The Complainant is Certified Parts Corporation of Janesville, Wisconsin, United States of America, represented by Whyte Hirschboeck Dudek, SC, United States.
The Respondent is Above.com Domain Privacy, of Victoria, Australia and Transure Enterprise Ltd of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <lausonpowerproducts.com> (“the Disputed Domain Name”) is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2009. On August 4, 2009, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On August 6, 2009, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 7, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 11, 2009 targeting the newly identified Respondent.1 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 the Respondent of the Complaint, and the proceedings commenced on August 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 3, 2009.
The Center appointed Jacques de Werra as the sole panelist in this matter on September 14, 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.
The Complainant is the owner of a LAUSON word trademark for use on internal combustion engines and parts therefore which was registered in Australia in 1965 (Reg. No. 197092) (“the Trademark”). It also claims to be the owner of a word and design Benelux trademark the verbal element of which is LAUSON (Reg. No. 0089117)2. The Complainant has also filed a United States trademark application for “LAUSON” (Serial No. 77720654) on April 23, 2009.
The Trademark had been used in connection with lawn and garden products, snowblowers and industrial power equipment.
The previous owner of the Trademark (Lauson Power Products Company) was acquired by the Tecumseh Products Company, which later sold its power products business to TecumsehPower Company. The assets relating to TecumsehPower Company, including the rights in the Trademark, were subsequently purchased by the Complainant in February 2009.
The Disputed Domain Name was registered on January 7, 2009.
The Complainant first claims that the Disputed Domain Name is identical to the company name of the former owner of the Trademark (Lauson Power Products), of which the assets (including the Trademark) are now owned and in use by the Complainant. The Disputed Domain Name incorporates the Complainant's registered trademark LAUSON, in addition to the descriptive terms “power products,” which constitutes a clear attempt to confuse consumers who are searching for the Lauson power products brand name.
The Complainant notes that the Disputed Domain Name was registered on January 7, 2009. This registration took place at the time when the Complainant was in confidential negotiations with TecumsehPower Company for the purchase of its assets. Such timing of registration confirms that the Respondent was attempting to take advantage of confidential inside information during the transaction and was seeking to disrupt the Complainant's ability to further utilize the assets it purchased for the sale of lawn and garden products, snowblowers and industrial power equipment.
The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it has not granted to the Respondent any license or otherwise permitted the Respondent to use the Trademark or to register for any domain name(s) incorporating the Trademark.
The Complainant also claims that the Respondent is not known by the Disputed Domain Name and that he has not registered any trademarks corresponding to the Disputed Domain Name.
In addition, to the best of the Complainant's knowledge and information, the Respondent is not making any use whatsoever of the Disputed Domain Name in connection with a bona fide offering of goods and services. The Respondent is rather using the Disputed Domain Name to redirect Internet users to an automatically-generated “parking site” or “landing site” which provides for numerous links, some of which redirect to products competing with those of the Complainant such as welders, compressors and power tools. On this basis, such use of the Disputed Domain Name cannot be seen as a bona fide offering of goods or services.
The Complainant finally claims that the Respondent attempted to attract Internet users to the Respondent's web site for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, affiliation, or endorsement of the Respondent's web site or of a product or service on the Respondent's web site or location, which is an evidence of registration and use of a domain name in bad faith. This is precisely what Respondent does by using the Disputed Domain Name to resolve to a pay-per-click parking page, with links to competitive products such as welders, compressors and power tools.
The Complainant also claims that the Respondent is known to be a typical cyber-squatter who registered numerous domain names which clearly conflicted with the trademark rights of third parties, as evidenced by the fact that the Respondent has been found in breach of the Policy in no less than 14 decisions rendered against it in the last 18 months in UDRP proceedings.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding. Thus, for the complainant to succeed, it must prove all of the three elements under the Policy:
(i) the respondent's 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 respondent's domain name has been registered and is being used in bad faith.
The Panel is satisfied that the Complainant has rights to the Trademark as resulting from its Australian trademark.
A comparison between the Disputed Domain Name and the Trademark shows that the Disputed Domain Name contains the term “lauson” to which the terms “power products” have been added.
As noted by numerous other panels, the use of descriptive terms in addition to the trademark in the relevant domain name does not prevent a finding that the domain name is “confusingly similar” to the relevant trademark. This is particularly so when the added descriptive term(s) relate(s) to the Complainant's business activities in which case such addition rather increases the risk of confusion. This is precisely the case here given that the Disputed Domain Name corresponds to the name of the previous owner of the Trademark.
As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that the conditions of paragraph 4(a)(i) of the Policy are met.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the 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 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.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In this case, the Panel finds no evidence that the Respondent ever had any rights or legitimate interests in the Disputed Domain Name. Based on its uncontradicted allegations, the Complainant has demonstrated that the Disputed Domain Name hosts a website providing links to third party websites in what appears to be a “click-through” site being part of a domain name parking program, whereby some of these links point to products competing with those of the Complainant.
The Panel further acknowledges that the Complainant never authorized, licensed or permitted the Respondent to use the Trademark in any manner and that the Respondent is not commonly known by the Disputed Domain Name.
On this basis, the Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name and similarly that the Respondent has not established any rights to or any legitimate interests in the Disputed Domain Name.
The Panel is consequently satisfied that the Complainant has established that the second requirement of paragraph 4(a) of the Policy is met.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of 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 (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;
(ii) circumstances indicating that 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;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In this case, based on the uncontradicted evidence filed by the Complainant, the Panel is prepared to find that the Respondent registered the Disputed Domain Name and uses it for the purposes of monetary gain by providing links to sites which are unrelated to the ones of the Complainant or are in some cases even competing with the products of the Complainant. Such use of the Disputed Domain Name can only be explained by the intent of the Respondent to attract Internet traffic by capitalizing on the Complainant's Trademark. This type of use of the Disputed Domain Name constitutes sufficient evidence of the bad faith of the Respondent under paragraph 4(b)(iv) of the Policy. See Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968 and Imperial Chemical Industries PLC v. RareNames, WIPO Case No. D2006-0124.
It has also been shown by the Complainant that the Respondent has engaged in a pattern of conduct in registering domain names which are confusingly similar to third party trademarks which constitutes another confirmation of the bad faith of the Respondent, as evidenced by the numerous UDRP decisions which have been rendered against it. See, e.g., Intesa Sanpaolo S.p.A v. Above.com Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-0838.
For all these reasons, the Panel considers that the Complainant has established that the Disputed Domain Name was registered and is being used in bad faith by the Respondent pursuant to paragraph 4(a)(iii) 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 <lausonpowerproducts.com> be transferred to the Complainant.
Jacques de Werra
Dated: September 28, 2009
1 Unless otherwise specified, the references to the Respondent's activities and conducts that shall be made in this decision shall relate to such newly identifed Respondent.
2 The relevant document filed by the Complainant (i.e. an excerpt from the relevant Benelux trademark registry) however identifies Tecumseh Products Company as owner of such trademark; in any case, this issue of the ownership of the Benelux trademark is of no relevance on the outcome of the case, given that the Complainant is the registered owner of the Trademark in Australia.