WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Electro-Sensors, Inc. v. Charles Nguyen
Case No. D2013-1517
1. The Parties
The Complainant is Electro-Sensors, Inc., Minnetonka, Minnesota, United States of America, represented by Fredrikson & Byron, P.A., United States of America.
The Respondent is Charles Nguyen of Minneapolis, Minnesota, United States of America.
2. The Domain Name and Registrar
The disputed domain name <electro-sensor.com> is registered with Melbourne IT Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2013. On August 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 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.
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 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2013.
The Center appointed Angela Fox as the sole panelist in this matter on October 1, 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.
The Complainant stated that it had been unable to locate a copy of the registration agreement applicable to the disputed domain name and was therefore unable to confirm the language of the registration agreement. It submitted that the language of the proceedings should nonetheless be English. There is no need to address those submissions, however, because the Registrar confirmed in an email to the Center on August 30, 2013 that the language of the registration agreement was in fact English. Consequently, the Panel accepts English as the language of this proceeding.
4. Factual Background
The Complainant is a Minnesota-based manufacturer of machine monitoring sensors and hazard monitoring systems for use in material handling and process control applications in industrial plants. It was founded in 1968. It carries out these activities under its name, Electro-Sensors, Inc.
The Complainant owns the following United States trademark registrations, details of which were annexed to the Complaint:
1. Registration No. 1,142,310 in Class 9, filed on July 7, 1978, with a first use date of September 16, 1968;
2. Registration No. 1,301,382 for in Class 9, filed on October 14, 1983,
with a first use date of September 16, 1968;
The Complainant operates a website at “www.electro-sensors.com”, print-outs from which were annexed to the Complaint. The Complainant owns the domain name <electro-sensors.com>, registered on May 15, 1996, WhoIs details of which were also annexed to the Complaint.
The disputed domain name was registered on August 1, 2012. Currently it links to a page offering links to search results for various types of sensors, which when clicked resolve to links to third-party commercial websites, including to manufacturers of sensors. However, the Complaint states that it has been informed by one of its vendors and by several equipment suppliers that the Respondent has previously linked the disputed domain name to the Complainant’s website and used it to create false and misleading contact information so that it could obtain credit from potential vendors of the Complainant and have vendors mistakenly ship products to the Respondent while invoicing the Complainant.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is essentially identical or confusingly similar to its registered trademarks, and that the Respondent’s omission of the final “s” is not sufficient to avoid confusion.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Respondent has no relationship with or license from the Complainant and is not commonly known by a name corresponding to the disputed domain name. Moreover, the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, but rather has used it in order to impersonate the Complainant and thereby fraudulently to obtain delivery of goods at the Complainant’s expense.
Finally, the Complainant contends that the disputed domain name was registered and has been used in bad faith. The Complainant’s investigations have indicated that the Respondent has used the disputed domain name to create false contact information and deceive the Complainant’s suppliers into believing that emails and orders from the Respondent were in fact from the Complainant. As such, the Complainant submits that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant under paragraph 4(b)(iii) of the Policy, or is intentionally attempting to divert Internet users to websites of competitors of the Complainant for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks under paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
Under paragraph 4 (a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has shown that it has registered trademark rights in stylised forms of the mark ELECTRO-SENSORS.
The disputed domain name differs from the verbal element of the Complainant’s trademarks only in the omission of the final letter “s” and the addition of the non-distinctive, generic Top-Level Domain (“gTLD”) “.com”. The elements of stylisation in the Complainant’s registered trademarks are of course not replicable in domain names, so their absence is not material. The disputed domain name is closely similar to the verbal element of the Complainant’s registered trademarks, even incorporating a hyphen which separates “electro” from “sensor” just as the stylised dot separates “electro” from “sensors” in the registered trademarks. The omission of the final “s” is a minor difference that is likely to escape the notice of many Internet users, as noted by UDRP panels in Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951 and Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises, WIPO Case No. D2004-0220.
The Panel finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant states that it has not authorized the Respondent to use the disputed domain name and that the Respondent does not appear to own, to be known by or to be using any trademark or trading name corresponding to the disputed domain name. The Respondent has made no attempt to refute these assertions or to demonstrate that it does enjoy rights or legitimate interests in the disputed domain name.
Moreover, the Complainant asserts that the Respondent has been using the disputed domain name to impersonate the Complainant and thereby to secure fraudulent purchases from the Complainant’s suppliers. Such activities, if undertaken, would constitute the very opposite of use in connection with a bona fide offering of goods or services that might otherwise give rise to a legitimate right or interest in a domain name under paragraph 4(c)(i) of the Policy. The Complainant has not, however, filed any evidence of the alleged fraudulent use of the disputed domain name by the Respondent.
Nevertheless, the Respondent’s current use of the disputed domain name, which is verifiable, shows that it is using it to link to a landing page hosting links to third-party commercial websites offering various types of sensors, from which it is presumably profiting through click-through income. It is unclear whether any of the linked sites might offer goods of the type sold by the Complainant. However, the Complainant states that “electro-sensor” is not a descriptive term, and although some of the linked sites advertise “electronic sensors” none appear to advertise “electro-sensors”.
In the Panel’s view, neither the Respondent’s alleged fraudulent activities nor its verifiable current use would amount to a bona fide offering of goods or services capable of conferring a right or legitimate interest under paragraph 4(c)(i) of the Policy. The Panel accepts that “electro-sensor” does not appear to be a descriptive term, and the value of the disputed domain name as a means of attracting Internet users appears to be bound up in the trademark significance of “electro-sensor”, which is closely similar to the Complainant’s trademarks, and is indeed virtually identical to the verbal element of them. The Respondent’s use of the disputed domain name is inherently misleading to Internet users looking for the Complainant and the Respondent appears likely to be profiting from that in the form of click-through income (see similarly mVisible Technologies, Inc. supra; Robert Bosch GmbH v. Asia Ventures, Inc. WIPO Case No. D2005-0946; and LEGO Juris A/S v. J.h.Ryu, WIPO Case No. D2010-1156).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The facts of this case suggest that the Respondent was aware of the Complainant’s business and trademarks when it registered the disputed domain name. The Respondent is based in the same state as the Complainant, who has been using its trademarks since 1968, has owned the domain name <electro-sensors.com> since 1996 and has been operating a website at that domain name since prior to this dispute. The words “electro-sensor” do not appear to be a descriptive or generic term, but rather correspond almost exactly to the verbal element of the Complainant’s trademarks and to its company name.
The disputed domain name is confusingly similar to the Complainant's trademarks and the Respondent is using it to host pay-per-click links to unrelated third-party commercial websites. Such use appears calculated to attract Internet users by creating a likelihood of confusion with the Complainant's trademarks, and the Respondent has likely been profiting from click-through income arising from diversion of Internet users to third-party websites through the linked site. Such conduct, combined with the Respondent’s likely knowledge of the Complainant based on the above facts, gives rise to a prima facie case that the Respondent registered the disputed domain name with the intention to mislead Internet users and to profit from those activities in bad faith under paragraph 4 (b) (iv) of the Policy. The Respondent has done nothing to rebut that case.
The Panel concludes that the disputed domain name was registered and has been used in bad faith.
The Panel takes note of the Complainant’s assertion that the Respondent previously linked the disputed domain name to the Complainant’s website and that the Respondent used the disputed domain name to impersonate the Complainant to the Complainant’s suppliers and thereby to obtain goods by fraud. As noted above, however, the Complainant has not filed any evidence of the alleged fraudulent use of the disputed domain name by the Respondent. The absence of details of the fraudulent conduct or any supporting evidence in the form of copy emails, screenshots, orders or other correspondence or statements from witnesses makes it problematic to accord substantial weight to an allegation of this type. The cases on which the Complainant relies to support its assertion that such conduct demonstrates an intention to disrupt and harm the Complainant’s business by inflicting financial loss and tarnishing the Complainant’s reputation with its suppliers all involved some documentary proof of the alleged fraud (London Merchant Securities plc v. Anjei Gandhi, WIPO Case No. D2005-0433; HPR Commodities LLC v. John Galledo, WIPO Case No. D2007-0154; and Western Union Holdings, Inc. v. XYZ a/k/a Chahat Topiwala, WIPO Case No. D2005-0945). There is, however, no such evidence here.
As the Panel has concluded that the Respondent’s current verifiable use of the disputed domain name amounts to proof of registration and use in bad faith under paragraph 4(b)(iv) of the Policy, there is no need to examine the allegation of fraudulent use or to prolong the proceeding by issuing a procedural order inviting the filing of evidence relating to the alleged fraud. However, the Panel notes that it is unhelpful for complainants to make allegations of fraudulent activities without supporting evidence or any explanation for the absence of such evidence. Complainants who do so run the risk of having failed to make out their case under paragraph 4(a)(iii) of the Policy. Nevertheless, if accurate, the Respondent’s alleged fraudulent activities would amount to evidence of registration and use in bad faith.
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 <electro-sensor.com> be transferred to the Complainant.
Date: October 21, 2013