WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dental Equipment LLC v. Above.com Domain Privacy / Transure Enterprise Ltd

Case No. D2018-1947

1. The Parties

The Complainant is Dental Equipment LLC of Charlotte, North Carolina, United States of America (“United States”), represented by Roschier Brands, Attorneys Ltd., Finland.

The Respondent is Above.com Domain Privacy of Beaumaris, Australia / Transure Enterprise Ltd, Host Master of Wilmington, Delaware, United States.

2. The Domain Name and Registrar

The disputed domain name <peltonandcrane.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2018. On August 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 2018, 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 August 30, 2018 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 August 30, 2018.

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 “DRP”), 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 August 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on September 21, 2018.

The Center appointed Dennis A. Foster as the sole panelist in this matter on September 26, 2018. 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

Established decades ago, the Complainant is a United States company that designs and manufactures dental equipment for sale internationally. It operates under the PELTON & CRANE trademark, which has been registered with the Israel Patent Office (“ILPO”) (Registration No. 68043; registered on November 2, 1989) and the United States Patent and Trademark Office (“USPTO”) (e.g., Registration No. 4330445; registered on May 7, 2013), among other trademark authorities.

The disputed domain name, <peltonandcrane.com>, is owned by the Respondent, who registered the domain name on March 31, 2009. The disputed domain name now hosts a website that displays pay-per-click (“PPC”) links to third party websites offering advertisements for goods and/or services related to the field of dentistry.

5. Parties’ Contentions

A. Complainant

- The Complainant has designed and manufactured dental equipment for more than 100 years. The Complainant does business under its PELTON & CRANE trademark, which is registered in Israel, the United States and elsewhere around the world.

- The disputed domain name, <peltonandcrane.com>, is confusingly similar to the Complainant’s PELTON & CRANE mark. The first and last terms of the mark and the name are spelled the same. Moreover, the substitution of “and” for “&” is inconsequential as those two conjunctive terms have the same pronunciation and meaning, and are clearly subordinate to the main terms of both the disputed domain name and the trademark.

- The Respondent has no rights or interests in the disputed domain name. The Respondent has not registered the name as a trademark or service mark and has not used it as a company name. Furthermore, there is no relationship between the Complainant and the Respondent, and the Complainant has neither licensed nor permitted the Respondent to use the PELTON & CRANE trademark or the disputed domain name. Also, the Respondent uses the name for a website that provides PPC links to third party advertisements relating to the field of dentistry.

- The disputed domain name was registered and is being used in bad faith. The Respondent is attempting to gain financially by attracting Internet users to its website through purposeful confusion caused by the similarity between the disputed domain name and the Complainant’s mark. Also, the Complainant has attempted to contact the Respondent, but has been prevented from doing so by the Respondent’s bad faith use of privacy service to conceal the Respondent’s true identity. The Respondent’s use of a disclaimer placed on the website connected to the disputed domain name is not sufficient to cure a finding of bad faith registration and use of the name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to Policy paragraphs 4(a)(i) - (iii), the Panel may find in favor of the Complainant and order a transfer of the disputed domain name, <peltonandcrane.com>, if the Complainant proves that:

- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based upon the submissions provided in the Complaint, the Panel is convinced that the Complainant has been in business for decades under the trademark PELTON & CRANE. Moreover, the Complainant has also presented clear evidence that it has acquired valid trademark registrations from the ILPO and USPTO, among other national jurisdictions, for that mark. Consistent with that continuous business use and those registrations, the Panel concludes that the Complainant possesses rights in the PELTON & CRANE trademark sufficient to satisfy the requirements of Policy paragraph 4(a)(i). See, VKR Holding A/S v. Li Pinglong, WIPO Case No. D2016-2269 (“A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.”); and The SANS Institute v. WhoisGuard, WIPO Case No. D2007-0426 (“Complainant has established rights in the SANS mark through registration with the USPTO.”).

The Panel observes that the disputed domain name, <peltonandcrane.com>, and the PELTON & CRANE mark have much in common. The dominant terms of each, “pelton” and “crane,” are spelled exactly the same. Moreover, the Panel notes that the smaller intermediate terms in each, “&” and “and,” are conjunctions that have precisely the same meaning. As the inclusion of the “.com” generic Top Level Domain (“gTLD”) is inconsequential for the purposes of this comparison under the Policy, the Panel determines that the disputed domain name and the trademark are barely distinguishable, and thus confusingly similar. See, Kids & Us English, S.L. v. Target Success.Com, Incorporated, WIPO Case No. D2016-0356 (finding <kidsandus.com> to be confusingly similar to the KIDS & US mark); and Black & Decker, Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2015-0768 (finding <blackandecker.com> to be confusingly similar to the BLACK & DECKER trademark).

Accordingly, the Panel finds that the Complainant has satisfied Policy paragraph 4(a)(i) by proving that it has rights in a trademark to which the disputed domain name is identical or confusingly similar.

B. Rights or Legitimate Interests

The Panel believes that the Complainant has presented a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel has found the disputed domain name to be confusingly similar to the Complainant’s trademark, and the Complainant has indicated convincingly that it has not licensed or granted permission for the Respondent to use that mark for any reason. Thus, in order to prevail, the Respondent must come forward with evidence to counter effectively this prima facie case. See, Wikimedia Foundation, Inc. v. Nanci Nette, Name Management Group, WIPO Case No. D2018-0717; and Mr. Ashish Puravankara, Joint Managing Director of M/s. Puravankara Projects Limited v. Ashish Puravankara, WIPO Case No. D2015-1173 (“...it is well settled that the Complainant needs only to make out a prima facie case, after which the burden of production shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests in the disputed domain name.”).

The Respondent has failed to file a Response in this case, allowing the Panel to accept all reasonable contentions made in the Complaint as true, while the Panel searches the Record for any plausible rebuttal to the Complainant’s prima facie case as set forth above. See, Promoconcert, S.L. v. Chesterton Holdings, WIPO Case No. D2007-0577 (“The Respondent having failed to file a Response, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant”); and Xuxa Promoes e Produes Artsticas Ltda v. LaPorte Holdings, WIPO Case No. D2005-0899 (“...in previous UDRP decisions in which a respondent failed to file a response, the panels have based their decisions upon the complainant’s assertions, evidence and inferences drawn from the respondent’s failure to reply.”).

The Panel detects nothing in the record to sustain the proposition that the Respondent has rights or legitimate interests in the disputed domain name. The Respondent’s name, Transure Enterprise Ltd, bears no resemblance to the disputed domain name, <peltonandcrane.com>, so it is unreasonable for the Panel to conclude that the Respondent is commonly known by the name, negating the possible applicability of Policy paragraph 4(c)(ii) to this case.

Furthermore, the Panel on the evidence accepts as true the Complainant’s contention that the disputed domain name is used to host a website that displays links to third party websites that offer goods and/or services related to dentistry, the general field in which the Complainant operates. As the Complainant’s mark is distinctive with no dictionary or generic meaning, the Panel determines that such use of the confusingly similar disputed domain name constitutes neither a bona fide offering of goods or services per Policy paragraph 4(c)(i) nor a legitimate noncommercial or fair use per Policy paragraph 4(c)(iii). See, Barclays Bank PLC v. Above.com Domain Privacy / ‘Hi How’ (Ni How), WIPO Case No. D2012-1829 (“The Respondent is using the disputed domain name to operate a website that contains links to various commercial websites that compete with the Complainant. Given the confusing similarity in the names, and the fact that the disputed domain name is not a common, generic term, such use does not constitute a bona fide offering of goods or services under Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use under Policy, paragraph 4(c)(iii)”); and Primedia Specialty Group Inc. v. This Domain is For Sale, Alan Lam, WIPO Case No. D2007-0789 (“Numerous panels before have held that the use of a domain name found to be confusingly similar to an established mark for the purpose of collecting click-through fees is neither a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii)”).

Since the record reveals no rebuttal to the Complainant’s prima facie case with respect to Policy paragraph 4(c), the Panel determines that the prima facie case is conclusive as to the Respondent’s lack of rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied Policy paragraph 4(a)(ii) by proving that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel has concluded previously that the disputed domain name is used to host a website that contains PPC links to third party websites that offer advertisements related to dentistry, a field that is related directly to the Complainant’s dental equipment products. The Panel finds that use of the confusingly similar disputed domain name for said PPC links is an intentional attempt by the Respondent to gain commercially by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, which involves bad faith registration and use of that name per Policy paragraph 4(b)(iv). See, Intesa Sanpaolo S.p.A. v. Milen Radumilo, WIPO Case No. D2016-2618; and Primedia Specialty Group Inc. v. This Domain is For Sale, Alan Lam, supra, (“Respondent is using the [disputed] domain name simply to post links to other sites, thereby receiving click-through revenue. Such use of Complainant’s mark and its goodwill for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy paragraph 4(b)(iv).”).

The Panel also notes that, when registering the disputed domain name, the Respondent employed a proxy service name (“Above.com Domain Proxy”), which, the Complainant reasonably asserts, inhibited the Complainant’s attempt to contact the Respondent regarding trademark infringement. While using a proxy service in connection with domain name registration in not per se illegitimate, the Panel believes that, given the difficulty the Complainant experienced in trying to contact Respondent, it is consistent with an attempt to conceal the Respondent’s true identity and thus consistent with bad faith registration and use of the disputed domain name. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.6, which states: “Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith”; and The Financial Times Limited v. Domain Privacy Service / Rashed Ahmed, WIPO Case No. D2013-1113 (“...this suggests that the Respondent’s use of a proxy service in this instance was motivated by an intention to make it difficult to identify the registrant, or for a person to assess the merits of any legal claim or Policy complaint, and to contact the registrant, which is an indication of bad faith.”).

Finally, the Complaint refers to a rather obscure notice at the bottom of the website attached to the disputed domain name that disclaims any relationship between the name owner and any of the third party advertising links displayed on the website. A consensus of prior Policy panels have held that this kind of disclaimer is insufficient to block findings of bad faith registration and use of a disputed domain name. See, Thirty & Co. v. Jake Marcum, Marcum Creative, LLC, WIPO Case No. D2016-1212 (“Rather than curtail consumer confusion, the nearly undetectable disclaimer at the bottom of Respondent’s webpage merely confirms Respondent’s knowledge and bad faith in disregard of Complainant’s rights”); and General Motors LLC v. Domains By Proxy, Inc / Mel Light, WIPO Case No. D2012-1517 (“...it is well established that the existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors”).

Accordingly, the Panel finds that the Complainant has satisfied Policy paragraph 4(a)(iii) by proving that the disputed domain name was registered and is being used in bad faith.

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, <peltonandcrane.com>, be transferred to the Complainant.

Dennis A. Foster
Sole Panelist
Date: October 10, 2018