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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Teledyne Technologies Incorporated v. Mainstream Advertising

Case No. D2006-1316

 

1. The Parties

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

The Respondent is Mainstream Advertising of Woodland Hills, California, United States of America.

 

2. The Domain Name and Registrar

The disputed Domain Name <larsteledyne.com> is registered with Moniker Online Services, LLC (“Moniker” or “the Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2006. On October 12, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name at issue. On October 20, 2006, 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 for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 25, 2006. 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 the Respondent of the Complaint, and the proceedings commenced on October 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response to the amended Complaint was November 16, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2006.

The Center appointed W. Scott Blackmer as the Sole Panelist in this matter on November 23, 2006. 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 Delaware corporation headquartered in Los Angeles, California. Its stock is publicly traded and listed on the New York Stock Exchange. The Complainant is a leading provider of electronics and communications equipment, systems engineering solutions, aerospace engines and components, and energy systems, with $1.2 billion in sales in 2005 (as reported in filings with the United States Securities and Exchange Commission).

The Complainant holds ten United States trademark registrations of the TELEDYNE mark, in various classes of goods and services, as well as numerous trademark registrations in other countries. The US registrations are documented in the Complaint, attached records from the United States Patent and Trademark Office (“USPTO”), and the USPTO online trademark database. These indicate that the earliest live US trademark registration for the TELEDYNE mark, Registration No. 0637429, was issued on November 20, 1956.

The Complainant also formerly held the LAARS trademark (US Registration No. 0763943) associated with water heating systems. According to USPTO and assignment records furnished by the Complainant, this mark was originally registered to Laars Engineers, Inc. in 1964 and then assigned to Teledyne, Inc. (the former name of the Complainant) in 1968 when the latter acquired Laars Engineers. The Complainant held the LAARS mark for more than thirty years and then assigned it in 2001 to Water Pik Technologies, Inc., in connection with the sale of the related business by the Complainant.

The Complainant operates several domain names incorporating the TELEDYNE mark, including <teledyne.com>.

The Domain Name at issue in this proceeding was registered on April 4, 2006, in the name of Moniker Privacy Services, which is evidently a privacy service operated by theRegistrar.¹ The Registrar disclosed the Respondent as the actual registrant in response to the Center’s Request for Registrar Verification in this proceeding.

The Respondent did not submit a Response in this proceeding. However, the Panel notes that a website at “www.mainstreamadvertising.com” offers Internet advertising services under the name “Mainstream Advertising”. That website, like the one to which the Domain Name resolves, is registered with Moniker. Moniker’s WHOIS database lists “Mainstream Advertising” as the registrant of <mainstreamadvertisng.com>, at the same postal address listed for the Respondent Mainstream Advertising as the registrant of the Domain Name at issue here. The Panel notes that California’s online business entity database also shows that a California corporation named Mainstream Advertising was organized in 2005, with the same postal address as shown in both domain name registrations. It is reasonable to conclude, therefore, that the Respondent is the operator of the website at “www.mainstreamadvertising.com” and is in the self-described business of providing “interactive online marketing services to advertisers and agencies”.

One aspect of the Respondent’s business is registering domains and using them for third-party advertising portals. This is described on the “Our Domains” page of the “www.mainstreamadvertising.com” website:

“Managed Sites”

“Another segment of our business is the ownership of or management of highly trafficked Internet properties. We currently own over 100,000 domains and over 1000 which are category specific sites such as top10pets, top10health and top10insure. We also own Mapocity.com, a leading local information portal. We currently have contracts to manage the monetization of a number of high traffic sites.”

“Our roster of Domains is over 100,000 strong, with such names as, reviewtravel.com, top10sites.com, searchabc.com, mapocity.com, bid4keywords.com and many more. Our targeted naming conventions bring in highly motivated search traffic to our thousands of web portals daily.”

The Domain Name resolves to such an advertising portal headed “larsteledyne.com” that displays “Results for larsteledyne.com” in the form of “Sponsored Links”, apparently reflecting advertising search engine results. Links for “Related Searches” (which bear no discernible relation to the “Sponsored Links”) and “Popular Categories” (such as “Travel”) are listed in the right frame. The “Sponsored Links” connect to apparently unrelated websites on which the words “Lars”, “Laars”, or “Teledyne” appear. At least one of the links currently displayed is to a website operated by a subsidiary of the Complainant at “www.teledyneleemanlabs.com”. Others resolve to websites operated by third parties reselling “Teledyne” or “Teledyne Laars” parts.

The Complainant asserts that its representative contacted the Respondent on May 1 and May 31, 2006 by email and postal mail, and that the Respondent never replied. The Complaint states that copies of these letters are provided as Annex H, but they are not. It is unlikely that the Complainant addressed any such letters to the Respondent Mainstream Advertising, in any event. The Domain Name was registered in April 2006 in the name of Moniker Privacy Services (that is the name that was shown on Moniker’s WHOIS database), and there is no evidence before the Panel that the real party in interest (the current Respondent), was revealed to the Complainant until that information was disclosed to the Center in the course of verifying registration in October 2006. As a result of that disclosure, the Complainant was obliged to amend this Complaint, which had previously named Moniker Privacy Services as the Respondent. If the Complainant addressed cease-and-desist letters to Moniker Privacy Services, they were either not forwarded to the Respondent or the Respondent chose not to reply. In any event, they are not in the record and therefore have no bearing on the decision in this proceeding.

Oddly, what Annex H to the Complaint contains are copies of cease-and-desist letters concerning the Domain Name dated February 2 and March 6, 2006 – before the Respondent even registered the Domain Name. These were sent by the Complainant’s legal counsel to a company named Manila Industries, Inc. The Panel can only surmise that this was a prior registrant of the Domain Name. As the Complaint does not suggest any connection between the Respondent and Manila Industries, Inc., the Panel does not find these letters material to the current proceeding.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its registered TELEDYNE mark and that the Respondent has no rights or legitimate interests in that name. The Complainant infers that the Domain Name was registered and used in bad faith, in an effort to mislead Internet users and divert them to the Respondent’s website for commercial gain derived from paid advertising links displayed on that website.

B. Respondent

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

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Under Paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

As in other cases where a respondent fails to reply, the Panel must still satisfy itself that the Complainant has met its overall burden of proof under paragraph 4 of the Policy. Thus, the uncontested facts must provide a sufficient prima facie basis for finding confusing similarity with the Complainant’s mark and then for inferring that, more probably than not, the Respondent has no right or legitimate interest in the Domain Name and has registered and used it in bad faith. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

A. Identical or Confusingly Similar

The Domain Name includes the TELEDYNE mark in its entirety and adds the name “lars”. This combination does not lessen the likelihood of confusion. TELEDYNE is a long-established and highly distinctive mark, and “Lars” appears to be a typographical variation of the LAARS mark that the Complainant itself held until 2001. As illustrated by advertising links on the Respondent’s own website, “Teledyne Laars” or “Teledyne-Laars” replacement parts are still advertised and sold.

The Panel finds, therefore, that the Domain Name is confusingly similar to the Complainant’s registered TELEDYNE mark.

B. Rights or Legitimate Interests

The Complainant asserts without contradiction that it has not authorized the Respondent to use the TELEDYNE mark.

The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which a respondent could demonstrate rights or legitimate interests in a contested 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 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.”

There is no evidence in the record that any of these circumstances apply. The website to which the Domain Name resolves does not indicate that the Respondent itself offers goods or services under the names “larsteledyne”, “teledyne”, or “lars”. As the Complainant observes, the USPTO database and search engine queries do not reveal that the Respondent is known by the name “larsteledyne” or sells products labeled with this name or its components. There is no evidence that the Respondent has made legitimate noncommercial fair use of the Domain Name, which resolves to a commercial website with “Sponsored Links” advertising products sold by third parties. The Respondent, despite notice of the Complaint from the Complainant and the Center, has not come forward with any asserted rights or legitimate interests in the Domain Name, and the Panel is entitled to draw a negative inference from that default (Rules, paragraph 14(b)).

The Panel concludes, therefore, that the second element of the UDRP Complaint is satisfied.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), sets forth a non-exhaustive list of circumstances indicating bad faith. The Complaint implicitly relies on one of these - Policy, paragraph 4(b)(iv):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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.”

It is undisputed that the Domain Name is confusingly similar to the Complainant’s distinctive, long-established, and nationally known service mark. It is hard to imagine the value of the Domain Name to any party lacking rights or legitimate interests in the TELEDYNE and LAARS marks, except as a means of misleading Internet users. The Panel notes that while many of the Complainant’s current products would be of interest chiefly to large industrial and governmental customers, TELEDYNE-LAARS water heaters, spas, and swimming pool heaters are consumer products still sold or maintained for a broader consumer market, even five years after the Complainant sold the LAARS business unit. Thus, the combined names represented in the Domain Name have a reasonable prospect of drawing Internet users to the Respondent’s advertising portal website, for the Respondent’s commercial gain.

It is not credible that the Respondent was unaware of the likelihood of confusion. The Respondent has not advanced any legitimate reason for selecting such a peculiar Domain Name incorporating the name of a very large, publicly traded corporation, which is also used to brand its products. Indeed, the Respondent’s website at “www.mainstreamadvertising.com” touts the ability of the Respondent’s “targeted  naming conventions” to “bring in highly motivated search traffic to our thousands of web portals daily”. It is much more likely that the Domain Name was chosen precisely because of the fame of the TELEDYNE and LAARS registered marks, especially as they are associated together with certain consumer products, than it is that the Respondent or prior registrants happened on this combination arbitrarily and imagined that it would somehow attract Internet users to an advertising portal.

The Respondent registered a Domain Name confusingly similar to distinctive marks and used it to direct visitors to an advertising portal. The Respondent has not offered a legitimate reason for doing so. The Panel concludes, therefore, that the Domain Name was registered and used in bad faith within the meaning of paragraph 4(b) 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 name <larsteledyne.com> be transferred to the Complainant.

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W. Scott Blackmer
Sole Panelist

Dated: November 28, 2006

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¹ See, e.g., the Wikipedia entry on “Domain Privacy” at “http://en.wikipedia.org/wiki/Domain_privacy”, and citations therein.