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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Trimble Navigation Limited v. Davide Erba

Case No. D2009-0881

1. The Parties

The Complainant is Trimble Navigation Limited of Sunnyvale, California, United States of America, represented by Dinsmore & Shohl LLP, United States of America.

The Respondent is Davide Erba of Corrido, Lombardia, Italy.

2. The Domain Name and Registrar

The disputed domain name <trimblesurveying.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 1, 2009. On July 2, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 2, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 July 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on July 29, 2009.

The Center appointed David Taylor as the sole panelist in this matter on August 11, 2009. 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

In the absence of a filed Response, the factual background is taken from the submissions contained in the Complaint and the exhibits annexed thereto.

The Complainant is Trimble Navigation Limited, a company incorporated under the laws of the United States. The Complainant is a leading provider of advanced positioning technologies including GPS, laser, optical and inertial technologies with application software, wireless communications, and services.

The Complainant submits that it has been in the positioning and surveying business for over 30 years and has a portfolio of over 850 patents. It also submits that it has employees in more than 18 countries and that the Trimble products are used in over 100 countries around the world.

The Complainant owns numerous trade marks worldwide in the term TRIMBLE, including for instance, the following trade marks:

- US trade mark TRIMBLE, registration number 2,611,875, registered on August 27, 2002, in class 9;

- US trade mark TRIMBLE, registration number 2,806,939, registered on January 20, 2004;

- European Community Trade Mark TRIMBLE, registration number 002137057, registered on 13 May 2002, in classes 9 and 38.

The Complainant also adduces evidence of registration of the domain name <trimble.com> which directs users to the Complainant`s official website providing information on the Trimble products and services as well as on the Complainant`s support and training activities.

The Respondent registered the Domain Name on July 1, 2008. The Complainant asserts that it discovered in July 2008 that the Domain Name had been registered by the Respondent.

Having noted that the email address provided by the Respondent on the Whois record was […]@totalstationshop.com, the Complainant investigated and discovered that the Respondent was closely related to Stonex Limited, apparently a direct competitor of the Complainant.

When the Complainant discovered that the Domain Name had been registered by the Respondent, the Domain Name was directing to a website providing hyperlinks to third party websites offering surveying services, equipment and supplies. As of June 24, 2009, the Domain name pointed to an "Under construction" page.

On November 13, 2008, the Complainant sent a letter to the Respondent in Italian asking for transfer of the Domain Name to the Complainant. The Respondent replied through his Italian counsel indicating that the links appearing on the website "www.trimblesurveying.com" had been inserted by the registrar of the Domain Name and removed upon the Respondent`s request. The letter also stated that the Respondent intended to launch a not-for-profit website with a forum for comments and reviews of Trimble`s surveying products.

At the end of February 2009, the Respondent`s counsel contacted the Complainant offering to immediately assign the Domain name to the Complainant in exchange for a release. On March 5, 2009, the Complainant delivered a conditional release to the Respondent who subsequently refused to assign the Domain Name to the Complainant.

The Complainant therefore filed the present UDRP Complaint.

5. Parties` Contentions

A. Complainant

(i) The Complainant contends that the Domain Name is confusingly similar to the Complainant`s mark.

Invoking its extensive trade mark registrations, the Complainant asserts that the Respondent registered a domain name which consists of the Complainant`s trade mark in the term TRIMBLE with the addition of the generic word "surveying".

(ii) The Complainant also contends that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant submits that it never licensed or otherwise permitted the Respondent to use its TRIMBLE trade mark or register the Domain Name.

The Complainant points out that the Respondent has no rights or legitimate interests in the Domain Name and has made no use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name with a bona fide offering of goods or services and is not making a legitimate non commercial or fair use of the Domain Name.

The Complainant considers that, due to his competitive relationship with the Complainant and the distinctive nature of the TRIMBLE trade mark, it is unlikely that the Respondent could ever make a bona fide offering of goods or services in connection with the Domain Name without infringing the Complainant`s trade mark rights.

Finally, the Complainant submits that the Respondent has not been commonly known by the Domain Name.

(iii) The Complainant contends that the Domain Name was registered and is being used in bad faith.

According to the Complainant the Domain Name was registered primarily for the purpose of disrupting the Complainant`s business. It is the Complainant`s view that, because the TRIMBLE trade mark is well-known and because the Respondent is a competitor of the Complainant, the Respondent inevitably knew of the Complainant`s rights when he registered the Domain Name and registered the Domain Name in bad faith for the purpose of capitalising on the Complainant`s reputation.

In addition, the Complainant asserts that the passive holding of the Domain Name coupled with the Respondent`s association with the Complainant`s competitor, the Respondent`s abrupt and inexplicable refusal to enter into a previously negotiated agreement with the Complainant and his inconsistent intentions in relation to the Domain Name are further indications of the Respondent`s bad faith.

For all the foregoing reasons, the Complainant requests that the Domain Name be transferred to it.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules states that a panel shall decide a complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In the case of default by a party, paragraph 14 of the Rules states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it deems appropriate. In this case, the Respondent has not submitted any Response and consequently, despite the opportunity given, has not contested any of the contentions of the Complainant. The Panel will therefore proceed on the basis of the factual statements contained in the Complaint and the documents available to support such contentions.

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

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

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

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

Taking each of these issues in turn, the Panel decides as follows:

A. Identical or Confusingly Similar

The first element that needs to be addressed is whether the Complainant has rights in the term TRIMBLE.

The Complainant submits evidence that it has rights in the term TRIMBLE in the United States. The Complainant also states that it owns many registered trade marks in the term TRIMBLE worldwide, including in the European Community, where the Respondent resides. Therefore, based on the evidence produced, the Panel finds that the Complainant has rights in the term TRIMBLE.

The second element to be considered is whether the Domain Name is identical or confusingly similar to the term TRIMBLE in which the Complainant has rights.

The Complainant submits that the Domain Name wholly incorporates the Complainant`s trade mark in the term TRIMBLE. It differs from the mark merely by the addition of the descriptive word "surveying". The Panel finds that this addition can be seen as a description of one of the activities with which TRIMBLE is associated and thus reinforces the connection to the Complainant`s trade mark (see The Condé Nast Bridal Group, Inc. v. Trademark, WIPO Case No. D2006-0452).

In Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, the panel expressed the view that "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". Applying this reasoning, the Panel finds that the Domain Name is confusingly similar to the TRIMBLE trade mark.

The addition of an extension such as ".com" does not diminish either the identity or the confusing similarity between a trade mark and a domain name.

The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The second element the Complainant must establish is that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy sets out various ways in which the Respondent may demonstrate rights or legitimate interests in the Domain Name, as follows:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 trade mark or service mark rights; or

(iii) you are making a legitimate non-commercial 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."

The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has presented a clear prima facie showing of the Respondent`s lack of rights or legitimate interests in the Domain Name. As a result of his default, the Respondent has failed to rebut that showing.

No evidence was submitted by the Respondent to suggest that the Complainant granted any authorization to the Respondent to use or register the TRIMBLE term. Similarly no evidence was submitted to suggest that the Respondent has ever been commonly known by the Domain Name or that the Respondent had made, prior to the registration of the Domain Name, any use or preparation to use the Domain Name in connection with a bona fide offering of goods or services.

As of July 15, 2008, the website available at the URL "www.trimblesurveying.com" contained hyperlinks to third party websites offering surveying services, equipment and supplies.

The Panel is of the view that redirecting Internet users to a web directory offering various hyperlinks linking to services that are competitive with the Complainant`s services using a confusingly similar domain name to the Complainant`s trade mark cannot be considered to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy referred to above. Nor can such use be said to be a legitimate non-commercial or fair use of the domain name within the meaning of paragraph 4(c)(iii). Indeed, in the Panel`s opinion, the website was created to disrupt the Complainant`s business by misleading consumers into believing that the Domain Name was pointing to a website published by or otherwise associated with or endorsed by the Complainant.

On November 13, 2008, the Respondent`s counsel stated, in his letter to the Complainant, that the Respondent intended to launch a not-for-profit website, featuring a forum for comments and reviews of Trimble`s surveying products and, as of June 24, 2009, the Domain Name was directing to an "Under construction" page.

In this respect, as far as paragraph 4(c)(i) of the Policy is concerned, if indeed paragraph 4(c)(i) was to be found applicable to Respondent`s described intended "not-for-profit" website, the Policy requires "demonstrable preparations" to use the Domain Name. Therefore, in line with previous panel decisions, the Panel finds that mere assertions of intent are not sufficient to meet this burden. In addition the Policy requires any preparations to have been made before the Respondent`s knowledge of the dispute, but there is no evidence of that here.

As far as paragraph 4(c)(iii) of the Policy is concerned, the Respondent cannot be said to be making a legitimate non-commercial or fair use of the Domain Name at the present time, regardless of his stated intentions, as the Domain Name is currently pointing towards an "Under construction" holding page.

As a consequence, neither the website containing hyperlinks, nor the "Under construction" page, nor the Respondent`s apparent intention to launch a not-for-profit website satisfy Paragraph 4(c) of the Policy.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name in accordance with paragraph (4)(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third element that the Complainant must prove is that the Domain Name has been registered and is being used in bad faith in the sense of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets out various circumstances which may be treated by the Panel as evidence of the registration and use of the Domain Name in bad faith, as follows:

"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(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."

In view of the fact that the term TRIMBLE was registered as a trade mark by the Complainant in 2002, both in the United States and in the European Community, and that the Complainant`s trade marks have since acquired significant goodwill and notoriety, it is inconceivable that the Respondent would not have been aware of the Complainant`s trade marks at the time of the Domain Name registration. The choice by the Respondent of the TRIMBLE trade mark, plus the descriptive word "surveying", of itself demonstrates this, and this is reinforced by the fact that as the Respondent`s counsel asserted that the Respondent was planning to launch a website featuring a forum on Trimble products. The Panel cannot, therefore, conceive that the registration of the Domain Name was unintentional or occurred in a haphazard fashion and is satisfied that the Respondent did not register the Domain Name in good faith.

Concerning use of the Domain Name in bad faith, as of July 15, 2008, the content of the website to which the Domain Name pointed was targeting goods and services in competition with the Complainant`s activities. The Panel finds that by using the Domain Name in this manner the Respondent was intentionally attempting to attract, for commercial gain, Internet users to the website linked to the Domain Name, by creating a likelihood of confusion with the Complainant`s mark. The use of the Domain Name for a website featuring links to competitors of the Complainant is a classic example of bad faith. The Panel therefore considers that the Respondent has used the Domain Name in bad faith.

The fact that the Domain Name no longer points to the hyperlinks and now points to an "Under construction" page does not assist the Respondent. In this regard the Panel agrees with the Complainant`s assertion that the Respondent`s passive holding of the Domain Name coupled with his apparent association with Stonex Limited demonstrates that the Respondent`s intention was to hold the Domain Name for some impermissible future use, which amounts to clear bad faith.

Moreover the Panel is of the opinion that the Respondent was aware that the registration and use of <trimblesurveying.com> would disrupt the Complainant`s business and infringe the Complainant`s rights in the TRIMBLE marks. The Panel considers that this element further illustrates the Respondent`s bad faith.

The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith pursuant to paragraph 4(a)(iii) 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 <trimblesurveying.com> be transferred to the Complainant.

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David Taylor
Sole Panelist

Date: August 25, 2009