Simoniz USA, Inc. v. Birgit Klostermann
Case No. D2005-1031
1. The Parties
The Complainant is Simoniz USA, Inc., Bolton, Connecticut, United States of America, represented by McCormick, Paulding & Huber LLP, Hartford, CT, United States of America.
The Respondent is Birgit Klostermann, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <simoniz.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2005. On October 3, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On October 5, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 17, 2005. 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”), 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 October 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2005.
The Center appointed François Dessemontet as the Sole Panelist in this matter on November 17, 2005. The Panel finds that it was properly constituted. The Panelist 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
Complainant is the owner of the rights to the valid and subsisting <simoniz> trademark. The Complaint is based on fourteen United States trademarks and service marks (hereinafter collectively the SIMONIZ marks) that have been issued by the United States Patent and Trademark Office (“USPTO”):
- Registration No. 0,561,771 first used May 28, 1918, issued by the USPTO on July 22, 1952, for the word mark SIMONIZ. U.S;
- Registration No. 0,563,837 first used May 28, 1918, and issued by the USPTO on September 9, 1952, for the word mark SIMONIZ;
- U.S. Registration No. 0,563,838 first used May 16, 1936, and issued by the USPTO on September 9, 1952, for the word mark SIMONIZ;
- U.S. Registration No. 0,628,491 first used August 11, 1943, and issued by the USPTO on June 12, 1956, for the word mark SIMONIZ;
- U.S. Registration No. 0,855,781 first used August 23, 1967, and issued by the USPTO on September 3, 1968, for the word mark SIMONIZ;
- U.S. Registration No. 0,862,125 first used February 22, 1968, and issued by the USPTO on December 17, 1968, for the word mark SIMONIZ;
- U.S. Registration No. 1,587,378 first used September 29, 1980, and issued by the USPTO on March 20, 1990, for the word mark SIMONIZ;
- U.S. Registration No. 1,613,464 first used July 1, 1988, and issued by the USPTO on September 18, 1990, for the word mark SIMONIZ;
- U.S. Registration No. 1,625,221 first used June 20, 1988, and issued by the USPTO on November 27, 1990, for the word mark SIMONIZ;
- U.S. Registration No. 1,958,831 first used March 8, 1995, and issued by the USPTO on February 27, 1996, for the word mark SIMONIZ QUALITY SEAL GUARANTEED SINCE 1911;
- U.S. Registration No. 2,172,710 first used December 7, 1993, and issued by the USPTO on July 14, 1998, for the word mark SIMONIZ EXPRESS DETAIL;
- U.S. Registration No. 2,685,621 first used May 15, 2000, and issued by the USPTO on February 11, 2003, for the word mark SIMONIZ TIRE SHINER;
- U.S. Registration No. 2,733,496 first used March 3, 2003, and issued by the USPTO on July 1, 2003, for the work mark MOTORISTS WISE USE SIMONIZ;
- U.S. Registration No. 2,928,132 first used February 4, 2003, and issued by the USPTO on February 22, 2005, for the word mark SIMONIZ ROTO-TOOL.
A wide range of protective or preservative, cleaning or polishing products are sold under the SIMONIZ marks. A great number of them, such as car wash preparations, windshield washer solvent, or automotive polishes, waxes, washes, cleaners, and chrome and metal cleaners, are related to automobiles. However, several products sold under the SIMONIZ marks, such as floor, woodwork or furniture wax, polish or cleaner, rug shampoo or electric and battery-operated power tools have a broader purpose.
The mark SIMONIZ has been in widespread and continuous use in commerce by Simoniz USA, Inc., and its predecessors since at least 1910 and has been the object of extensive marketing.
Complainant also maintains a website on the Internet. Complainant’s homepage can be found at www.simonizusa.com. At this site, Complainant advertises several of its products and services bearing the SIMONIZ marks.
Complainant sent to Respondent a request to transfer its domain name to Respondent’s contact e-mail address on June 1, 2005, and no Response from the Respondent has been received.
5. Parties’ Contentions
A. Complainant
Complainant alleges that it has spent considerable time, effort and money in advertising, promoting and selling products in connection with the SIMONIZ mark. As a result, the mark SIMONIZ has become famous, well known throughout North America as the source of quality products regarding automobile, home, and workplace cares and cleaning products and services of Simoniz USA.
Complainant alleges that Respondent’s domain name <simoniz.com> is identical or confusingly similar to Complainant’s marks.
Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name as:
- Respondent is not a licensee, subsidiary, distributor or otherwise affiliated with or related to Simoniz USA and is not authorized to use the SIMONIZ marks for any purpose;
- SIMONIZ is not Respondent’s business name or a trademark of Respondent;
- Respondent is not commonly known by the domain name <simoniz.com>.
- Respondent is not making a legitimate non-commercial fair use of the domain name.
Complainant alleges that the Respondent registered, and is using, the disputed domain in bad faith as:
- Respondent registered the domain name <simoniz.com> in order to prevent Simoniz USA or its licensees from reflecting the mark in a corresponding domain name;
- Respondent, who is on information and beliefs of Complainant a principal, agent or affiliated personnel of XC2, has engaged in a pattern of such conduct together with other principals, agents or affiliated personnel of XC2;
- Respondent registered the disputed domain name to attract Internet users to Respondent’s website or other on-line location, for commercial gain, by creating a likelihood of confusion with the SIMONIZ marks;
- Respondent registered the disputed domain name to disrupt Complainant’s business, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or other location, or of a product or service on the Respondent’s website or location.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant must demonstrate the following three criteria:
A. the domain name is identical or confusingly similar to a trademark in which it holds rights;
B. Respondent has no rights or legitimate interests in the domain name;
C. the domain name was registered and used in bad faith.
A. Identical or Confusingly Similar
There is no doubt that the domain name <simoniz.com> is identical with the Complainant’s word marks SIMONIZ as the top level domain name “.com” is not a distinguishing feature.
The disputed domain name is also confusingly similar to the Complainant’s word marks SIMONIZ U.S.. Indeed, the adjunction of the incorporation of part of a trade or service mark in a registered domain name can create a likelihood of confusion. This risk of confusion is greater still and becomes almost inevitable when the part of the trade or service mark used in the domain name is the distinctive term of the mark, such as Simoniz which identifies the products or services, and the part left out of the domain name is a generic geographical identification such as U.S.
The Complainant has proven that the disputed domain name is identical or confusingly similar to several of its trade or services mark. Complainant has thus satisfied the first criteria of the Policy.
B. Rights or Legitimate Interests
The Respondent defaulting in the present proceedings has not provided evidence of any circumstance giving rise to a right or legitimate interest in the domain name.
Therefore it appears that no fact that can undermine the Complainant’s contention that the Respondent is not a licensee, subsidiary, distributor or otherwise affiliated with or related to Simoniz USA and is not authorized to use the SIMONIZ marks for any purpose.
The same can be said about the contention that SIMONIZ is not Respondent’s business name or a trademark of Respondent and that Respondent is not commonly known by the domain name <simoniz.com>.
The fact that the Respondent has no business relationship with Complainant and that there is no indication that the Respondent is commonly known under the disputed domain name is prima facie evidence of the lack of rights or legitimate interests of the Respondent in the domain name at issue. Complainant has satisfied the second criteria of the Policy.
C. Registered and Used in Bad Faith
Complainant alleges that Respondent is not making a legitimate non-commercial fair use of the domain name. Complainant alleges that on the contrary Respondent is using the disputed domain name as bait to attract Internet users to its site and other Internet location.
Based on the evidence provided by Complainant, Respondent does not make a bona fide offering of products or services on the website located at the disputed domain name. Internet users arriving on this site are either offered Simoniz products for sale or redirected to other on-line locations where they will be offered other competing products for sale.
Complainant further alleges that Respondent passes itself off as Complainant or an authorized representative of the Complainant’s by selling the Complainant’s products bearing the Simoniz marks.
As the Complainant points out the disputed domain name is also confusingly similar to the Complainant’s trade name and to its homepage name located at www.simonizusa.com. The risk of confusion between the Respondent’s and the Complainant is therefore even greater.
The fact that Respondent has voluntarily created a risk of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or other location, or of a product or service on the Respondent’s website or other location is a further indication of bad faith.
The fact that the website hosted under the disputed domain name redirects Internet users to other sites offering other competing products for purchase is also an indication of bad faith. The Panel finds that the third criteria of the Policy has been met.
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 domain name <simoniz.com> be transferred to the Complainant.
François Dessemontet
Sole Panelist
Dated: November 30, 2005