WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Speedtech Lights Inc. v. Telecom Tech Corp.
Case No. D2012-2300
1. The Parties
The Complainant is Speedtech Lights Inc. of Texas, United States of America, represented by the Law Office of Houda El-Jarrah, United States of America.
The Respondent is Telecom Tech Corp. of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <speedtechlight.com> is registered with Bargin Register Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2012. On November 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2012, the Registrar 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 November 29, 2012 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 amended Complaint on November 29, 2012. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed its second amended Complaint on December 3, 2012.
The Center verified that the Complaint together with the amended Complaints 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 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2012.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on January 9, 2013. 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.
On January 9, 2013, the Complainant’s representative sent an email communication to the Center inquiring whether it was still possible to change the remedy stated in the Complaint. In response, on January 11, 2013, the Panel issued Administrative Panel Procedural Order No. 1 allowing the Complainant to formalize its intention to request transfer of the disputed domain name instead of cancellation by amending the relevant section of the Complaint by January 16, 2013, or else, the proceeding would continue on the basis of cancellation.
In claiming that it had overlooked the deadline prescribed in the above mentioned Procedural Order, the Complainant’s representative submitted its third amended Complaint requesting transfer of the disputed domain name on January 17, 2013.
Accordingly, the Panel extended the decision due date through February 5, 2013.
4. Factual Background
The Complainant is a Texas-based company engaged in the business of selling and marketing emergency and warning products, including various public safety and utility vehicle applications, which are mostly advertised and distributed through the Complainant’s website at “www.speedtechlights.com”.
As from June 1, 2005, the Complainant uses the mark SPEEDTECH LIGHTS in the United States, where it is also federally registered as a service mark since July 21, 2009, in international class 35 with respect to on-line retail store services featuring emergency and safety lighting.
The Respondent registered the disputed domain name <speedtechlight.com> on October 11, 2006, that is nearly five months after Complainant’s registration of its <speedtechlights.com> domain name on May 14, 2006.
As of the date of this Decision, the disputed domain name resolves to a landing page under “http://w.speedtechlight.com/#ld” showing third party links offering lighting-related products..
The WhoIs information for the disputed domain name initially showed Private Registration of Grand Cayman, Cayman Islands, as the registrant, and upon the Center’s request for registrar verification, the registrant was identified as Respondent Telecom Tech Corp.
5. Parties’ Contentions
The Complainant’s submissions can be summarized as follows:
i. The disputed domain name <speedtechlight.com> is almost identical and confusingly similar to the Complainant’s domain name <speedtechlights.com>, except for the letter “s” after “light”;
ii. The Respondent is not affiliated at all with the Complainant, and therefore has no permission to utilize the Complainant’s trademark;
iii. The disputed domain name does not appear to be a legitimate website as it attracts the Complainant’s customers, and then diverts them to either websites associated with the Complainant’s competitors or random links unrelated to Complainant’s products;
iv. The Respondent also has no rights or legitimate interests in the disputed domain name since the Complainant first trademarked and used a name almost identical to the one embodied in the disputed domain name;
v. The Respondent could have performed an Internet search at the time to determine whether the disputed domain name was available;
vi. The Respondent seems to have intentionally registered the disputed domain name solely for purposes of directing traffic away from the Complainant’s website, which is not a legitimate use of the disputed domain name;
vii. The Complainant learned from its customers that they were confused by the disputed domain name since the latter is so confusingly similar to the Complainant’s own website;
viii. The disputed domain name is made to appear as if it is distributing the same products offered by Complainant;
ix. The Respondent seeks to divert business and online traffic away from the Complainant’s website by utilizing a domain name that Respondent has no right or legitimate interest to use, as well as create confusion among online consumers;
x. The Respondent’s not disclosing its identity is suspicious since no useful contact information was included on the website at the disputed domain name;
xi. The domain name was registered primarily for the purpose of disrupting the business of Complainant by a likely competitor.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
i. the disputed 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 disputed domain name; and
iii. the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Change of Remedy
Before turning to the merits of the Complaint, the Panel must decide whether it accepts or not the belated reply to its Procedural Order No. 1 allowing substitution of the relief sought until January 16 2013, as referred to in section 3 supra.
In the premises, the Panel decides to accept the Complainant’s late switch of remedy by considering that i) the Complainant alone is empowered by paragraph 4(i) of the Policy and paragraph 3(x) of the Rules to choose between cancellation and transfer of the disputed domain name as the appropriate avenue of relief for its Complaint; ii) the Complaint’s amendment was notified to the Center merely one day after expiry of the cut-off date; iii) in practice, the remedy of cancellation is requested or granted in very limited circumstances where inter alia, the disputed domain name incorporates the marks of two or more unrelated entities, making transfer to only one of them either unworkable or unfair, or, where the disputed domain name includes the Complainant’s mark plus expletives or derogatory terms; and iv) no prejudice would be caused to the Respondent by allowing the swap of remedy from cancellation to transfer.
B. Identical or Confusingly Similar
The Complainant demonstrates to hold federal trademark rights in the United States in the term SPEEDTECH LIGHTS since July 21, 2009. The fact that the Complainant’s service mark was registered some thirty three months after registration of the disputed domain name is immaterial under the first element of the Policy. See paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) (registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the Policy).
The Panel is therefore satisfied that the Complainant has established trademark rights within the meaning of Policy paragraph 4(a)(i).
According to paragraph 1.2 of WIPO Overview 2.0, the test for confusing similarity under the Policy involves a straightforward visual or aural comparison between the Complainant’s trademark and the disputed domain name itself to determine likelihood of Internet user confusion.
In adopting this approach, the Panel finds that “speedtechlight”, being the relevant portion of the disputed domain name, is confusingly similar at first sight to the SPEEDTECH LIGHTS mark. This is because the only differences between the two signs at issue are the absence of a space and a letter “s” in the disputed domain name, which nuances barely escape a finding of identity, but not of confusing similarity.
The Complainant has thus met the first threshold of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
“i. before any notice to you [the respondent] of the dispute, your [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. you [the respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you [the respondent] are 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.”
As noted in paragraph 2.1 of WIPO Overview 2.0, the burden is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.)
The Complainant represents not to be affiliated in any way with the Respondent, as a result of which, the Respondent has no permission to use the Complainant’s trademark.
Further, the print-outs tendered by the Complainant regarding the disputed domain name’s website do not show that the Respondent is known by the disputed domain name <speedtechlight.com>. On the basis of the representation and evidence put forward, the Panel finds that the Complainant has established a prima facie case against the Respondent.
In the absence of a Response, this Panel may draw appropriate inferences from the Respondent’s default. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that the respondent's failure to respond can be construed as an admission that it has no rights or legitimate interests in the disputed domain name); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such rights or interests were immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed).
Furthermore, the Panel concurs with the Complainant’s allegation that the Respondent’s use of the disputed domain name is not bona fide as it baits Internet users looking for the Complainant, and then switches them to websites associated with Complainant’s products.
Nor can Respondent’s landing page be characterized as noncommercial or fair use of the disputed domain name. See paragraph 2.6 of WIPO Overview 2.0 (landing pages or PPC links do not confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name, where resulting in a connection to goods or services competitive with those of the rights holder).
Consequently, the Complainant has demonstrated the second limb of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to prove that the disputed domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have 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 you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] web site or location or of a product or service on your [the respondent’s] web site or location.”
The Panel notes that the Complainant’s trademark registration issued on July 21, 2009, while the disputed domain name was registered on October 11, 2006. In principle, where a domain name is registered before the acquisition of trademark rights by a third party - whether on a registered or unregistered basis - there can be no finding of bad faith registration as the respondent could not have been aware of the complainant’s then non-existent trademark rights at the time of registering the disputed domain name. See paragraph 3.1 of WIPO Overview 2.0.
In this case however, the Panel observes that the Complainant’s trademark certificate for SPEEDTECH LIGHTS claims a date of first use in commerce of June 1, 2005, which predates the Respondent’s registration of the disputed domain name by more than a year. Even if the date of first use is merely claimed rather than proven by the Complainant, the Panel is prepared to accept such date as valid for the purposes of this proceedings in the absence of refutation by the Respondent, especially where such date is credible in view of the date of registration of the Complainant’s own domain name <speedtechlights.com> on May 14, 2006. See GasBuddy Organization, Inc. v. Whois Protection Service LLC, WIPO Case No. D2009-0607 (accepting a date of first use to establish trademark rights by noting that complainant’s own website was created on the very same date of its trademark’s claimed date of first use).
Furthermore, since SPEEDTECH LIGHTS is an inherently distinctive mark of the Complainant, and conversely, the Respondent’s name bears no apparent connection to the disputed domain name but nonetheless offers identical goods to those marketed under the Complainant’s SPEEDTECH LIGHTS mark, the Panel is in little doubt that the Respondent registered the disputed domain name with the aim of creating Internet user confusion and diverting traffic away from Complainant, which constitutes bad faith registration as per the Policy paragraph 4(b)(iv).
In addition, by redirecting traffic to the webpage “http://w.speedtechlight.com/#ld”, and by providing therein links to the websites of Complainant’s competitors, the Respondent has been using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy as it can be inferred that the Respondent is receiving click-through fees from such links. See Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462 (The respondent is deriving financial benefit from web traffic diverted through the domain name to linked websites on the domain parking page).
In conclusion, the Complainant has sustained its burden of proving paragraph 4(a)(iii) 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 <speedtechlight.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Date: February 5, 2013