WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SpeedTech Lights Inc. v. To Thi Thanh Tam

Case No. D2016-0131

1. The Parties

The Complainant is SpeedTech Lights Inc., of Buda, Texas, United States of America ("USA"), represented by Houda El-Jarrah, USA.

The Respondent is To Thi Thanh Tam of Ho Chi Minh, Viet Nam, self-represented.

2. The Domain Name and Registrar

The disputed domain name <speedtechlighting.com> is registered with April Sea Information Technology Corporation (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 21, 2016. On January 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 26, 2016, 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 January 27, 2016 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 February 3, 2016.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2016. The Response was filed with the Center on February 25, 2016.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 14, 2016. 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 supplies a variety of products online in the nature of specialised lighting, especially related to vehicles, including light bars and beacons fitted with different types of lights, such as may be used on emergency vehicles, utility, public safety and construction vehicles. The Complainant also sells other items including sirens, speakers, flashlights and batteries.

The Complainant holds the following trademark:

SPEEDTECH LIGHTS, United States Patent and Trademark Office (USPTO), principal register, registered July 21, 2009, registration number 3657260, class 35, with listed first use as of June 1, 2005.

The Complainant has held the domain name <speedtechlights.com>, through which it trades, since May 14, 2006.

The Respondent states no business except that he registered the disputed domain name on December 29, 2007 on a first-come first-served basis.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is basically identical and confusingly similar to the Complainant's website (taken to refer to the associated trademark). The disputed domain name uses the word "lighting" where the Complainant's uses "lights".

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant and does not have permission to use the Complainant's trademark. The disputed domain name diverts to the website "www.autoaccessoryies.org" (spelt so) (the "redirected website"), which provides links to competitors of the Complainant selling similar lighting products, or unrelated products. The redirected website is not in use for a legitimate business and does not serve as an online store. The redirection of Internet traffic from the Complainant for the Respondent's purpose does not constitute a bona fide use of the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant says it began using its own website on May 14, 2006 and means to say that the Respondent began using the disputed domain name on December 29, 2007. The Respondent could have conducted an Internet search to determine whether it could use the disputed domain name before its registration.

The Complainant says its own website is used for online selling of a full range of items and lights for law enforcement, emergency, public safety and utility vehicle applications. The redirected website is made to appear as if it is distributing the same products as offered by the Complainant and includes a link to the Complainant's website.

The Complainant claims that customers looking for the Complainant's website are often confused and are finding the disputed domain name instead. The disputed domain name directs to a website from which users looking for products similar to the Complainant's are directed to links unrelated to the Complainant. The Respondent is seeking to divert online traffic away from the Complainant and to the Respondent by confusion. The redirected website does not display any contact information.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent denies the Complaint.

The Respondent contends that the disputed domain name comprises generic dictionary words and was available for registration on a first-come, first-served basis. The Respondent did not know of the Complainant at the time of registration of the disputed domain name.

The Respondent says he did not register the disputed domain name in bad faith. He did not intend to confuse anyone or to conflict with a trademark he did not know about, or to disrupt the Complainant's business.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:

"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith".

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The Complainant has produced evidence satisfactory to the Panel of its rights in the trademark SPEEDTECH LIGHTS in the form of a copy of the USPTO registration document. Paragraph 4(a)(i) of the Policy requires that the Complainant "has" rights in a trademark in the present tense and it is of no consequence that the disputed domain name was registered on December 29, 2007, some 19 months before the Complainant's trademark was registered.

The disputed domain name is <speedtechlighting.com>. Whilst the individual words "speed", "tech" and "lighting" may be generic in isolation as claimed by the Respondent, in concatenation they form a string similar to the Complainant's trademark except for containing "lighting" where the Complainant's trademark contains "lights". Furthermore, the first component of the Complainant's trademark, "speedtech", is a distinctive non-dictionary construction, and it is notable that for the purposes of the registration of that trademark, according to the USPTO registration document, "no claim is made to the exclusive right to use "lights", apart from the mark as shown". On the evidence, the Panel finds the disputed domain name to be confusingly similar to the Complainant's trademark in the terms of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has asserted prima facie that it has no connection with the Respondent, who has not been licensed or authorised in any way to use the Complainant's trademark.

Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:

"(i) before any notice to you of the dispute, your 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 (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 are making a legitimate non-commercial 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 above circumstances are illustrative and rights or legitimate interests may be established by the Respondent alternatively to the satisfaction of the Panel.

The Respondent's claim of right to the disputed domain name is that it comprises ordinary words and was available for registration.

The Panel notes that the disputed domain name was registered before the Complainant obtained its trademark registration for SPEEDTECH LIGHTS. Generally speaking, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right. See, Section 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

However, as also stated in WIPO Overview 2.0, "[i]n certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found".

Here, the Panel notes that the listed first use of the trademark was June 2005, and that the Complainant started doing business under its domain name <speedtechlights.com> well before the Respondent registered the disputed domain name.

On the case record, the Panel finds it more likely than not that the Respondent was targeting the Complainant, and that the Respondent registered the disputed domain name in order to take advantage of the Complainant's likely rights in SPEEDTECH LIGHTS.

Accordingly, the Panel does not find any offering of goods or services through the use of the disputed domain name to have been bona fide, or that the Respondent has been commonly known by the disputed domain name within the meaning of the Policy, or that its use was noncommercial. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

"(i) circumstances indicating that you have registered or you 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 documented out of pocket costs directly related to the domain name; or

(ii) you 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 have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location".

The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.

Further to the Panel's findings under section 6.B of this decision, the Panel finds that paragraph 4(b)(iv) of the Policy is pertinent in this case. The unmistakable purpose of the website to which the disputed domain name resolves, ultimately to "www.autoaccessoryies.org", is commercial gain. The Complainant has produced in evidence a screen capture of the redirected website with what appear to be main headings to other link fields including "Police Bar Lights", "LED Bar Lights" and "Strobe Lights", with other headings such as "Car Accessory" and "Auto Parts". Another page is populated with numerous links to specific websites such as: "Cheap Emergency Lights - Search for Cheap Emergency Lights Find Cheap Emergency Lights Now - 1and1.com/Cheap Emergency Lights"; and "Tough Off Road LED Lights - Under $100 - off road led lights Extremely Bright - Order Online - superbrightleds.com/Off-Road".

On the evidence it may reasonably be concluded that the usage of the disputed domain name, by redirection to its ultimate destination website, has been with intent to benefit commercially from a share of the revenue derived from referrals to external links, in accord with the well recognised business model known as pay-per-click. Such a business is not necessarily illegitimate in itself and the principle is widely used in order to subsidise the running costs of legitimate websites. In this case, however, the disputed domain name is found to be likely to attract Internet users by intentional confusion with the Complainant's trademark. The attraction of visitors in this way, by at least initial interest confusion, is not legitimate. Upon all the evidence and on the balance of probabilities, the Panel finds the disputed domain name to have been registered and used in bad faith for commercial gain within the terms 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, <speedtechlighting.com>, be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist
Date: March 18, 2016