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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Teledyne Technologies Incorporated v. Domain Master and Titan Net

Case No. D2006-0735

 

1. The Parties

The Complainant is Teledyne Technologies Incorporated, Los Angeles, United States of America, represented by McGuireWoods LLP, United States of America.

The Respondents are Domain Master and Titan Net, 1st Floor Muya House Kenyatta, Eldoret, Rift Valley, Kenya, collectively referred to as “Respondent”.

 

2. The Domain Names and Registrars

The disputed domain name <teledynelaars.org> is registered with Intercosmos Media Group d/b/a directNIC.com, and the disputed domain names <teledyne.org> and <teledynewaterpik.org> are registered with Domain Contender, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2006. On June 13, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com, Domain Contender, LLC and Domain Contender, LLC a request for registrar verification in connection with the domain names at issue. On June 14, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent Titan Net is listed as the registrant and providing the contact details for the administrative, billing, and technical contact of the domain name <teledynelaars.org>. On June 14, 2006, Domain Contender, LLC transmitted by email to the Center its verification response confirming that the Respondent, Domain Master is listed as the registrant and providing the contact details for the administrative, billing, and technical contact of the domain names <teledyne.org> and <teledynewaterpik.org>.

The Center verified that the Complaint, together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 to Titan Net and Domain Master, Respondents of the Complaint, and the proceedings commenced on June 16, 2006.

In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2006. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2006

The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on July 7, 2006. The Panel finds that it was properly constituted and submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

Complainant has requested that, due to the fact that Respondent 1 and Respondent 2 have substantially similar contact information, both be treated as the same entity for the purpose of the proceedings. Due to the shared interest of Respondents in this case and based on prior decisions of the Center mentioned by the Complainant (Dr. Ing. h.c. F. Porsche AG v. Domain Purchase, Noldc, Inc., Domain Purchase, NOLDC, Inc., Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix, WIPO Case No. D2005-0890), it is feasible to proceed on the basis of a consolidated Complaint in a single proceeding. Therefore the Panel agrees to treat Respondents 1 and 2 as a single Respondent for the purpose of these proceedings.

 

4. Factual Background

Complainant is Teledyne Technologies Incorporated, duly organized and existing under the laws of the State of Delaware United States of America. Teledyne Technologies Incorporated is a leading provider of sophisticated electronic components, instruments and communications products, including defense electronics, data acquisition and communications equipment for airlines and business aircraft, monitoring and control instruments for industrial and environmental applications and components, and subsystems for wireless and satellite communications. Teledyne Technologies Incorporated is the owner of the trademark TELEDYNE. According to Domain Contender’s WhoIs database, Respondent 1 in this administrative proceeding is named “Domain Master.”, with an address of 1st Floor Muya House Kenyatta, P.O.BOX 4276- 30100, Eldoret, Rift Valley, 30100, Kenya. According to DirectNIC’s WhoIs database, Respondent 2 in this administrative proceeding is named “Titan Net”, with an address of Kenyatta Avenue, P.O. BOX 4276- 30100, Eldoret, Kenya 30100.

Complainant’s representative contacted Respondent 1 on March 22, 2006, via e-mail and U.S. Mail, notifying the same that the registration of the domain name <teledyne.org> was not authorized by Complainant. Complainant contacted Respondent 1 again on April 10, 2006, via e-mail and U.S. Mail. Respondent 1 did not respond to the Complainant. Complainant’s representative contacted Respondent 2 on March 22, 2006, via e-mail and U.S. Mail, notifying the same that the registration of the domain name <teledynelaars.org> was not authorized by Complainant. Complainant contacted Respondent 1 again on April 10, 2006, via e-mail and U.S. Mail. Respondent 2 did not respond to the Complainant.

Complainant’s representative contacted Respondent 1 on March 22, 2006, via e-mail and U.S. Mail, notifying same that the registration of the domain name <teledynewaterpik.org> was not authorized by Complainant. Respondent 1 did not respond to the Complainant. The Complainant found that the disputed domain names were offered for sale on “www.kenyatech.com”. The Complainant argues that its trademarks have been used in bad faith because, when an Internet user enters the websites to which the domain names refer, or clicks on links on these websites, the Internet user is directed to various websites which purportedly offer the Complainant’s goods, or goods which the Complainant used to offer, or competing goods of the Complainant.

B. Respondent

The Respondent did not submit a Response or otherwise reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

According to paragraph 4(a)(i) of the Policy the Complainant must establish that “The domain names are identical or confusingly similar to marks in which the Complainant has rights”

The Complainant is the trademark owner of the mark TELEDYNE based on the United States Patent and Trademark Office (the “PTO”) Certifications of Trademarks.

Complainant has presented sufficient evidence of its trademark rights in the designation TELEDYNE based on the registration of the trademark with the United States Patent and Trademark Office (the “PTO”) and other international registrations. Copies of the official records pertaining to these registrations, obtained from the PTO’s Trademark Electronic Search System (“TESS”) and the PTO’s Trademark Applications and Registrations Retrieval (“TARR”) databases were provided by Complainant.

The disputed domain name <teledyne.org> fully incorporates Complainant’s TELEDYNE mark. It is well established under previous UDRP decisions that the mere addition of a gTLD, in this case “.org”, can be disregarded for the purpose of this element of the Policy. Accordingly, the Panel finds that the disputed domain name <teledyne.org> is identical to the Complainant’s TELEDYNE mark.

In relation to the disputed domain name <teledynelaars.org>, the Panel notes that it fully incorporates the Complainant’s TELEDYNE mark, adding to it the term “laars” and the gTLD “.org”, the latter of which can be disregarded for the purpose of this comparison. In relation to the term “laars”, it appears from the evidence presented in the Complaint that the current owner of the mark LAARS, Laars Engineers, Inc, was formerly a subsidiary of the Complainant. It appears that the mark LAARS was previously assigned to “Teledyne, Inc.”, apparently the former name of the Complainant, as the result of a merger between the Complainant and Laars Engineers, Inc. In 2001, it appears the mark was again re-assigned, this time to “Laars, Inc”, as a result of the sale of that business by the Complainant.

It does not appear from this set of circumstances that the Complainant currently has trademark rights in relation to the mark LAARS. However the Panel notes that the term “teledyne” is clearly the primary element in the disputed domain name. In the circumstances, and having regard to the heightened prospect for confusion engendered by the previous relationship between the Complainant and the current owner of the mark LAARS, the Panel does not consider that the inclusion of the term “laars” in the disputed domain name is in these circumstances sufficient to offset the probability of confusion with the Complainant’s TELEDYNE mark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s TELEDYNE mark.

In relation to the disputed domain name <teledynewaterpik.org>, the Panel notes that it fully incorporates the Complainant’s TELEDYNE mark, with the addition of the terms “water” and “pik”, and the gTLD “.org”, the latter of which can be disregarded for the purpose of this comparison. The Complainant has presented evidence that it previously held rights through a subsidiary company in the mark TELEDYNE WATER PIK. It appears that the original registrant of the mark TELEDYNE WATER PIK was Teledyne Industries, Inc, doing business as Teledyne Water Pik, and that the mark was subsequently assigned to Teledyne, Inc, the former name of the Complainant. The Complainant states that the business to which the mark relates was subsequently sold, and that the mark was therefore cancelled.

As the mark TELEDYNE WATER PIK has been cancelled, apparently at the Complainant’s instigation, and the Complainant appears to be no longer offering any goods or services under that mark, it is difficult to see how the Complaint could be said to have rights in that mark.

However, the Complainant clearly does have trademark rights in the TELEDYNE mark. Again, in the Panel’s view the term “teledyne” is the primary element in the disputed domain name, and the addition of the terms “water” and “pik” are not in the circumstances sufficient to offset a likelihood of confusion with the Complainant’s TELEDYNE mark. The Panel is mindful that the prospect for confusion in these particular circumstances is likely to be enhanced by the Complainant’s previous offering through a subsidiary of goods and services under the tradename “Teledyne Water Pik”. This is particularly so for third parties who may not be aware of the Complainant’s sale of the business previously associated with that name. In the circumstances, the panel finds that the disputed domain name <teledynewaterpik.org> is confusingly similar to a mark in which the Complainant has rights, that mark being TELEDYNE.

As a result of the foregoing the Panel finds paragraph 4(a)(i) of the Policy satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following circumstances:

(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no mark or service mark rights; or

(iii) you [Respondent] 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 mark or service mark at issue.

The evidence presented by Complainant consisting in part of a search of the United States Patent and Trademark Office’s (“USPTO”) TESS database for all trade marks comprised of the word “TELEDYNE”, with or without design elements, has not revealed any parties that appeared to bear a relationship to Respondent. Also, the Complainant has presented a search of USPTO’s TESS database for all marks comprised of the words “TELEDYNE” and/or “LAARS”, with or without design elements, which did not reveal any parties who appeared to bear any relationship to Respondent. Also Complainant presented evidence consistent with a search of the USPTO’s TESS database for all marks comprised of the words “TELEDYNE” and/or “WATERPIK”, with or without design elements, which did not reveal any parties who appeared to bear any relationship to Respondent.

The Panel agrees with the Complainant that the names used for the Respondent bear no connection to the disputed domain names which would suggest that the domain names are not related to a trade mark or trade name in which the Respondent has rights.

An independent search by the Panel confirms at the search engine “www.google.com” for Respondent’s names and the disputed domain names has not revealed any evidence suggesting that Respondent has established rights or legitimate interests in the domain names, or is known by them.

The Panel also accepts as plausible the Complaint’s other contentions regarding the Respondent’s apparent absence of rights or legitimate interests in the disputed domain names. There is no evidence before the Panel that Respondent is using, or has made any demonstrable preparation to use, the disputed domain name in connection with a bona fide offering of good or services. Nor is there any material before the Panel indicating use by the Respondent of a legitimate non-commercial nature.

The Panel notes that websites at the domain names <teledynelaars.org> and <teledyne.org> appear virtually identical and contain a number of links and search options of a highly generic nature, many of them in the German language, and of a type commonly associated with “parked” domain names. The links appear to be links of a sponsored nature. Some of the goods on offer at these links appear to be goods of an electronic nature. The domain name <teledynewaterpik.org> currently appears not to be in use, and attempts to access a webpage at “www.teledynewaterpik.org” result in an error message that the requested URL cannot be retrieved. However the Panel accepts the Complainant’s evidence regarding the use of that domain name at the time of filing.

In the circumstances the Panel is satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in each of the disputed domain names. Therefore the Panel finds for the Complainant in relation to the second element of the Policy.

The Panel finds that paragraphs 4(a)(ii) and 4(c)(i), (ii) and (iii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the disputed domain names in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain names; or

(ii) that Respondent has registered the disputed domain names in order to prevent the owner of the mark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

Based on the evidence provided by Complainant, the Panel accepts that the disputed domain names were offered for sale on “www.kenyatech.com”. The Panel has also noted that, when an Internet user enters the websites at the disputed domain names and clicks on any of the links on the websites, the Internet user appears to be directed to various websites, some of which offer Complainant’s goods, or goods which Complainant used to offer, and others which appear to offer competing goods of the Complainant.

Complainant has proven that the disputed domain names were registered and are being used in bad faith. The content of the websites, which provides sponsored links, strongly suggest that Respondent has intentionally attempted to attract users to the websites for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant’s mark.

The websites’ references to “sponsored links” and “related websites” further heightens this likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or services. Based on evidence in the Complaint it is plausible to surmise that the Respondent’s conduct has been motivated by commercial gain or the prospect thereof.

Referring to several previous WIPO UDRP decisions in which the Respondent was a party, Complainant has proven that the Respondent has engaged in a repetitive conduct. See e.g., Dr. Ing. h.c.F. Porsche AG v. Kentech, Inc., WIPO Case No. D2005-0890; Credit Industriel et Commercial S.A. and Confйdйration Nationale du Credit Mutuel v. Spiral Matrix, WIPO Case No. D2006-0271 (although Spiral Matrix is not a named Respondent in this Complaint, the case of Dr. Ing. h.c.F. Porsche AG v. Kentech, Inc. makes it clear that Spiral Matrix is merely another name for Kentech, Inc. and is in fact the same entity.); PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0271; Deutsche Telekom AG v. Spiral Matrix, WIPO Case No. D2005-1145; Chicago Pneumatic Tool Company v. Kentech, Inc., a.k.a. Titan Net, WIPO Case No. D2006-0345.

The provided references to the Respondent’s pattern of conduct is enough evidence to the Panel, that Respondent has engaged in a pattern of cybersquatting. Additionally, the registration of the disputed domain names by the Respondent prevents the Complainant from reflecting its trade marks in similar domain names.

For the foregoing reasons, the Panel finds that Respondent has registered and has used the disputed domain names in bad faith. Accordingly, the Panel finds for the Complainant in relation to the third element of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <teledynelaars.org>, <teledyne.org> and <teledynewaterpik.org> be transferred to the Complainant.

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Ada L. Redondo Aguilera
Sole Panelist

Dated: July 17, 2006