WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Acme Electric, LLC v. Counter Balance Enterprises Limited
Case No. D2011-2217
1. The Parties
The Complainant is Acme Electric, LLC of Menomonee Falls, Wisconsin, United States of America, represented by Quarles & Brady LLP, United States.
The Respondent is Counter Balance Enterprises Limited of Wattana, Bangkok, Thailand.
2. The Domain Name and Registrar
The disputed domain name <acmetransformers.com> is registered with Fabulous.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 Fabulous.com a request for registrar verification in connection with the disputed domain name. On December 18, 2011, Fabulous.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 January 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2012.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on January 30, 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 Acme Electric LLC, a corporation based in the United States.
Acme Electric is the owner of registrations for trademark ACME TRANSFORMER in United States. The Complainant has been using the ACME TRANSFORMER trademark at least since 1968, in the country of origin and abroad, to identify transformers, ballasts, reactors, battery chargers, and other ancillary electrical power supply and control products. The documents attached as Annex 4 of the Complaint evidence this fact.
The mark ACME TRANSFORMER has acquired fame in their field of business, symbolizing the goodwill that the Complainant has created in its mark.
5. Parties’ Contentions
The Complainant is the owner of the trademark ACME TRANSFORMER, which is duly registered in United States. Due to the Complainant’s operations, trademark ACME TRANSFORMER has acquired recognition and is clearly linked to the Complainant.
Trademark ACME TRANSFORMER is clearly associated with the core business of the Complainant, as evidenced by the documents presented with the Complaint.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name <acmetransformers.com> is, indeed, confusingly similar to the ACME TRANSFORMER trademark, as it contains the entirety of the mark, with the addition of a simple “s”, inducing the idea of plural.
The Complainant, on its turn, has presented evidence of use and ownership of the mark ACME TRANSFORMER, as well as evidence of the renown of the ACME TRANSFORMER mark.
Given the above, the Panel concludes that the disputed domain name is confusingly similar with the registered mark of the Complainant, pursuant to the first element of the Policy.
B. Rights or Legitimate Interests
Given the clear evidence that the ACME TRANSFORMER mark is widely known as identifying the Complainant’s business and products, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Hence, the Panel finds that the Respondent cannot claim to have been using the trademark ACME TRANSFORMER without knowing the Complainant’s rights to it.
The Complainant has not licensed or authorized the Respondent to use its trademark or to register it as a domain name. In the circumstances of this case, the fact that the website associated with the disputed domain name leads to a page that lists several different links that sell similar products – most of them from the Complainant’s competitors - is a further indication that the Respondent has no rights or legitimate interests.
The Panel, thus, finds for the Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
The facts outlined in sections A and B above can be considered as further evidence of the Respondent’s bad faith in obtaining the disputed domain name.
The Respondent did not respond to the Complaint. This behavior has been considered as a further evidence of bad faith in registering and using a domain name in several previous WIPO UDRP decisions. In this case, it also supports a finding that the disputed domain name was registered and is used in bad faith.
The fact that the disputed domain name is directed to a website listing links to other competitors for the Complainant, where similar goods are advertised, is an attempt to mislead consumers and is also evidence of bad faith from the Respondent.
All the points above lead to the conclusion by this Panel that the Respondent must have been aware of the Complainant and that the Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that the Complainant has also proved the third element of the Policy
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 <acmetransformers.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Dated: February 20, 2012