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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Diebold, Incorporated v. Diebold, Incorporated

Case No. D2007-0657

 

1. The Parties

Complainant is Diebold, Incorporated, North Canton, Ohio, United States of America, represented by Walker & Jocke, United States of America.

Respondent is Diebold, Incorporated of Herndon, Virginia, United States of America and North Canton, Ohio, United States of America.

2. The Domain Name and Registrar

The disputed domain name <dieboldsolutions.com> (the “Domain Name”) is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2007. On May 3, 2007, the Center transmitted by e-mail to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On May 3, 2007, Network Solutions, LLC transmitted by e-mail to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on May 9, 2007. 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 Respondent of the Complaint, and the proceedings commenced on May 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2007. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2007.

The Center appointed Robert A. Badgley as the sole panelist in this matter on June 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

The following facts are alleged in the Complaint and are undisputed by Respondent. Unless indicated otherwise, the facts set forth in this section are found by the Panel to be plausible and/or supported by evidence annexed to the Complaint.

Complainant holds registrations in numerous countries, some as early as 1959, for the mark DIEBOLD. The mark has been used extensively by Complainant to identify and distinguish its various products, including storage cabinets, safes, automated teller machines (ATMs), ballot boxes, and other goods and services.

Respondent registered the Domain Name on March 9, 2007. According to a printout annexed to the Complaint, the website to which the Domain Name resolves closely resembles Complainant’s home page (located at “www.diebold.com”). Respondent’s site displays the DIEBOLD mark and other marks owned and used by Complainant.

 

5. Parties’ Contentions

A. Complainant

Complainant’s factual assertions are set forth above.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy in order to succeed:

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

(ii) 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.

A. Identical or Confusingly Similar

Complainant clearly has rights in the mark DIEBOLD through registration and use, all of which is well established in the record. The Domain Name differs materially from the DIEBOLD mark only insofar as it adds the word “solutions” to the mark. Numerous cases decided under the Policy make it clear that the mere addition of a descriptive word to a mark – particularly a strong mark – does not diminish the confusing similarity between the mark and the domain name in question. See, e.g., Diageo Brands B.V. et al. v. iVodka.com a.k.a. Alec Bargman, WIPO Case No. D2004-0627 (September 27, 2004) (transferring domain names including <gordonsvodka.com>).

Accordingly, the Panel finds that Policy, paragraph 4(a)(i) is satisfied.

B. Rights or Legitimate Interests

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

“(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 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 bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2001).

Respondent, who filed no response in this proceeding, has not invoked any of the circumstances of Policy, paragraph 4(c) to suggest any “rights or legitimate interests” in respect of the Domain Name.

Respondent was not licensed or authorized by Complainant to use the latter’s mark in any manner. Nor is there any evidence that Respondent is commonly known by the Domain Name.

Respondent’s construction of a website featuring Complainant’s marks and resembling Complainant’s main website in most respects cannot be considered a bona fide use under the Policy. There are numerous prior decisions under the Policy holding that the unauthorized appropriation of another’s trademark in one’s domain name and the actual or apparent commercial use of the corresponding website do not confer rights or legitimate interests upon the owner of such a domain name. See, e.g., America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (December 11, 2000) (“it would be unconscionable to find that a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”).

The Panel is satisfied that Complainant has met its burden of proof unrefuted by Respondent. Accordingly, the Panel finds that Policy, paragraph 4(a)(ii) is 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 Domain Name in “bad faith”:

“(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark 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 Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark 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 Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the 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.”

Complainant relies chiefly on paragraph 4(b)(iv) of the Policy, quoted immediately above, to support its “bad faith” argument.

The Panel finds it obvious that Respondent had Complainant’s mark in mind when registering the Domain Name. “Diebold” is no ordinary word, and is perhaps a famous mark (such an express finding is not necessary to the disposition of this Complaint). Moreover, the web page constructed by Respondent not only features Complainant’s DIEBOLD mark, but it copies the stylized aspects of the mark and describes products and services offered by Complainant under its marks. Respondent’s web page, in nearly all respects, bears striking similarity to Complainant’s site.

Although it is not certain that Respondent has been using the website for commercial gain, it is difficult to draw any other rational conclusion. The faux web page has the look and feel of a commercial website -- indeed, of Complainant’s commercial website. Respondent’s attempt to mislead has gone beyond merely registering the Domain Name; Respondent has taken the extra step of creating a highly misleading website. Respondent had the opportunity to rebut the allegations in the Complaint to this effect, but did not do so.

The Panel further notes that Respondent’s contact information for the registration of the Domain Name is inaccurate and misleading. Among other things, Respondent goes by the name “Diebold, Incorporated” – Complainant’s exact name. Again, Respondent had the chance to explain this moniker if there were a legitimate basis for using it, but Respondent opted not to.

False contact information does not bespeak legitimacy. As one panel put it: “Although it is clear that supplying incorrect information cannot be considered by itself as an act of bad faith; when considered jointly with other elements, it can be interpreted as evidence of such bad faith.” Grupo Televisa, S.A., de C.V. et al. v. Autosya S.A. de C.V., et al., WIPO Case No. DTV2001-0007 (June 11, 2001).

The foregoing considerations suffice for this Panel to conclude that Respondent has, in fact, acted in bad faith under paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel finds that Policy, paragraph 4(a)(iii) is satisfied.

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 <dieboldsolutions.com> be transferred to Complainant.

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Robert A. Badgley
Sole Panelist

Date: June 28, 2007