity of the Respondent for its decision to be implemented by the Registrar in accordance with paragraph 3(c) of the Policy.
Paragraph 4(a) of the Policy states that the Respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.
A. Whether the Domain Name is Identical or Confusingly Similar to a Trademark
The Complainant provides documentary evidence that it has used the word “dynapar” extensively as its trademark from 1984 until the present. For most of that time, from 1984 to 2001, the trademark was properly registered, but was inadvertently allowed to lapse in 2001 although continuing to be used since. The trademark registration was again applied for at the United States Patent and Trademark Office on February 20, 2006, with first use in commerce stated to be December 31, 1984. The Complainant has, at the least, long-standing common law rights in the trademark DYNAPAR.
The word “dynapar” is, according to the Complainant, a contrived and distinctive word having no meaning except as the Complainant’s trademark. By common knowledge a number of commercial concerns have adopted names beginning with “dyna”-, implying movement, however it is accepted that the word “dynapar” is unique and is the invention of the Complainant or its predecessors in interest.
The disputed domain name is <dynapar.com>. It is well established in precedent cases that the gTLD suffix, in this case “.com”, is an inevitable part of the domain name that has no bearing on the question of confusing similarity. What remains, “dynapar”, is identical to the mark in which the Complainant has rights. The Panel finds the disputed domain name to be identical to the Complainant’s trademark in the terms of paragraph 4(a)(i) of the Policy.
B. Whether Respondent has Rights or Legitimate Interests in Respect of the Domain Name
The Complainant is required to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states or implies in evidence that it has not licensed, permitted or authorized the Respondent to use the trademark DYNAPAR, nor entered into any relationship that could give the Respondent any right or interest in the trademark, and that there is no reason why the Respondent could have any such right or interest. It is clear from the Complainant’s evidence that the Respondent is not an authorized representative or reseller of the Complainant’s products.
A prima facie case is thereby made out to the effect that the Respondent does not have any rights or legitimate interests in the disputed domain name. The onus shifts to the Respondent to refute the Complainant’s assertions. This the Respondent has not done as it has not replied at all. In particular, in the terms of paragraph 4(c) of the Policy, there is nothing to suggest that the Respondent may have used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or been commonly known by the domain name; or made a legitimate noncommercial or fair use of the domain name. The potential defences provided for in paragraph 4(c) of the Policy are not exclusive but the Respondent has not offered any alternatives.
The Panel finds that the Respondent does not have a right or legitimate interest in the domain name in the terms of paragraph 4(a)(ii) of the Policy.
C. Whether the Domain Name Has Been Registered and is Being Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith. Paragraphs 4(b)(iii) and 4(b)(iv) are pertinent to the present case and provide for a finding of bad faith where:
“(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 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.”
Examination of the screen prints of the Respondent’s website submitted in evidence show a format that, in the Panel’s view, would falsely convince many visitors that the site authentically belonged to the Complainant. The site features the Complainant’s trademark and appears to offer to supply, or to provide links to suppliers of, highly specialized goods in the nature of the Complainant’s business. A search box is provided that, according to the Complainant’s evidence, may divert enquirers to either irrelevant businesses or to competitors of the Complainant, and to this extent the Respondent has set itself in competition with the Complainant as a primary purpose.
The Respondent’s ploy is well recognized. It consists of the appropriation of another’s trademark and goodwill in the expectation that Internet users will find the site by confusion while seeking the genuine Complainant. They are expected to think that the site is endorsed by the Complainant, but they will be diverted to alternative suppliers. In the absence of any explanation from the Respondent it may reasonably be concluded that the revenue-generating device known as “click-through” has been set up, whereby the Respondent receives payment from advertisers for diverting users to them. These activities constitute registration and use in bad faith within the terms of paragraphs 4(b)(iii) and 4(b)(iv) of the Policy, and the Panel so finds.
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 <dynapar.com> be transferred to the Complainant.
Dr Clive N.A. Trotman
Dated: January 2, 2007