World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Acme Electric, LLC v. Private Registrations Aktien Gesellschaft, Domain Admin

Case No. D2011-2215

1. The Parties

The Complainant is Acme Electric, LLC of Menomonee Falls, Wisconsin, United States of America (the “United States”), represented by Quarles & Brady LLP, United States.

The Respondent is Private Registrations Aktien Gesellschaft, Domain Admin, of Kingstown, Saint Vincent and the Grenadines.

2. The Domain Name and Registrar

The disputed domain name <acmetransformer.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2011. On December 16, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On December 17, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on December 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2012.

The Center appointed David Levin Q.C. as the sole panelist in this matter on January 26, 2012. 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 Complainant is the owner of the ACME TRANSFORMER trademark (including United States Registration Nos. 2260869 and 2274146) which it uses in the United States and elsewhere in connection with its business relating to transformers, ballasts, reactors, battery chargers, electrical power supplies, DC power supplies, voltage stabilisers, adjustable frequency regulators, voltage regulators, and other ancillary electrical power supply and control products. The Complainant has used the ACME TRANSFORMER trademark in connection with its goods since 1968. These registrations are valid, subsisting and in full force and effect

The Complainant advertises its products in various ways, including by the promotion on the Internet utilising a site registered by its parent company, at “www.acmepowerdist.com”.

According to information provided by the Registrar, the disputed domain name was registered on January 11, 2001.

5. Parties’ Contentions

A. Complainant

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. The Complainant contends that it meets these requirements in that, on the evidence:

(i) the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights;

(ii) the Respondent lacks rights or legitimate interests in the disputed domain name; and

(iii) the Respondent registered and uses the domain name in bad faith.

The Complainant maintains that on the evidence produced it has established each of the three elements required.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Respondent has not disputed any of the allegations made against it by the Complainant. Paragraph 14 of the Rules prescribes that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate. There are no exceptional circumstances here disclosed.

A. Identical or Confusingly Similar to a trademark or service mark in which the Complainant has rights

The Respondent used the Complainant’s trademark in its entirety (merely conflating it to a single word) as the disputed domain name, which resolves to a website containing sponsored links. Ignoring the suffix “.com”, which is irrelevant in this consideration, the conflation of two words into one does nothing to reduce the similarity of the disputed domain name when compared with the trademark. The Panel finds that the domain name is indeed confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not and never has been in any commercial relationship with the Complainant and has never been authorised to use the Complainant’s trademark. There is no evidence of any use or demonstrable preparation to use the disputed domain name in connection with any bona fide offering of goods or services legitimately connected with the Complainant’s trademarked goods.

C. Registered and Used in Bad Faith

This Panel finds bad faith registration and use because the Respondent’s actions meet the criteria listed in paragraph (4)(b)(iv) and thus the third element of the Policy is fulfilled.

Paragraph 4(b)(iv) of the Policy offers guidance as to when bad faith shall be found.

(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant's trademark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.

The Panel infers from the evidence presented that the Respondent has registered the disputed domain name in order to misleadingly divert consumers by attracting them through the confusingly similar domain name and then collecting revenue by featuring sponsored listings, many of which are links to companies or products which compete with the Complainant’s ACME TRANSFORMER trademarked goods. The Respondent is attempting to divert to its sponsors any Internet users who might enter a product name into an Internet browser in the hope that the name will resolve into a website for those goods, and thereby profit from the misuse of the Complainant’s registered trademark.

If there were any doubts about the conclusion that the Respondent has registered and used the disputed domain name in bad faith, contrary to the Policy and the Rules, the Panel accepts the fact that a previous panel decision, Bayerische Motoren Werke AG v.Private Registrations Aktien Gesellschaft, WIPO Case No. D2010-0898 has concluded that the Respondent is a "serial cybersquatter" and that in the last three years from 2009 a further 18 panel decisions have been decided against the Respondent in UDRP cases.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <acmetransformer.com> be transferred to the Complainant.

David Levin Q.C.
Sole Panelist
Dated: January 31, 2012

 

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