Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Grundfos CBS, Inc. v. Elaine Doyle and Phoenix Pumps, Inc.

Case No. D2006-1564

 

1. The Parties

Complainant is Grundfos CBS, Inc. (“Complainant”), a corporation located in Brookshire, Texas, United States of America.

Respondents are Elaine Doyle and Phoenix Pumps, Inc. (“Respondents”), both located in Phoenix, Arizona, United States of America.

 

2. The Domain Names and Registrars

The domain names in dispute are <pacopumps.com> and <pacopump.com> (the “Domain Names”). The registrar of <pacopumps.com> is Namesdirect.com, Inc. located in Vancouver, Washington, United States of America. The registrar of <pacopump.com> is Network Solutions, LLC located in Herndon, Virginia, United States of America. The registrars will be collectively referred to as the “Registrars”.

 

3. Procedural History

On December 8, 2006, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On December 10, 2006, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On December 13, 2006, the Center received hardcopy of the Complaint. The Complainant paid the required fee.

On December 12 and 13, 2006, after the Center sent a Request for Verification to the Registrars requesting verification of registration data, the Registrars confirmed, inter alia, that they are the registrars of the Domain Names and that the Domain Names are registered in the Respondents’ name.

The Center verified that the Complaint satisfies 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On December 14, 2006, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondents together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under Paragraph 2(a) of the Rules.

On December 19, 2006, the Center received the Response of Respondent. The Center appointed Richard W. Page as the sole panelist in this matter on January 18, 2007. 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

Complainant is the owner of United States of America trademark registration No. 1037229 (the “PACO Mark”) covering its PACO brand pumps. Its ownership is pursuant to a series of assignments making it the successor in interest and current owner. Complainant uses the PACO Mark for the sale of pumps and associated parts and conducts marketing through the use of the website “www.paco-pumps.com”. Complainant’s predecessors first registered the <paco-pumps.com> domain name in 1996. Complainant, with its predecessors, has been continuously using the PACO Mark in connection with the sale of pumps for over 50 years.

 

5. Parties’ Contentions

A Complainant’s contentions

i. Complainant contends that it has a registration covering the PACO Mark in the line of commerce for pumps, that its trademark registration is valid and subsisting, and that this serves as prima facie evidence of its ownership and the validity of the PACO Mark. 15 U.S.C. § 1115. Complainant further alleges that its registration is incontestable and conclusive evidence of its exclusive right to use the PACO Mark in connection with the stated goods. 15 U.S.C. §§ 1065 and 115(b).

ii. Complainant argues that the Domain Names are confusingly similar to the PACO Mark, pursuant to Paragraph 4(a)(i) of the Policy, because they wholly incorporate the PACO Mark with the addition of descriptive terms “pumps” or “pump.”

iii. Complainant contends that Respondents have no rights or legitimate interests in the Domain Names, pursuant to Paragraph 4(a)(ii), and that Respondents have failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names for the following reasons:

Respondents cannot demonstrate rights or legitimate interest in the Domain Names under Paragraph 4(c)(i) because Respondents have not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services.

Respondents cannot demonstrate rights or legitimate interests in the Domain Names under Paragraph 4(c)(ii) because they are not commonly known under either of the Domain Names. Respondents have no connection or affiliation with Complainant, and have not received any license or consent, express or implied, to use the PACO Mark in a domain name or in any other manner.

Respondents cannot demonstrate rights or legitimate interests in the Domain Names under Paragraph 4(c)(iii) because they are is not making a legitimate noncommercial or fair use of the Domain Names without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.

iv. Complainant contends that Respondents registered and is using the Domain Names in bad faith in violation of Paragraph 4(a)(iii). Complainant alleges that pursuant to Paragraph 4(b)(iv), among other subsections, Respondents have registered the Domain Names in bad faith because Respondents by using the Domain Names, have intentionally attempted to attract, for commercial gain, Internet users to Respondents’ website, by creating a likelihood of confusion with the Complainant’s PACO Mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website.

Complainant sells its products through a network of authorized distributors. Respondents are not one of Complainant’s authorized dealers. Therefore, Complainant contends that Respondents cannot make legitimate use of Complainant’s PACO Mark in the disputed Domain Names or otherwise. Any disclaimer or attribution of the PACO Mark to Complainant does not cure this unauthorized use.

B. Respondents’ contentions

i. Respondents do not dispute that the Complainant has a registration of the PACO Mark.

ii. Respondents do not dispute that the Domain Names are identical or confusingly similar to the PACO Mark.

iii. Respondents assert that they have rights to or legitimate interests in the Domain Names because they were previously a distributor of PACO pumps. After Respondents’ termination as an authorized distributor, Respondents contend that they now buy PACO pumps legitimately from other authorized distributors.

iv. Respondents deny that they registered or used the Domain Names in bad faith. Paragraph 4(b) suggests four types of evidence of bad faith registration, none of which applies:

Respondents further assert that there is no evidence of bad faith based on Paragraph 4(b)(iv) because Respondents are selling Complainant’s product on Respondents’ website with proper attribution of the PACO Mark to Complainant.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Because both the Complainant and Respondents are domiciled in the United States of America and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001), n. 3.

The Panel will review the evidence proffered by Complainant and Respondents to assess whether the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain names registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondents have no legitimate interests in respect of the domain names; and,

iii) that the domain names have been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainant contends that it has a registration of the PACO Mark and that its trademark registration is valid and subsisting and serves as prima facie evidence of its ownership and the validity of the PACO Mark. 15 U.S.C. § 1115. Complainant further alleges that its registration is incontestable and conclusive evidence of its ownership of the PACO Mark and exclusive right to use the PACO Mark in connection with the stated goods. 15 U.S.C. §§ 1065 and 1115(b).

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondents have the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Respondents have not contested the assertions by Complainant that it has a valid registration of the PACO Mark. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the PACO Mark.

Identity or Confusing Similarity

Complainant further contends that the Domain Names are identical with and confusingly similar to the PACO Mark pursuant to the Policy Paragraph 4(a)(i). Respondents have not contested the assertions by Complaint that the Domain Names are confusingly similar to the PACO Mark.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

In this proceeding, the entirety of the PACO Mark is included in the Domain Names. The only additions are the descriptive words “pumps” or “pump.” Generally, a user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4^th ed. 1998).

Therefore, the Panel finds that the Domain Names are confusingly similar to the PACO Mark pursuant to Paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interest.

Complainant contends that Respondents have no rights or legitimate interests in the Domain Names pursuant to the Paragraph 4(a)(ii) of the Policy.

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondents have no rights to or legitimate interests in the Domain Names. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondents to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a) of the Policy. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).

Respondents have no relationship with or permission from Complainant for the use of the PACO Mark.

Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondents have rights or a legitimate interest in the Domain Names:

(i) before any notice to you [Respondents] 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 [Respondents] (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 [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 trademark or service mark at issue.

Complainant has alleged facts that none of these circumstances exists, thereby sustaining its burden of coming forward with a prima facie showing that the Respondents lack rights to or legitimate interests in the Domain Names. Respondents assert that the Domain Names are being used to sell PACO pumps supplied by authorized dealers and that Respondents’ website properly attributes the PACO Mark to Complainant.

Apparently Respondents argue that they have undertaken demonstrable preparations to use the Domain Names in connection with a bona fide offering of such services. The Panel finds that Respondents cannot claim a bona fide use of the PACO Mark without permission of the trademark owner, Complainant. Based on the evidence presented to the Panel such permssion has not been granted. Moreover, there is no evidence to indicate any other basis for finding rights or legitimate interests pursuant to Paragraph 4(a)(ii) of the Policy or otherwise.

Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to Paragraph 4(a)(ii) of the Policy.

Bad Faith.

Complainant contends that Respondents registered and are using the Domain Names in bad faith in violation of Paragraph 4(a)(iii) of the Policy. Complainant alleges that pursuant to Paragraph 4(b)(iv) of the Policy, among other subsections, Respondents have registered the Domain Names in bad faith because Respondents by using the Domain Names have intentionally attempted to attract, for commercial gain, Internet users to Respondents’ website, by creating a likelihood of confusion with the complainant’s PACO Mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website.

The use of a disclaimer by Respondents is not sufficient to create a defense to bad faith under Paragraph 4(b)(iv) of the Policy. The Respondents’ offering to sell PACO pumps on their website and repeated use of Complainant’s PACO Mark create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement.

Respondents argue that to transfer the Domain Names would be an impermissible restriction of trade. The Panel finds that the rights being asserted by Complainant are consistent with the ownership of a trademark and do not constitute an impermissible restriction of trade.

The Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy Paragraph 4(b)(iv) and to support a finding that the Domain Names were registered and used in bad faith pursuant to the Policy Paragraph 4(a)(iii).

 

7. Decision

The Panel concludes (a) that the Domain Names <pacopumps.com> and <pacopump.com> are confusingly similar to Complainant’s registered PACO Mark, (b) that Respondents have no rights or legitimate interest in the Domain Names and (c) that Respondents registered and used the Domain Names in bad faith. Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names be transferred to Complainant.

---

Richard W. Page
Sole Panelist

Dated: February 12, 2007