Complainant is Air System Components, Inc. of Texas, United States of America, represented by Carlton Fields PA, United States of America.
Respondent is Cristal Enterprises of Florida, United States of America.
The disputed domain name <airbear.com> is registered with NameScout Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2009. On January 19, 2009, the Center transmitted by email to NameScout Corp. (“Registrar') a request for registrar verification in connection with the disputed domain name. On January 21, 2009, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on February 4, 2009. The Center verified that the Complaint together with the amendment to 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 February 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2009. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 27, 2009.
On February 27, 2009, the Center received an email communication from Respondent regarding its non-receipt of the “official copy” of the Complaint by email. On March 2, 2009, the Center sent its response to Respondent's email, enclosing a copy of the Complaint and the Notification of Complaint and Commencement of Administrative Proceeding as sent on February 6, 2009. Respondent sent communications to the Center on March 3 and 4, 2009, the receipt of which was acknowledged by the Center, and Respondent was informed that its email communications will be included in the case file to be forwarded to the Panel (on appointment) for its consideration and discretion. The Center also indicated that should Respondent wish to make a late Response, the same would be included in the file for the Panel to consider at its discretion. Respondent declined to submit a Response.
The Center appointed Ms. Lynda J. Zadra-Symes as the sole panelist in this matter on March 10, 2009. 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.
Complainant is the owner of United States Trademark Registration No. 2,934,688 for the mark AIRBEAR used in connection with “air filtering unit for residential and light commercial air handling systems and disposable filter cartridge therefore,” issued on March 22, 2005, with a claimed date of first use in August 1980.
Complainant submitted evidence that it has advertised, marketed and promoted its services using the AIRBEAR mark since at least 1980. Through its subsidiary, Trion Inc., Complainant's products are provided for commercial, industrial, residential and military markets, engineered to provide a clean, safe and comfortable indoor air environment. Complainant's customers purchase Complainant's AIRBEAR Media Whole-House Air Cleaners and replacement filters through HVAC distributors and contractors in the United States.
Complainant first became aware of Respondent's website on or about September 1, 2008, and sent Respondent a cease and desist letter on or about October 22, 2008 demanding that Respondent immediately stop all use of Complainant's AIRBEAR mark and assign the <airbear.com> domain name to Complainant.
Respondent initially indicated that it would transfer the domain name to Complainant. By December 8, 2008, however, Respondent indicated that it no longer intended to transfer the domain name to Complainant and would defend a claim by Complainant by asserting that Complainant's AIRBEAR mark had been abandoned.
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant's mark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent did not reply to Complainant's contentions.
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Complainant has demonstrated that it owns rights in the trademark AIRBEAR for use in connection with air filtering units and disposable filter cartridges as described above. The disputed domain name incorporates Complainant's trademark in its entirety. The addition of the “.com” generic top level domain denominator is irrelevant when determining whether a disputed domain name is confusingly similar to a protected trademark.
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant's trademark.
Respondent is not a franchisee, affiliated business or licensee of Complainant. Complainant has not authorized Respondent to register the disputed domain name or to otherwise use Complainant's mark.
Respondent's use of the mark is not made in connection with a bona fide offering of goods or services. Respondent does not offer Complainant's AIRBEAR products for sale on its site. Respondent offers its own replacement products rather than Complainant's products. On its website located at “www.airbear.com”, Respondent states:
“We are not associated with Trion, Inc. Our goal and only promise is to bring you after-market replacement filters that are an improvement over the brand filter, at a lower price. We have every model and size of replacement filter for your Trion Air Bear filter housing.”
The use of Complainant's mark in the disputed domain name leads Internet users seeking Complainant's products to Respondent's website, where they are then offered competing goods rather than Complainant's goods. This is not a bona fide, legitimate use of the domain name.
Respondent is not and has not been commonly known by the disputed domain name.
Respondent recently added the above disclaimer to its website stating that it is not associated with Complainant's subsidiary, Trion, Inc. This disclaimer is seen by Internet users only after they have been lured to Respondent's website by the use of Complainant's mark in the domain name. Such disclaimers do not negate initial interest confusion.
Accordingly, the Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of the documented out of pocket costs directly related to the domain name; or
(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website 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 website or location of a product or service on Respondent's website or location.
Complainant has been using the AIRBEAR mark since 1980, more than twenty-five years prior to Respondent's registration of the domain name. The use of Complainant's mark in Respondent's website content demonstrates that Respondent had actual knowledge of Complainant's mark at the time of registration of the domain name. By using Complainant's mark to lure Internet users to Respondent's website, where it offers for sale products that compete with Complainant's products, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website or products.
The Panel finds that Respondent has registered and used the disputed domain name in bad faith.
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 <airbear.com> be transferred to Complainant.
Lynda J. Zadra-Symes
Dated: March 24, 2009