WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tyco Fire & Security GmbH v. Damon Nelson, Quantec, LLC/Novo Point, LLC
Case No. D2017-2173
1. The Parties
The Complainant is Tyco Fire & Security GmbH of Neuhausen Am Rheinfall, Switzerland, represented by Steven M. Levy, United States of America (“United States”).
The Respondent is Damon Nelson, Quantec, LLC/Novo Point, LLC of Dallas, Texas, United States.
2. The Domain Name and Registrar
The disputed domain name <simplexfire.com> (the “Disputed Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2017. On November 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on December 18, 2017. 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 Swiss manufacturer of fire alarms, fire sprinklers, fire suppression, integrated security, and related products and services.
The Complainant markets its products under the name and trademark SIMPLEX (the “SIMPLEX trademark”) and has done so since at least 1978. The Complainant’s website at “www.simplexfire.com” is used to promote the brand and its products and services on the Internet.
The Complainant has over 100 district offices throughout North America and also sells its SIMPLEX products through many other areas of the world such as Europe, the Middle East, Central and South America, Asia, and Australia. The Complainant owns several registered trademarks for the word SIMPLEX including for example US registration no. 1101276 which was registered on September 5, 1978.
The Disputed Domain Name was registered on December 13, 2005. It resolves to a website which contains click-through links to third-party websites. There is a history of previous proceedings concerning the Disputed Domain Name and the Respondent. This is discussed below.
5. Parties’ Contentions
The Complainant’s case is in summary as follows.
a) The Disputed Domain Name is confusingly similar to the SIMPLEX trademark as it has been combined with the non-distinctive word fire which in any case also relates directly to the Complainant’s products.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondent uses the Disputed Domain Name in bad faith as the website to which the Disputed Domain Name resolves, makes use of the Complainant’s SIMPLEX trademark in order to raise advertising revenue through the use of sponsored or click-through links.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
In reaching this conclusion the Panel also notes that a prior UDRP Complaint was filed concerning the Disputed Domain Name on September 9, 2013 with the National Arbitration Forum – now called the Forum – under the heading Tyco Fire & Security GmbH v. Whois Privacy Services Pty Ltd, NAF Claim No. 1523335 (The “Prior Proceeding”). The Prior Proceeding was suspended, by the Forum at the request of an attorney for the Receiver of the bankrupt estate of Jeffrey Baron and Ondova Limited Company. During the pendency of this case the WhoIs privacy service was removed and the record for the Disputed Domain Name was changed to reflect the current Respondent. In any event, on October 31, 2017, after several years of renewed case suspensions, the Complainant’s representative requested that the Forum dismiss the case “Without Prejudice” and, on the same date, the Forum so dismissed the Prior Proceeding.
In prior UDRP decisions involving the named Respondent, Damon Nelson – Manager Quantec, LLC / Novo Point, LLC, the Center has received correspondence from Mr. Damon Nelson stating that “I no longer represent this domain name, or any other domain name assets in the portfolio LLCs or the Receivership.” See Nilfisk-Advance A/S v. Domain Admin, Damon Nelson, Manager, Quantec, LLC/Novo Point, LLC / Whois Privacy Service Pty Ltd, WIPO Case No. D2015-0675. In another case, the Center received an email from a Mr. Gary Schepps, who identified himself as an attorney representing Quantec, LLC. See LEGO Juris A/S v. Domain Admin: Damon Nelson - Manager, Quantec, LLC/Novo Point, LLC / Domain Hostmaster, WIPO Case No. D2015-0555. However, in neither case did any party claiming to represent any of the named respondents submit either a substantive response to the complaint or even sufficient proof that the disputed domain name constituted part of the portfolio of domain names being held in the name of the bankruptcy receivership. Id. As the Panel in the LEGO Juris A/S case concluded, “none of these documents provide any evidence that the disputed domain name was ordered by a court to be returned to Quantec, LLC. None of such statements, allegations of Mr. Schepps have been substantiated.”
In the present case the Panel concludes that there is nothing arising out of these prior proceedings which prevent it from deciding the case.
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Disputed Domain Name is identical to 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 Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of the SIMPLEX trademark.
The Panel holds that the Disputed Domain Name is confusingly similar to the above trademark. The Disputed Domain Name incorporates the SIMPLEX trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The only difference in the present case is the addition of the generic word “fire”. This addition does not suffice to negate the similarity between the Disputed Domain Name and the Complainant’s SIMPLEX trademark particularly given that the Complainant’s business is concerned with fire prevention equipment.
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here “fire”) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
It is well established that the Top-Level Domain, in this case “.com”, does not generally affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate rights or legitimate interests in a domain name:
(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 organisation) 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.
None of these apply in the present circumstances.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the SIMPLEX trademark. The Complainant has prior rights in the SIMPLEX trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the SIMPLEX trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the SIMPLEX trademark, and the confusingly similar nature of the Disputed Domain Name to the SIMPLEX trademark, and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Name leads the Panel to conclude the registration and use was in bad faith. In the present case, the Panel concludes that it is extremely unlikely that the Respondent selected the Disputed Domain Name independently and without knowledge of the Complainant or its products. The website operated by the Respondent at the Disputed Domain Name comprises a series of “click through” links to other third party websites. The Panel infers that some visitors, once at the Respondent’s website will follow the provided links and “click through” to other sites which offer products, some of which may compete with those of the Complainant. The Respondent presumably earns “click through” linking revenue as a result. The Panel infers the Respondent’s website is automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.
Taking all of the above into account the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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, <simplexfire.com>, be transferred to the Complainant.
Nick J. Gardner
Date: January 1, 2018