|Entscheider||Badgley, Robert A.|
Complainant is Oreck Corporation of Nashville, Tennessee, United States of America, represented by Winston & Strawn LLP, United States.
Respondent is Don Burk of Odessa, Florida, United States.
The disputed domain name <0reck.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2009. On March 25, 2009, the Center transmitted by e-mail to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 26, 2009, GoDaddy.com, Inc. transmitted by e-mail to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 31, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent of his default on April 20, 2009.
The Center appointed Robert A. Badgley as the sole panelist in this matter on April 30, 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.
Complainant manufactures vacuum cleaners and other cleaning equipment and accessories under the mark ORECK. This mark has been used by Complainant since the 1960s to identify and distinguish Complainant's products, and Complainant has secured numerous registrations of the ORECK mark (or other marks including the word ORECK) with the United States Patent and Trademark Office (“USPTO”). At least one of Complainant's ORECK registrations with the USPTO dates back to 1987.
Complainant also vends its wares via the Internet. Complainant's main website is located at “www.oreck.com”
Respondent registered the Domain Name on May 24, 2003. As of March 20, 2009, the Domain Name resolved to a website with the header “Find Vacuum Cleaners and Air Purifiers <0reck.com.>”. A variety of hyperlinks appear below the header, inviting the user to click to web pages offering vacuum cleaners, home air purifiers, and other appliances. Below these hyperlinks is the statement: <0reck.com> is your gateway to the best sites on the Internet for vacuum cleaners and air purifiers!” At the bottom of the page is a link entitled “Inquire about this Domain.”
On March 12, 2009, Complainant's counsel sent a letter to Respondent demanding that the latter cease its use of the Domain Name and transfer it to Complainant. Respondent did not respond to the letter.
Respondent is the registrant of numerous domain names, most of which appear to be innocuous but some of which appear to this Panel to be similar to well-known marks of third parties, such as <hnblock.com> and <phbs.org>. The website to which <hnblock.com> resolves features hyperlinks to tax-preparation services, the core business of H&R Block.
Complainant's factual contentions are set forth in the “Factual Background” section above. These contentions are supported with documentary evidence annexed to the Complaint, and undisputed by Respondent. Complainant's arguments will be discussed in the “Discussion and Findings” section below.
Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy:
(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.
Complainant clearly has rights in the mark ORECK through registration and extensive use. The record amply supports this conclusion, and Respondent has not disputed it.
The Domain Name differs materially from the ORECK mark only insofar as it replaces the initial letter “o” with the number “0.” The visual impression remains quite similar. The Panel finds the Domain Name to be confusingly similar to Complainant's ORECK mark. See The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM, and NASAQ.COM, WIPO Case No. D2001-1492 (Feb. 27, 2002). Moreover, the Panel notes that, on the QWERTY keyboard, the letter “o” and the number “0” are adjacent.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
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). Nevertheless, the panel in
PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174 (April 22, 2003), rightly observed as follows: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and hence did not attempt to rebut any of Complainant's assertions.
There is no evidence that Respondent has ever been authorized to use Complainant's mark in a domain name or otherwise.
Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or that he has made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. On the contrary, Respondent appears to be deriving per-click revenues by making an unauthorized use of the ORECK mark. There are numerous prior decisions under the Policy holding that the unauthorized appropriation of another's trademark in one's domain name and the commercial use of the domain name in a 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”).
Respondent has not claimed any noncommercial or fair use of the ORECK mark in his Domain Name, and the Panel finds no basis for recognizing any such use.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use 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 paragraphs 4(b)(ii) and 4(b)(iv) of the Policy, quoted immediately above, to support its bad faith argument.
The Panel notes the instances cited by Complainant, as discussed in the “Factual Background” section above, of Respondent's other domain name registrations. With the exception of the <hnblock.com> domain name discussed above, none of Respondent's other registration activity appears, based on the record before the Panel, to give rise to a pattern of preclusive registrations under paragraph 4(b)(ii). Most of the domain names within Respondent's portfolio look innocuous enough at first blush to this Panel.
Complainant's “bad faith” argument under paragraph 4(b)(iv), however, is well taken. Complainant alleges, and Respondent has not denied, that Respondent derives financial benefits from the hyperlinks maintained at the “www.0reck.com” website. This is clearly in violation of the Policy, as it constitutes an intentional attempt to attract, for commercial gain, Internet users to Respondent's site by creating a likelihood of confusion between the ORECK mark and the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied.
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, <0reck.com>, be transferred to Complainant.
Robert A. Badgley
Dated: May 5, 2009