WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roper Industries, Inc. v. Braxton Tods
Case No. D2014-1774
1. The Parties
The Complainant is Roper Industries, Inc. of Sarasota, Florida, United States of America (the "USA"), represented by Caesar, Rivise, Bernstein, Cohen, & Pokotilow, Ltd., USA.
The Respondent is Braxton Tods of West Melbourne, Florida, USA.1
2. The Domain Name and Registrar
The disputed domain name <roper-ind.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 9, 2014. On October 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2014, 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 October 21, 2014 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 October 21, 2014.
The Center verified that the Complaint together with the amended 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 October 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 14, 2014.
The Center appointed William R. Towns as the sole panelist in this matter on November 24, 2014. 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 leading technology company whose business enterprises are engaged in the manufacturing and marketing of a wide variety of engineered products and solutions. Since as early as 1957, the Complainant and its predecessors-in-interest have used ROPER to identify its business and products. The Complainant has operated a website at "www.roperind.com" since as early as 1999. For the years 2009 through 2013 the Complainant had annual net sales ranging between USD 2.0 billion and USD 3.2 billion.
The Respondent registered the disputed domain name <roper-ind.com> on May 26, 2014. The disputed domain name does not resolve to an active website, but the Complainant has submitted evidence2 that the Respondent is using the disputed domain to disseminate spam email falsely purporting to be that of the Complainant's Assistant General Counsel, and offering fabricated employment opportunities in what would appear to be a phishing scheme.
5. Parties' Contentions
A. Complainant
The Complainant describes itself as a diversified growth company consisting of established companies with leading market positions in global niche markets such as medical and scientific imaging products and software, radio frequency products, services and application software, industrial technology products, and energy systems and control products and solutions. According to the Complainant, it has been and is a constituent of the S&P 500, Fortune 1000, the Russell 2000 indices, and thus has been recognized as one the most successful and preeminent public companies in the world.
The Complainant submits it has used the ROPER name and mark extensively since 1957 as an indicator of source. The Complainant explains that it has prominently displayed the ROPER designation in all of its printed materials, which have been extensively and widely distributed in the USA. According to the Complainant, it has a strong presence on the Internet and has continuously operated a website at "www.roperind.com" since 1999, prominently using and displaying the ROPER mark. The Complainant asserts that from 2009 to 2013 it had annual sales of USD 2.0 billion, USD 2.4 billion, USD 2.8 billion, USD 3.0, and USD 3.2 billion, respectively.
The Complainant accordingly submits that its ROPER mark has developed secondary and distinctive trademark meaning in relevant investment and business sectors, and is associated exclusively with the Complainant. The Complainant further contends that the Respondent's "intentional, direct copying" of the ROPER mark establishes a prima facie case of secondary meaning.
The Complainant asserts that the disputed domain name is confusingly similar to its ROPER mark. According to the Complainant, the disputed domain name can only be sensibly understood as a combination of the dominant ROPER element with the generic term "-ind" (short for "industries"), which does nothing to distinguish the disputed domain name from the Complainant's mark. The Complainant further observes that the disputed domain name is virtually identical to <roperind.com>, the domain name used by the Complainant with its website for more than 15 years, citing Roper Industries, Inc. v. Sid Williams, Ropendant Clearance Industries, WIPO Case No. D2014-0904. The Complainant argues that this is clearly a typosquatting case, and that Internet users upon encountering the disputed domain name in an email address are likely to mistakenly assume that the disputed domain name originates with or is in some manner connected or affiliated with the Complainant, which the Complainant further submits is precisely the Respondent's intent.
The Complainant submits that the Respondent should be seen as having no rights or legitimate interests in the disputed domain name, given the Respondent's dishonest use of the disputed domain name as previously described. The Complainant submits that the Respondent was clearly aware of the Complainant's ROPER mark and the Complainant's use of <roperind.com> when registering the disputed domain name. The Complainant observes that the disputed domain name does not resolve to an active website, and further maintains that such passive use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Complainant avers that the Respondent has never been known by the disputed domain name or the Complainant's ROPER mark and name.
To the contrary, the Complainant contends that the Respondent, in choosing the disputed domain name, has intentionally sought to create and exploit Internet user confusion for the Respondent's own pecuniary benefit and to disrupt the Complainant's business. The Complainant submits that the Respondent is using the disputed domain name to disseminate spam email impersonating the Complainant's Assistant General Counsel and offering fabricated employment opportunities, to obtain personal information and steal monies from innocent individuals. According to the Complainant, the Respondent's use of the disputed domain name places the Complainant at risk of irreparable injury and substantial damage to the Complainant's reputation and goodwill.
In view of the foregoing, the Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy. The Complainant reiterates that the Respondent has intentionally chosen a domain name virtually identical to the Complainant's domain name to disseminate spam email to obtain personal information and steal monies from innocent individuals. The Complainant submits that it defies credibility to think the Respondent had any other purpose in mind other than to exploit Internet user confusion and trade upon the goodwill and reputation of the Complainant's ROPER mark for the Respondent's own pecuniary benefit. Accordingly, the Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the 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, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the to the Complainant's ROPER mark. While the Complainant has not submitted evidence of the registration of the ROPER mark, the Complainant has submitted sufficient evidence of the use of the mark to demonstrate common law trademark rights under U.S. law. That is to say, the Complainant's use of the ROPER mark has been such that a relevant segment of the public recognizes it as a symbol that distinguishes the Complainant's goods and services from those of others. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918).
In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
Applying this standard, the disputed domain name is confusingly similar to the Complainant's mark for purposes of paragraph 4(a)(i) of the Policy. The disputed domain name incorporates the Complainant's mark in its entirety, and the suffix "-ind", which appears to be an abbreviation of "industry" (the Complainant's name is "Roper Industries, Inc.") does not distinguish the disputed domain name from the Complainant's mark, and may well increase Internet user confusion.
Although the Top-Level Domain ("TLD") may in appropriate circumstances be considered when evaluating identity or confusing similarity, TLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain name. The Respondent, without the Complainant's authorization or consent, has registered a domain name that is confusingly similar to the Complainant's mark, and by all appearances is using the disputed domain name in association with an email address, to launch phishing attacks while impersonating a representative of the Complainant.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent has not submitted a formal Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the "safe harbors" of paragraph 4(c) of the Policy.
Based on the record before the Panel, the Respondent clearly had the Complainant's ROPER mark in mind when registering the disputed domain name. The Panel finds that the Respondent registered the disputed domain name in order to exploit and profit from the Complainant's rights in the ROPER mark as described above. The record does not reflect the Respondent's use or preparations to use of the disputed domain name in connection with a bona fide offering of goods or services, or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or that the Respondent has been commonly known by the disputed domain name. To the contrary, the record convincingly shows that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is clear from the relevant circumstances that the Respondent was well aware of the Complainant and had the Complainant's mark in mind when registering the disputed domain name. The record convincingly reflects that the Respondent's primary motive in relation to the registration and use of the disputed domain name was to capitalize on or otherwise take advantage of the Complainant's trademark rights, in furtherance of a fraudulent scheme perpetrated on unsuspecting members of the public. In view of all of the foregoing, the Panel concludes that the Respondent registered and has used the disputed domain name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 disputed domain name <roper-ind.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: December 8, 2014
1 At the time the Complaint was filed with the Center, Domains by Proxy was identified in the Registrar's WhoIs records as the registrant of the disputed domain name. Domains by Proxy is a privacy protection service affiliated with the Registrar. In response to the Center's request for registrar verification, the Registrar identified Braxton Tods as the WhoIs registrant. The Complainant then filed an amended Complaint in which Braxton Tods is named as the Respondent. The Panel considers it likely that "Braxton Tods" is an alias.
2 The Complainant has submitted the sworn affidavit of the Complainant's Vice President and Controller and supporting annexes bearing on the Respondent's use of the disputed domain name. This includes an email sent from an email address associated with the disputed domain name, purportedly from the Complainant's Assistant General Counsel, in what is obviously a phishing attempt. The Complainant also has provided a screen shot of the Artists Against 419 website, reflecting that the Respondent may have registered <royalbankofscotland.com> for use with a fraudulent website, and real property records indicating that the Respondent may have submitted false contact information when registering the disputed domain name.
3 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter "WIPO Overview 2.0"), paragraph 1.2.