WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tyco International Services GmbH v. Matthew Schweiger / East Hills Wine Market Ltd.
Case No. D2015-2055
1. The Parties
The Complainant is Tyco International Services GmbH of Schaffhausen, Switzerland, represented by Accent Law Group, Inc., United States of America ("United States").
The Respondent is Matthew Schweiger / East Hills Wine Market Ltd. of Jericho, New York, United States.
2. The Domain Names and Registrar
The disputed domain names <tycoapp.com> and <tycosmarthome.com> (the "Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 12, 2015. The Center transmitted its request for registrar verification to the Registrar on November 12, 2015. The Registrar replied on November 12, 2015, followed by a correction on November 13, 2015.
In the response as corrected, the Registrar confirmed that the Domain Names are registered with it; that the Domain Names are registered with registrant name Matthew Schweiger and, in the case of the Domain Name <tycosmarthome.com> with registrant organization East Hills Wine Market Ltd; that the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP") applies to the Domain Names; that the Domain Names will remain locked during this proceeding, subject to expiry; and that the language of the registration agreement is English. The Registrar also provided the full contact details held on its WhoIs database in respect of the Domain Names.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on November 17, 2015. In accordance with paragraph 5 of the Rules, the due date for Response was December 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 8, 2015.
The Center appointed Jonathan Turner as the sole panelist in this matter on December 14, 2015. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent, and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is a joint venture created by Tyco International PLC ("Tyco") and TE Connectivity, formerly Tyco Electronics ("TE"). Tyco is a market leader in the global fire protection and security solutions industries with annual revenue exceeding USD 10 billion and over 57,000 employees in more than 900 locations in 50 countries. TE designs and manufactures electronic connectors, components and systems.
Tyco and TE have used the mark TYCO extensively in connection with their goods and services. Tyco also has a website at "www.tyco.com". The Complainant uses the TYCO mark and the mark SAFER.SMARTER.TYCO in connection with its products and services which permit customers to use advanced digital technology to monitor, control and interact with safety devices remotely. The Complainant uses the phrase "smart home" in some of its promotional materials.
The Complainant is the owner of registered marks TYCO and SAFER.SMARTER.TYCO in the United States and the European Union, as well as other countries, under registrations dating back as early as 2000.
The Domain Name <tycoapp.com> was created on December 30, 2014, and the Domain Name <tycosmarthome.com> was created on January 18, 2015 according to the WhoIs data provided by the Complainant.
As at July 2, 2015, the Domain Name <tycosmarthome.com> was registered under a privacy service and directed to a pay-per-click website containing sponsored links to other websites, including websites of the Complainant's competitors. This remained the position on August 11, 2015, when the Complainant's representative sent a cease and desist letter to the Respondent. Following the cease and desist letter, the Domain Name was redirected to a parking page made available by the Registrar.
The Complainant submitted a complaint under the UDRP on October 14, 2015. On October 15, 2015, the Respondent emailed the Complainant's representative claiming that he had replied to the cease and desist letter suggesting a telephone call "to work something out". The Complainant's representative answered by email, stating that this reply had not been received but that he was open to hearing the Respondent's proposal.
The Complainant's representative then received a telephone call from the Respondent on October 15, 2015, in which the Respondent said that he would like to sell the Domain Name <tycosmarthome.com>. The Respondent explained that he had been employed by the Complainant for a couple of years as Director of Sales but had left under a severance agreement relating to his involvement in a matter involving what he described as "severe HR violations" by another employee. This was long before the registration of the Domain Names. The Respondent said that he did not want to have to resurrect this, but he would.
The complaint filed in October 2015 was not pursued, and the Complainant subsequently filed the present Complaint.
5. Parties' Contentions
The Complainant contends that the Domain Names are confusingly similar to its marks TYCO and SAFER.SMARTER.TYCO. The Complainant points out that TYCO is an arbitrary word with no generic meaning and that the additional elements in the Domain Names, "app" and "smarthome" are descriptive in relation to its products as described above.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant maintains that the Respondent's use of the Domain Name <tycosmarthome.com> for a pay-per-click website did not constitute a bona fide offering of goods or services. The Complainant states that the Respondent is not commonly known by the Domain Names and is not making legitimate noncommercial or fair use of them.
The Complainant alleges that the Domain Names were registered and are being used in bad faith. The Complainant draws attention to the Respondent's profiting from the pay-per-click website using the domain name <tycosmarthome.com> and his attempt to sell this Domain Name to the Complainant.
The Complainant requests a decision that the Domain Names be transferred to it.
As stated above, the Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the UDRP, in order to succeed in this proceeding in relation to each of the Domain Names, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent's default in failing to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the mark TYCO through the registrations of this mark in its name as proprietor and through the extensive use of this mark by itself and its parent companies.
The Panel further finds that both Domain Names are confusingly similar to this mark. The Domain Names differ from this mark only in the addition of the terms "app" and "smarthome", which are descriptive in relation to the Complainant's goods and services, and the generic Top-Level Domain suffix. These differences do not avert the confusion resulting from the inclusion of the distinctive, invented mark TYCO.
The first requirement of the UDRP is satisfied in relation to both Domain Names.
B. Rights or Legitimate Interests
The Panel notes that the Respondent has used the Domain Name <tycosmarthome.com> for a pay-per-click website and then (after being challenged by the Complainant) for a parking page; and that he has used the Domain Name <tycoapp.com> for a parking page. The Panel does not regard either of these uses as a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the UDRP.
On the evidence, the Respondent is not commonly known by the Domain Names. Nor is the Respondent making legitimate noncommercial or fair use of the Domain Names within the meaning of paragraph 4(c)(iii) of the UDRP.
On the material in the file, the Panel is satisfied that there is no other basis on which the Respondent could claim any right or legitimate interest in the Domain Names. The second requirement of the UDRP is met.
C. Registered and Used in Bad Faith
The Panel considers that the telephone call between the Respondent and the Complainant's representative, in which the Respondent offered to sell the Domain Name <tycosmarthome.com> to the Complainant for USD1000, constitutes circumstances indicating that the Respondent registered both Domain Names primarily for the purpose of selling them to the Complainant for valuable consideration in excess of his out-of-pocket costs. Although the Domain Name <tycoapp.com> was not mentioned in this conversation, the Panel infers that the Respondent registered this Domain Name primarily for the same purpose. In accordance with paragraph 4(b)(i) of the UDRP this constitutes evidence of registration and use of the Domain Names in bad faith.
In addition, the Panel finds that by using the Domain Name <tycosmarthome.com> for its pay-per-click website the Respondent intentionally attempted to attract Internet users to this website for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of that website or products or services on it. In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of registration and use of this Domain Name in bad faith.
There is no material in the file that would displace these presumptions. On the contrary, they are reinforced by the fact that the Respondent was formerly employed by the Complainant and his threat to raise the circumstances of his departure if the Complainant did not purchase the Domain Name <tycosmarthome.com> from him.
All three requirements of the UDRP are satisfied in relation to both Domain Names and it is appropriate to order transfer of the Domain Names to the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <tycoapp.com> and <tycosmarthome.com> be transferred to the Complainant.
Date: December 26, 2015