WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rockwell Automation, Inc. v. Systemy Komputerowe Daniel Olszówka
Case No. D2013-1451
1. The Parties
The Complainant is Rockwell Automation, Inc. of Milwaukee, Wisconsin, United States of America, represented by Whyte Hirschboeck Dudek, S.C., United States of America.
The Respondent is Systemy Komputerowe Daniel Olszówka of Tarnów, Poland, represented by Kancelaria Adwokacka Andrzej Solak, Poland.
2. The Domain Name and Registrar
The disputed domain name <allenbradleypro.com> is registered with OVH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2013. On August 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On August 22, 2013 the Center notified the Parties that the Complaint was filed in English but that according to the information received from the Registrar the language of the Registration Agreement is Polish. Accordingly, the Complainant submitted a request for English to be the language of the proceedings on August 29, 2013. The Respondent did not reply. The Center thus informed the Parties that it would send all case-related communications in both English and Polish, that it would accept a Response filed in either language, and that the language of the proceeding would be decided by the Panel once appointed.
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 September 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2013. The Response was filed with the Center on October 4, 2013. On the same date, the Center acknowledged receipt of the Response and invited the Complainant to consider requesting a suspension of the proceedings to explore a possible settlement between the Parties. On October 9, 2013, the Complainant requested continuation of the proceeding and on October 10, 2013, the Center informed the Parties of the commencement of the Panel appointment process.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on October 22, 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.
4. Factual Background
The Complainant is a United States based leading manufacturer of industrial automation devices and provider of services in the industrial automation sector. The Complainant owns the well-reputed ALLEN-BRADLEY trademark (“the Mark”).
In particular, the Complainant owns trademark registration number 0712800 in the United States for ALLEN-BRADLEY in connection with products in class 9 registered on March 21, 1961, trademark registration number 0712836 in the United States for ALLEN-BRADLEY in connection with other products in class 9 also registered on March 21, 1961 and trademark registration number 62916 in Poland for ALLEN-BRADLEY registered on August 18, 1989.
The Complainant owns several domain name registrations and operates a website for the ALLEN-BRADLEY products and services at “www.allenbradley.com”.
The disputed domain name was registered on September 26, 2012.
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain name reproduces the Mark in which the Complainant has rights and is confusingly similar to the Mark as the disputed domain name <allenbradleypro.com> contains the Mark in its entirety. The Complainant also asserts that the addition of the generic term “pro” is designed to cause confusion.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it has never licensed or in any way authorized the Respondent to register or use the Mark in any manner. The Complainant also asserts that the Respondent has not acquired any trademark or service mark rights in the disputed domain name.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith and is not making a legitimate noncommercial or fair use of the disputed domain name but instead is using the disputed domain name in connection with a website selling products identical to or competing with those offered by the Complainant.
(iv) The Complainant submits that by registering the disputed domain name, the Respondent sought to misleadingly divert consumers for commercial gain. Furthermore, the Complainant submits that the Respondent acted in bad faith because it knew or should have known about the Complainant’s rights in and to the Mark when registering the disputed domain name.
(v) Finally, the Complainant contends that the Respondent acted in bad faith because the Respondent’s registration and use of the disputed domain name obviously exploits the goodwill of the Mark.
(vi) The Complainant requests that the disputed domain name be transferred to the Complainant.
(i) The Respondent admits that his use of the disputed domain name may cause confusion and a false impression that the Respondent is economically connected to the Complainant.
(ii) The Respondent also admits that the disputed domain name has been used to offer and promote goods and services.
(iii) The Respondent states that he stopped using the disputed domain name after receiving the Complaint and that he is willing to transfer the disputed domain name to the Complainant.
(iv) The Respondent denies that the disputed domain name was registered and is being used in bad faith.
(v) The Respondent states that he is hopeful a settlement agreement will be signed in a short time.
6. Discussion and Findings
A. Language of Proceedings
Regarding the language of the proceeding, while the language of the Registration Agreement for the disputed domain name is Polish, the Complainant requested that the language of the proceeding be English. The Respondent did not object to that request and moreover, his Response was filed in the English language. Accordingly, the Panel determines that pursuant to paragraph 11(a) of the Rules the language of the proceeding is English.
B. Procedural Aspects
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name or other remedy have been met.
In this case, the Panel finds the Respondent did not rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, the Respondent failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent, by making a general denial in his Response, failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
C. Requirements of Paragraph 4(a) of the Policy
(i) Identical or Confusingly Similar
In comparing the Mark with the disputed domain name <allenbradleypro.com>, it is evident that the latter consists solely of the Mark, followed by the generic term “pro”.
The addition of generic terms does not serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.
The Panel finds that the disputed domain name <allenbradleypro.com> is confusingly similar to the Mark, which it incorporates in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of a right or legitimate interest in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent submitted a Response but offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name, or uses a corresponding name in a business.
The website associated with the disputed domain name resolves to a website that offers for sale products identical to or competing with those of the Complainant.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no rights or legitimate interests in the disputed domain name; (ii) has no connection with or authorization from the Complainant; and (iii) is not commonly known by the disputed domain name.
Moreover, the lack of any rights or legitimate interests seems to be acknowledged by the Respondent in its Response.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
(iii) Registered and Used in Bad Faith
As noted above, the Respondent admitted that his registration of the disputed domain name has created confusion to the detriment of the Complainant. Moreover, the Response dated October 5, 2013 seems to indicate an acceptance by the Respondent that the disputed domain name should be transferred to the Complainant.
It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that mark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
The Panel considers that the notoriety of the Mark makes it highly unlikely that the Respondent would have chosen to register the disputed domain name randomly, not knowing of the Complainant’s rights in the Mark prior to acquiring the disputed domain name. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, L.L.C. v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092. Where the respondent knew or should have known of the registration and use of the trademark prior to registering the disputed domain name, such conduct may also be a demonstration of bad faith. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
The Complainant has argued that the Respondent is not making a bona fide use of the disputed domain name, and has stressed that the disputed domain name is used to divert Internet users for commercial gain.
In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
Besides, some UDRP panels have held that in certain circumstances, persons who are registering domain names have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See paragraph 2(b) of the Policy; Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name indicate opportunistic bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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 <allenbradleypro.com> be transferred to the Complainant.
Date: November 5, 2013