WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Anderson Power Products, Inc. v. Tay Chee Wee, TCW Internet SDN BHD
Case No. D2016-1269
1. The Parties
The Complainant is Anderson Power Products, Inc. of Sterling, Massachusetts, United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Tay Chee Wee, TCW Internet SDN BHD of Johor, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <andersonpowerproducts.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2016. On June 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 25, 2016, the Registrar transmitted by email to the Center its verification response disclosing the underlying registrant and contact information behind the privacy shield for the disputed domain name. The Center sent an email communication to the Complainant on June 27, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to amend the Complaint. The Complainant filed amended Complaints on July 5, 2016 and July 7, 2016.
The Center verified that the Complaint together with the amended Complaints 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 proceedings commenced on July 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2016.
The Center appointed Dr. Clive Trotman as the sole panelist in this matter on August 9, 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 has been in the business of power products such as electrical connectors, insulators and switches under its present name since 1963. Its predecessor Albert & J.M. Anderson MFG Co., dates back to 1877.
The Complainant owns trademarks in the United States, China, the European Union, Hong Kong, China and India, of which the following is representative:
ANDERSON POWER PRODUCTS, United States Patent and Trademark Office (USPTO), principal register, registered May 27, 2003, registration number 2719086, class 9;
The Complainant operates a website at the domain name <andersonpower.com>.
Nothing is known of the Respondent except for the details provided for the purpose of registration of the disputed domain name, which appears to have been first registered on September 22, 2012 in the name of the Respondent.
5. Parties’ Contentions
The Complainant has produced a copy of the relevant documentation and contends that it is the owner of the USPTO trademark shown in section 4 above.
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant says that its USPTO trademark has achieved incontestable status and has been in continuous use for over 50 years. The disputed domain name incorporates the Complainant’s trademark in full and merely adds the generic top-level domain (“gTLD”) “.org.”, which is not distinguishing.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, which has been registered without the Complainant’s authorization. The Complainant says the Respondent is Tay Chee Wee who is not commonly known by the disputed domain name and has no trademark or application in the name Anderson Power Products. The Respondent has not used the disputed domain name connection with a bona fide offering of goods or services because the corresponding website displays the Complainant’s trademark and products, a customer contact form enabling the Respondent to gather information about the Complainant’s intending customers, and a purported copyright notice in the name of the Complainant. The Respondent is not making a noncommercial or fair use of the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Respondent is intending to be passed off as the Complainant. The use of the Complainant’s trademark on the website of the disputed domain name shows actual or at least constructive knowledge of the Complainant’s trademark by the Respondent. The Complainant submits that the registration of a domain name incorporating the trademark of a well-known company is alone sufficient to give rise to an inference of bad faith. Furthermore, the disputed domain name is so obviously connected with the Complainant and its services that its very use by someone with no connection to the Complainant suggests opportunistic bad faith.
The Complainant says a cease and desist letter was sent to the Respondent on October 24, 2014, and again on December 3, 2014. There were no replies but on January 25, 2015 the disputed domain name was shown as registered under a privacy service.
The Complainant has cited a number of previous decisions under the Policy that it considers to support its Complaint.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
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 Panel is satisfied that the Complainant has rights in the registered trademark ANDERSON POWER PRODUCTS for the purposes of paragraph 4(a)(i) of the Policy.
The disputed domain name is <andersonpowerproducts.org>. The gTLD designation, in this case “.org”, may generally be disregarded in the determination of confusing similarity. What remains is “andersonpowerproducts”, which is found to be effectively identical to the Complainant’s trademark. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been authorised by the Complainant to use the Complainant’s trademark.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in the disputed domain name by demonstrating, without limitation:
“(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 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 replied and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise.
According to the Complainant’s enquiries, the disputed domain name resolves to a website that cannot be making a bona fide offering of goods or services because it displays power products under the Complainant’s trademark, with a copyright notice in the Complainant’s name, and a purported customer contact facility. There is no evidence that the Respondent, Tay Chee Wee, is commonly known by the disputed domain name or has a trademark or application in the name Anderson Power Products. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required to 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:
“(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.
The screen capture in the case file showed the disputed domain name to resolve to a website prominently headed “Anderson Power Products”. The website content might charitably be described as unconvincing; for example, it offers “exceedingly electric products”, refers to its “charitable side”, and meanders into the issue of “some helpless boy or girl being beaten up by someone (or more) twice the size”. The website is among other things a vehicle for the referral of visitors to another website, “mapsgalaxy”, which evidently provides “Fast Maps & Directions”, and for which the website features two large and prominent download buttons. Under the heading “AdChoices” are arrows to “Company Products”, “Equipment and Products” and “Power Equipment Companies”.
On the evidence, the Panel finds that the disputed domain name acts to refer visitors to competitors of the Complainant. It is of no consequence that a competitor may promote a product of no present interest to the Complainant since the definition of a competitor is wide: Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279 (“The natural meaning of the word “competitor” is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as a commercial or business competitor”). It may reasonably be concluded, on the balance of probabilities, that visitors to the disputed domain name are referred to the proprietor of mapsgalaxy and to businesses reached via AdChoices in return for commission or other commercial benefit to the Respondent. In order to derive such a benefit the Respondent’s website must attract visitors. The disputed domain name comprises the entirety of the Complainant’s trademark as its means of attraction. The Panel finds it probable that visitors attracted to the disputed domain name will include those seeking the Complainant and that at least some visitors are likely be confused, if only initially, into believing the disputed domain name or website is owned or endorsed by the Complainant. On the evidence and on the balance of probabilities the Panel finds the disputed domain name to have been used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel also finds on the evidence and on the balance of probabilities that the disputed domain name was registered for the bad faith purpose for which it has been used. Accordingly registration and use in bad faith are found under paragraph 4(a)(iii) of the Policy.
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 <andersonpowerproducts.org> be transferred to the Complainant.
Dr. Clive Trotman
Date: August 16, 2016