WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Specialised Imaging Ltd v. Domains By Proxy, LLC/ Hadland imaging LLC

Case No. D2013-0853

1. The Parties

The Complainant is Specialised Imaging Ltd of Tring, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Adlex Solicitors, UK.

The Respondent is Domains By Proxy of Scottsdale, Arizona, United States of America (“USA”) / Hadland imaging LLC of Santa Cruz, California, USA.

2. The Domain Name and Registrar

The disputed domain name <specialisedimaging.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2013. On May 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2013, 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 May 24, 2013 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 May 24, 2013.

The Center verified that the Complaint together with the amendment to the Complaint/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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2013.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 26, 2013. 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 carries on the business of the design, manufacture, service and supply of high speed imaging systems and components for industrial, military and scientific applications. The Complainant has operated its business under the name “Specialised Imaging” since April 6, 2004. The Complainant acquired the name “Specialised Imaging” and the business from its predecessors, who started the venture as a partnership in September, 2003.

The Complainant has offices in the United Kingdom, United States of America and Germany. The Complainant does business worldwide, including countries such as: Japan, the United States of America, China, Singapore, France, Germany, Sweden, Russian, Belgium and Italy.

The Complainant owns and operates its main website at “www.specialised-imaging.com”, which it has held since 2003. The Complainant’s website has had 13,900 visitors between January 1, 2009 and April 14, 2013. The Complainant’s business revenue for the period 2007 to 2012 were approximately GBP 12 million.

The Complainant has promoted its business and trade name, “Specialised Imaging”, in press releases in relevant trade journals. Since 2005, the Complainant has issued over 80 press releases featuring the SPECIALISED IMAGING brand and business. The Complainant also promoted its business name by submitting technical articles for publication in trade publications, and through exhibitions at trade shows since 2004. The Complainant was awarded the British Engineering Excellence Award (BEEA) in 2009 and won the Queen’s Award for Enterprise-Innovation in 2011.

The proprietors of the Complainant and T. Rumbaugh were fellow-employees at a business called Hadland Photonics Ltd. from 1996 to 2002. Hadland Photonics Ltd. manufactured and designed ultra-high speed cameras in the United Kingdom, but it ceased operating under that name in 2009.

In 2008, T. Rumbaugh created a U.S. corporation under the name “Hadland Imaging LLC”, and began supplying high speed imaging products and services.

The disputed domain name <specialisedimaging.com> was created on January 3, 2011 and was originally registered to Hadland Imaging LLC.

The Complainant contacted T. Rumbaugh on April 12, 2013 to ask him to cease directing the disputed domain name to Hadland Imaging LLC’s website at “www.hadlandimaging.com” and to transfer the disputed domain name to the Complainant. The Respondent refused any requests.

On April 15, 2013, the Respondent changed the Registrant of the disputed domain name from Hadland Imaging LLC into the name of a proxy shield.

5. Parties’ Contentions

A. Complainant

Confusingly Similar

The Complainant submits that it owns common law rights in and to the trademark SPECIALISED IMAGING through its extensive trading and marketing activities since 2003.

The Complainant further contends that the disputed domain name <specialisedimaging.com> is identical to the Complainant’s SPECIALISED IMAGING trademark except for the addition of the “.com” designation. The Complainant submits that the addition of the url designation adds nothing to the distinctiveness of the disputed domain name from the Complainant’s registered trademark.

Accordingly, the Complainant contends that the disputed domain name is identical and confusingly similar to the Complainant’s registered SPECIALISED IMAGING trademark.

Rights and Legitimate Interests

The Complainant submits that the Respondent does not have any rights or legitimate interests in the <specialisedimaging.com> domain name. The Respondent is not commonly known by the name “Specialised Imaging”, and has never been authorized or licensed by the Complainant. The Complainant further contends that the Respondent has not used the disputed domain name in a bona fide offering of goods and services. The Complainant submits that the Respondent has registered the disputed domain name to attract, confuse and profit from Internet users seeking the Complainant.

Registered and Used in Bad Faith

The Complainant submits that the Respondent has registered and is using the disputed domain name <specialisedimaging.com> in bad faith for the following reasons: (i) the Respondent was aware of the Complainant’s common law trademark rights in SPECIALISED IMAGING, because of the long-standing relationship between the Complainant and the Respondent; (ii) the Respondent registered and is using a confusingly similar domain name to attract, confuse and profit from internet users seeking the Complainant and (iii) the Respondent registered and is using a confusing similar domain name in retaliation for perceived wrongs done by the Complainant to the Respondent.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have common trademark rights in the mark SPECIALISED IMAGING by virtue of its lengthy and extensive use and promotion of the business name “Specialised Imaging” in the field of ultra-high speed imaging systems and components, as demonstrated by the annexes to the Complaint which evidenced extracts of sales and advertisement, see paragraph 1.7, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Panel further finds that the disputed domain name <specialisedimaging.com> is confusingly similar to the Complainant’s common law trademark SPECIALISED IMAGING. The addition of the “.com” designation does not serve to distinguish the disputed domain name from the Complainant’s common law trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel notes that the Respondent did not file any responding materials in this proceeding, and therefore did not dispute any of the facts submitted by the Complainant. Accordingly, based on the evidence filed in these proceedings, the Panel is prepared to find that the Respondent does not have any rights or legitimate interest in the disputed domain name <specialisedimaging.com>. The Respondent is not commonly known by the name “Specialised Imaging”, and was never authorized or licensed by the Complainant to use the common law trademark SPECIALISED IMAGING.

Furthermore, the Panel is prepared to find that the Respondent is not using the disputed domain name in a bona fide manner. The Panel finds that the Respondent was aware of the Complainant’s common law rights in the SPECIALISED IMAGING trademark, because of the previous long-standing relationship between the Complainant and the Respondent. The Panel also agrees with the Complainant’s contention that the Respondent registered the disputed domain name to interfere with the Complainant’s business. The Respondent directed the disputed domain name to its own website, and therefore interfered with the Complainant’s business, and attracted Internet users to its own business, which is directly competitive with that of the Complainant. This conduct does not constitute a bona fide offering of goods and services under the Policy.

Accordingly, the Panel finds that the Complainant has satisfied the required under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is prepared to find, on the evidence filed, that the Respondent was fully aware of the Complainant’s common law trademark rights in the mark SPECIALISED IMAGING when it registered the disputed domain name on January 3, 2011. The Panel concludes that the Respondent acted in bad faith by attempting to trade on the goodwill and reputation of the Complainant’s trademark by directing the disputed domain name to its website at “www.hadlandimaging.com” that offers virtually identical services and similar products to those of the Complainant. The Panel further finds that the Respondent registered a confusingly similar domain name to interfere with the Complainant’s business by diverting Internet users seeking the Complainant’s website to the Respondent’s website, which is a direct competitor of the Complainant. Two aspects of the Respondent’s conduct offer further support to a finding of bad faith: (1) the Respondent admitted in a telephone conversation that he registered the disputed domain name to take advantage of Complainant’s “oversight” in failing to do so itself; and (2) it was only after the Complainant put the Respondent on notice of its rights that the Respondent began using “specialised imaging” as metatags/keywords on the related website; this sort of ex post facto adoption of the words was an obvious tactic to justify the choice of disputed domain name, but it serves only to confirm the opposite, namely that Respondent’s original intention was a bad faith attempt to appropriate the Complainant’s name and use of its common law trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under 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 <specialisedimaging.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Date: July 10, 2013