Complainant is Teledyne Technologies Incorporated of Los Angeles, California, United States of America, represented by McGuireWoods LLP, United States.
Respondent is Texas International Property Associates-NA NA of Dallas, Texas, United States, represented by Rothstein Rosenfeldt Adler, United States.
The disputed domain name <teledynebenfits.com> is registered with Compana LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2009. On June 19, 2009, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On June 20, 2009, Compana LLC 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 June 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2009. The Response was filed with the Center on July 16, 2009.
The Center appointed Lynda M. Braun as the sole panelist in this matter on July 24, 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 has established rights in the mark TELEDYNE through its use of the mark and through the registration of the mark in various classes with the United States Patent & Trademark Office. Complainant also has international registrations of the TELEDYNE mark.
Complainant's registrations include those in international classes 5, 6, 7, 9, 11, 12, 13, 14, 20 and 42 for various industrial technical and scientific goods and services. The registration dates of these marks extend from 1956 through 1997.
Complainant contends that the domain name <teledynebenfits.com> is confusingly similar to the trademark TELEDYNE in which Complainant has rights.
Complainant also contends that Respondent has no rights or legitimate interests in respect of the domain name. Complainant claims that Respondent's name bears no connection to the domain name at issue in this case that would suggest that the domain name is related to a mark or trade name in which Respondent has rights. Complainant further contends that the registration of <teledynebenfits.com> was not authorized by Complainant and that Complainant contacted Respondent prior to filing this proceeding and Respondent did not reply.
Complainant finally claims that the domain name was registered and used in bad faith. When one types in the URL “http:teledynebenfits.com”, one is directed to a web page that promotes various goods and services, which page, among other things, includes links to sites that offer goods and services that appear to be offered by or are in competition with Complainant. According to Complainant, this confirms that Respondent is attempting to attract users to the website for commercial gain by creating a likelihood of confusion with Complainant's mark.
Respondent agrees to the relief requested by Complainant and states that, upon order of the Panel, it will transfer the domain name at issue to Complainant. Respondent further states that by agreeing to this relief, it is not admitting the three elements of 4(a) of the Policy, but rather is making an offer of a “unilateral consent to transfer”.
Respondent states that no analysis pursuant to the Policy is necessary since transfer of the domain name is offered, which is the relief requested by Complainant. Respondent states that the most expeditious way to proceed is not to make specific substantive findings under the Policy and that “judicial economy” commands a mere order of transfer of the disputed domain name without more. However, Respondent requests, that if the Panel disagrees with Respondent's suggested approach and decides that analysis of the elements is required, it be given the opportunity to prepare a more formal Response.
The threshold question here is whether the Panel should make substantive findings under 4(a) of the Policy as requested by Complainant or merely transfer the domain name without more as requested by Respondent. Numerous panels have considered this question and there appears to be a divergence of opinion among WIPO panels. This Panel has chosen to follow the line of cases that considers the merits of the Complaint despite Respondent's unilateral consent to transfer. See Chicago Pneumatic Tool Company LLC. v. Texas International Property Associates—NA NA, WIPO Case No. D2008-0144(the panel in that case treated it as if respondent had defaulted).1
This Panel has decided to consider the merits of this case for several reasons.
First, Rule 15(a) could be read to make it mandatory that the merits of every dispute be decided by the Panel. See Rule 15(a), which states: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law it deems applicable.”
Second, Respondent's tactics in its Response are a transparent attempt to avoid a determination of its bad faith. As demonstrated below, Respondent has pursued this approach on an abundance of occasions in the hope that no ruling on the merits would be made against it. If Respondent wanted to avoid a ruling on the merits, it could have replied to Complainant's cease and desist letter and made arrangements to transfer the domain name then without putting Complainant to the expense of this proceeding. Now that Complainant has expended so much effort in filing its Complaint, it is entitled to a ruling on the merits. See President and Fellows of Harvard College v. Texas International Property Associates-NA NA, WIPO Case No. D2008-0597 (Panel ruled on the merits despite Respondent's unilateral consent to transfer).
Third, Respondent's request to prepare a more formal response is an attempt to reserve rights not contemplated under the Policy. See Rules 5 and 12 which provide for the filing of a Response within the stated deadline without a reservation of rights to file a more formal response. Indeed, any further statements in addition to the complaint and response shall be at the discretion of the Panel and not the parties. If Respondent wished to make a case on the merits, it should have done so in its Response. See id.
Accordingly, as set forth below, this Panel will decide this case on the merits based on the three elements of 4(a) of the Policy.
Complainant has valid and well established, exclusive rights in its TELEDYNE trademarks. As prior WIPO UDRP panels have recognized, the incorporation of a trademark in its entirety is generally sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered mark. See Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are identical for purposes of the Policy). Thus, the domain name <teledynebenfits.com> is identical or confusingly similar to Complainant's mark TELEDYNE, in which Complainant has proven that it has rights.
Thus, the Panel concludes that Complainant has established the first element of the Policy.
Respondent has no rights or legitimate interest in respect of the domain name. Complainant has not authorized, licensed or otherwise permitted Respondent to use its trademark. The name of Respondent has no connection to the domain name that would suggest that it is related to a mark or trade name in which Respondent has rights. Respondent is not making a legitimate noncommercial or fair use of the domain name. Instead, Respondent is using the domain name for commercial gain.
Thus, the Panel concludes that Complainant has established the second element of the Policy.
The Panel finds that based on the record, Complainant has demonstrated the existence of Respondent's overwhelming bad faith pursuant to paragraph 4(b)(iv) of the Policy.
First, Respondent's use of Complainant's mark for paid links or “click-through” advertising revenue constitutes bad faith. Respondent is using the domain name at issue to resolve to a web site at which links to commercial entities, many of which are Complainant's competitors, are listed. Respondent is obviously deriving income from such links on a pay-per-click basis, which constitutes both bad faith registration and use. See ACCOR v. Steve Kerry/North West Enterprise, Inc., WIPO Case No. D2006-0649.
Second, the Panel infers Respondent's bad faith from its lack of reply to the cease and desist letter sent by Complainant prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210. If Respondent wanted to avoid a finding of bad faith in this proceeding, it could have made arrangements to transfer the domain name to Complainant without putting Complainant to the effort and expense of this proceeding. This Panel finds support for this conclusion in various other UDRP decisions involving this very same Respondent. In many of those cases, the panel reached a decision on the merits – and made a finding of bad faith — despite Respondent's unilateral consent to transfer in its Response. See President and Fellows of Harvard College v. Texas International Property Associates—NA NA, supra; Messe Frankfurt GmbH v. Texas International Property Associates—NA NA, WIPO Case No. D2008-0375. See also United Consumers Club, Inc. v. Texas International Property Associates—NA NA, WIPO Case No. D2007-0987 (listing a large number of cases in which Respondent was ordered to transfer its domain name registrations).
Third, the most compelling evidence of Respondent's bad faith is evidenced in its long pattern of abusive registration, infringement and cybersquatting. Domain names of Respondent incorporating famous and distinctive marks have been the subject of approximately one hundred UDRP proceedings, and in each case the panel ordered Respondent to transfer the disputed domain name to complainant. Such conduct is evidence of bad faith under 4(a) of the Policy.
Thus, the Panel concludes that Complainant has established the third element of the Policy.
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 <teledynebenfits.com> be transferred to Complainant.
Lynda M. Braun
Dated: August 6, 2009
1 Respondent in Chicago Pneumatic Tool Company is the same as Respondent in the present case. Respondent appears to be engaging in a pattern of cybersquatting—that is, of registering domain names that are confusingly similar to a trademark in which Respondent has no rights, and then attempting to avoid a decision on the merits by offering a unilateral consent to transfer to complainant in a UDRP proceeding.