WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Paragon Electric Co., Inc. v. Buy This Domain d/b/a NameRegister.Com
Case No. D2001-1439
1. The Parties
The Complainant is Paragon Electric Co., Inc. of 606 Parkway Blvd., Box 28, Two Rivers, WI 54241, United States of America.
Represented by Baker & McKenzie, of One Prudential Plaza, 130 East Randolph Drive, Chicago, Illinois 60601, United States of America.
The Respondent is Buy This Domain, Web Master, 5 Tpagichnery St., #33, Yerevan Yerevan 375010, Armenia.
Respondent is not represented.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: <paragonelectric.com>.
The Registrar with which the domain name is currently registered is Addresscreation, 53 Barcelona, Irvine, CA 92614, United States of America.
3. Procedural History
3.1 The Complaint was filed electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on December 7, 2001, and December 11, 2001, respectively.
3.2 On January 8, 2002, the Registrar verified:
(i) that a copy of the Complaint had been served on it;
(ii) that the domain name is registered with it;
(iii) that the current registrant of the domain name is the Respondent;
(iv) that the Policy applies to the registration of the domain name;
(v) that the domain name is currently in "Active" status;
(vi) that the language of the registration agreement is English;
(vii) Respondent's Administrative Contact, Billing Contact and Technical Contact is Buy This Domain Web Master, 5 Tpagrichnery St., #33, Yerevan Yerevan 375010, Armenia.
3.3 On January 9, 2002, all formal requirements for the establishment of the Complaint having been checked by the WIPO Center, the Amended Complaint was found to be in compliance with the applicable ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution Policy, and WIPO’s Supplemental Rules. The Panel has checked the file and confirms the WIPO Center's finding of proper compliance with the Rules and establishment of the Complaint.
3.4 On January 9, 2002, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding as follows:
(i) by courier, by facsimile and by e-mail to Respondent, the Administrative Contact, Billing Contact and Technical Contact;
(ii) by e-mail to the postmaster at the domain name;
3.5 Courier delivery of the Complaint was not effected (incorrect address). The facsimile delivery also appears to have been unsuccessful. The e-mail delivery appears to have been effected. The Panel is satisfied the responsibility on the Center imposed by Rule 2 of the Rules has been met and that Respondent received due notice of the Complaint.
3.6 The Administrative Proceeding commenced on January 9, 2002, and the Response was due on January 29, 2002.
3.7 No Response was filed and on January 31, 2002, Notice of Respondent Default was sent by e-mail to Respondent and to the Administrative, Billing and Technical Contacts.
3.8 Panelist Desmond J. Ryan, having filed the Statement of Acceptance and Declaration of Impartiality and Independence, the Panel was appointed on February 8, 2002.
4. Factual Background
4.1 The domain name was registered on June 30, 2001.
4.2 Complainant is a U.S. Corporation established in 1903, which manufacturers and markets specialised electrical and telephone equipment, time switches, timing devices, electrical and electronic process controllers for industrial and domestic use, and claims to be a world leader in time and energy control (Complaint Exhibit 3).
4.3 Complainant is the registered proprietor in U.S.A., Canada and New Zealand of trade marks dating from 1963 registered in respect of a variety of electrical and electronic timing and control devices.
4.4 No Response having been filed, no information is available in relation to Respondent other than that provided by Complainant and what can be gleaned by implication from Respondent's name. It appears from this that Respondent is a person purporting to have an address in Armenia and telephone and fax facilities located in Idaho, U.S.A. Respondent appears to be in the business of registering and selling domain names, and of linking those domain names to pornographic and/or gambling web sites.
4.5 The domain name links to a portal page entitled "Adult Links" offering entry to a variety of pornographic sites and showing the words "click here to buy this domain name" (Complaint Exhibit 5). Following that link leads to an on-line offer/request form seeking offers for a domain name at prices in excess of 550 U.S. dollars, (Complaint Exhibit 6).
4.6 On November 1, 2001, Complainant, through its attorneys, made an e-mail offer to purchase the domain name for $300 and received in return a counteroffer to sell for $6,750. A further offer to purchase for $600 was made on November 6, 2001, and Complainant's attorneys received in response a counteroffer to sell for $7,500, (Affidavit of Jasmine Abdel-Khalik). On November 16, 2001, Complainant's attorneys sent a letter of demand to Respondent's fax address but received no reply.
5. Applicable Dispute
5.1 This dispute is one to which the Policy applies. By registering the domain name, Respondent accepts the dispute resolution policy adopted by the Registrar. The Registrar's current policy set out in its domain name registration agreement is the Policy.
5.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
6. The Parties' Contentions
6.1 Complainant asserts that the domain name is identical or confusingly similar to its PARAGON trade marks and its PARAGON ELECTRIC trade name. Complainant also asserts that Complainant's long history of use of its PARAGON and PARAGON ELECTRIC marks have resulted in the establishment of considerable and valuable goodwill.
6.2 Complainant asserts that Respondent is not in any way related to, associated or in business with, Complainant, and Complainant has not granted Respondent any rights to use the PARAGON or PARAGON ELECTRIC names. Complainant contends therefore that Respondent has no rights or legitimate interests in, or to the domain name.
6.3 Complainant contends that Respondent has registered and is using the domain name in bad faith.
6.4 Complainant bases its contention on documented assertions of fact that:
(i) Respondent has linked the domain name to a hard core pornography site, (Complaint Exhibits 5 and 17), and that such sites charge fees.
(ii) Respondent conceals its identity, but operates under a variety of pseudonyms, including the present Respondent name, in the registration, and offering for sale of domain names consisting of, or derived from the names and trade marks of others and cites in support and by way of example, the case of Singapore Telecommunications Limited v. Domain for Sale - HTTP://offers.NameRegister.com WIPO Case D2001-1059.
6.5 No response having been filed, Complainant's contentions are not rebutted.
7. Discussion and Findings
Identical or Confusingly Similar Trade Mark
7.1 The operative part of the domain name consists of the running together of the words PARAGON and ELECTRIC. Complainant has clearly established trade mark rights in the word PARAGON. That word is the distinctive part, both of Complainant's company name and of the domain name, and its use in the domain is likely to result in confusion with Complainant's trade mark. The likelihood of confusion is further heightened by the fact that the domain name consists of the operative part of Complainant's corporate name.
7.2 The Panel therefore finds that the domain name is confusingly similar to the trade mark PARAGON, in which Complainant has rights.
Rights and Legitimate Interests
7.3 Complainant has established its rights in the trade mark with which the domain name is confusingly similar and has asserted that it has no connection with, and has not granted any licence or authority to Respondent to use the domain name. Complainant has presented a prima facie showing of Respondent's lack of rights or legitimate interest in the domain name, and Respondent has failed to rebut that showing. Respondent's unauthorised use of the domain name to link to a pornographic site does not constitute use in the bone fide offering of services at the site.
7.4 The Panel therefore finds that Complainant has established that Respondent has no rights or legitimate interests in the domain name.
Bad Faith Use and Registration
7.5 The evidence establishes that Respondent is engaged in the business of selling domain names and of linking domain names to pornographic sites. Neither of those practices is per se conclusive of bad faith registration and use. Where those practices become illegitimate is where a domain name incorporating a trade mark, the property of another, is their subject.
7.6 Paragraph 4(b) of the Policy sets out certain non-limiting circumstances which, if found by the Panel to be present, shall be evidence of registration and use of the domain name in bad faith. They include:
(i) registration or acquisition of the domain name primarily for the purpose of selling it to Complainant or a competitor of Complainant at more than out-of-pocket costs; and
(ii) use of the domain name in an intentional attempt, for financial gain, to attract users to the web site by creating confusion with Complainant's trade mark.
7.7 Adoption of a domain name containing Complainant's trade mark and corporate name to link to a pornographic web site raises an overwhelming presumption that the purpose of such registration and use is to attract to the web site persons seeking to contact Complainant. There is an equally strong presumption that Respondent seeks to benefit financially from the confusion thus created. The presumption also exists that a further motive for the registration and use of the domain name in a manner which is derogatory of the Complainant is to entice the Complainant to offer to purchase the domain name at a cost in excess of the cost of registration. These presumptions are not rebutted.
7.8 The Panel therefore finds that Complainant has established a prime facie showing of registration and use in bad faith, and that showing has not been rebutted by Respondent.
8.1 The Panel decides and orders that:
(i) The domain name is confusingly similar to a trade mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in the domain name;
(iii) The domain name was registered and is being used in bad faith; and
(iv) The domain name shall be transferred to Complainant.
Dated: February 20, 2002