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Generic Top Level Domain Name (gTLD) Decisions |
K & N Engineering, Inc. v. Filter
Charger Mfg. Co.
Claim Number: FA0203000105736
PARTIES
The Complainant is K & N Engineering, Inc., Riverside, CA (“Complainant”)
represented by David J. Steele, of Christie, Parker & Hale, LLP. The Respondent is Filter Charger Mfg. Co., Selangor, Malaysia (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <filtercharger.com>, registered
with Tucows.
PANEL
The undersigned certifies that he has
acted independently and impartially and to the best of his knowledge has no
known conflict in
serving as Panelist in this proceeding.
Charles A. Kuechenmeister is the
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (“the Forum”) electronically on March 1, 2002; the
Forum received
a hard copy of the Complaint on March 5, 2002.
On March 5, 2002, Tucows confirmed by
e-mail to the Forum that the domain name <filtercharger.com>
is registered with Tucows and that the Respondent is the current registrant of
the name. Tucows has verified that
Respondent is bound by the Tucows registration agreement and has thereby agreed
to resolve domain-name disputes
brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 5, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting
a deadline of March 25, 2002 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax to all entities and persons listed on Respondent’s registration as
technical, administrative and billing contacts, and
to postmaster@filtercharger.com
by e-mail.
A timely Response was received and
determined to be complete on March 25, 2002.
On March 29, 2002, Complainant timely
filed an additional submittal.
On April 2, 2002,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
After the deadline
for filing a Response but before April 2, 2002, the Forum received hardcopy
Exhibits consisting of WHOIS reports
relating to the domain-names described in
Section C of the Response with corresponding names of Complainant, Respondent,
Johnson
& Johnson, and Procter & Gamble.
On April 2, 2002,
Respondent sent an e-mail message to the Forum stating that an un-translated
attachment, written in a language not
English, was the letter of the Malayan
Registrar of Companies approving Respondent's company name "Filter Charger
Manufacturing
Sdn Bhd."
On April 4, 2002,
Complainant sent an e-mail message to the Forum objecting on various grounds to
the Panel considering the April
2, 2002 e-mail sent by Respondent.
RELIEF SOUGHT
The
Complainant requests that the domain name be transferred from the Respondent to
the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of numerous
trademark registrations for the mark FILTERCHARGER, including U.S. trademark
registration number
1,281,461, Australian trademark registration number
737,432, Japanese trademark registration number 2,531,649 and 2,672,810, and
New Zealand trademark registration number 279,300. All of these indicate a first use in 1982 and cover air filters
for automobile and motorcycle engines.
Complainant has invested substantial
time, effort and money developing its trademarks and goodwill associated
therewith.
Many years after Complainant's adoption
and first use of the FILTERCHARGER mark, Respondent registered the domain name
<filtercharger.com> with a bad
faith intent to profit from the domain.
The domain <filtercharger.com> is identical to the Complainant's
FILTERCHARGER trademark except for the top level domain ".com".
Respondent has no right or legitimate
interest with respect to <filtercharger.com>. Respondent is not licensed or authorized by
Complainant to use the FILTERCHARGER mark, and Respondent is not known by the
name FILTERCHARGER.
Notwithstanding Respondent's registration
of <filtercharger.com> in the
name Filter Charger Mfg Co, the Respondent is not doing business under that
name. Repeated searches by Complainant
failed to reveal any information on any ongoing business concern named
"Filter Charger Mfg Co."
Respondent uses <filtercharger.com> to route Internet traffic to a website at
<autoairgroup.com> which
offers automobile air-conditioning parts and accessories. This website provides information for
purchasing automotive air conditioning.
Respondent's use of <filtercharger.com> is with the
intent to secure commercial gain and to divert Complainant's customers to a
competitor's website.
B. Respondent
The Complainant's mark FILTERCHARGER is
closely identified with automotive air filters only. Products manufactured by Respondent are refrigerant filters in
air conditioning units that are totally different from Complainant's
air filter
products.
Complainant's FILTERCHARGER trademark is
not registered in Malaysia, the site of Respondent's plant.
The mark FILTERCHARGER is a generic name
made up of two characters which have their own separate meanings,
"filter" being
a device containing a porous material used to extract
impurities, and "charger" being
an instrument that replenishes.
Thus, a "filter charger" is a product that filters and charges
any liquid or gas that passes through, like "the filter
charger used in
our automotive air conditioning."
Respondent is currently incorporating
under the name "Filter Charger Mfg Co" and is awaiting the approval
of that name by
the Malaysian Registrar of Companies.
Respondent has registered <filtercharger.com> to direct
potential customers to its website at <AutoAirGroup.com>. Respondent has also registered other
domains which are currently directed back to its website, including
<FilterChargers.com>,
<FilterCharger.biz>, <AutoAirCond.com>,
and <FilterDrier.com>. Respondent
is additionally searching for more domains for its new products, and is
negotiating "with a few current existing domain
owners which are important
to our Auto Air Group." (Response,
p. 4)
This type of registration of generic
domain names is both common and important for any manufacturing company in
order to attract potential
customers.
Complainant, for example, has registered the domain <AirFilter.com>
to redirect Internet traffic back to its own official site. Others which have done the same thing are as
follows: Johnson & Johnson has
registered <Examination-Gloves.com>, and <Surgical-Gloves.com>.
Procter & Gamble has registered
<Tissue.com>.
C. Additional Submissions
On March 19, 2002, Complainant filed an
additional submission addressing the issues raised by the Response. Respondent's assertion that it is in the
process of incorporating under the name Filter Charger Mfg Co is insufficient
to demonstrate
any right to the mark FILTERCHARGER, especially because there is
no effort to substantiate any such use by Respondents prior to the
inception of
this dispute. Also, there is no
evidence to support Respondent's claim that "filter charger" is a
generic name. It simply has no such
usage.
Complainant may not have a Malaysian
trademark registration for FILTERCHARGER, but it does have common law trademark
rights therein,
as it has traded extensively in the Pacific Rim area
specifically including Malaysia.
While it is true that Respondent's air
conditioning parts and accessories do not compete directly with Complainant's
automotive air
filters, the relevant inquiry is whether Respondent's use of the
mark FILTERCHARGER is likely to create confusion, and in this case
there is ample
evidence of the likelihood of confusion.
FINDINGS and DISCUSSION
The Panel accepts
and has considered the Exhibits filed by Respondent on April 2, 2002, as they
are specifically referenced and accurately
described in the Response. The Panel rejects and does not consider the
e-mail message and attachment tendered by Respondent on April 2, 2002. The Panel is unable to read the attachment,
except to note that it has the name "Filter Charger Manufacturing Sdn Bhd"
printed
on it and may in fact be an official document. Beyond that it is unintelligible to the
Panel. More importantly, however, even
if it says what Respondent represents that it does, unless it somehow evidences
Respondent's use of
or demonstrable preparations to use the name "Filter
Charger Manufacturing Sdn Bhd" or "Filter Charger Mfg Co"
in a
bona fide offering of goods or services prior to notice to Respondent of this
dispute, the document is irrelevant.
There is no representation that it does so. It was not timely filed, is not in the language of the
Registration Agreement, and appears to have no probative value. The Panel does not consider this tendered
submission. Rule 2(d) and 11, Rules for
Uniform Domain-Name Dispute Resolution Policy, and Policy Paragraph 4(c)(i).
Paragraph 15(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”)
instructs this Panel to “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.”
Paragraph 4(a) of the Policy requires
that the Complainant must prove each of the following three elements to obtain
an order that
a domain name should be cancelled or transferred:
(1) the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant
has rights;
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3) the domain name has been registered
and is being used in bad faith.
Identical or Confusingly Similar
Complainant's FILTERCHARGER trademark has
been identified with automotive air filters around the world, including in
Malaysia, having
at least two outlets for its products there (Complaint Exhibit
C), and other countries around the Pacific Rim region, including Australia,
Hong
Kong, Indonesia, Japan, Korea, New Zealand, the Philippines, Singapore, Taiwan,
and Thailand. Although Complainant's
mark FILTERCHARGER is not registered with the trademark authorities in
Malaysia, Complainant has established
a common law right to that mark in
addition to its registrations.
The <filtercharger.com> domain name registered by Respondent is
identical to Complainant’s FILTERCHARGER mark.
It incorporates the entirety of Complainant’s mark and merely adds the
generic top-level domain name “.com.”
The addition of a generic top-level domain name to another’s registered
mark is not enough to create a distinct mark capable of overcoming
a claim of
identical or confusing similarity. See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to
Complainant’s mark because the generic top-level domain
(gTLD) “.com” after the
name POMELLATO is not relevant); see also
Sporty's Farm L.L.C. vs. Sportsman's
Market, Inc., [2000] USCA2 33; 202 F.3d 489 (2nd Cir. 2000) cert. denied, 530 U.S. 1262
(2000), ("For consumers to buy things or gather information on the
Internet, they need an easy way to find particular companies
or brand names.
The most common method of locating an unknown domain name is simply to type in
the company name or logo with the
suffix .com.").
Respondent also asserts that <filtercharger.com> is made up of two
generic terms, “filter” and “charger,” and therefore no one has exclusive
rights over the disputed domain name.
Respondent offers no proof, however, and the Panel is unaware of any
support for the proposition that "filtercharger," the
result of
combining those terms and using them as a single term, exists at all in common
usage other than as Complainant's mark.
The two separate elements, "filter" and "charger" are
generic, but "filter" and "charger"
are not the name in
contention, FILTERCHARGER is, and there is no evidence to support that as a
generic term in which Complainant
can claim no trademark rights. On the contrary, the trademark registration
authorities of no fewer than seven sovereign nations have concluded just the
opposite
and have registered that name as a trademark, for Complainant. (Complaint Exhibit B)
Respondent further asserts that it
manufactures refrigerant filters in air conditioner units only, whereas
Complainant manufactures
air filters for engines, and that even if the names
are similar no confusion can occur because its product base is completely
different
from Complainant’s. As
Complainant points out, however, the primary issue is whether there is a
likelihood of confusion caused by the allegedly infringing
use of the
mark. Where the products of the parties
involved are not identical, the likelihood of confusion issue extends to
whether the public would
"probably assume" that the product or
service represented by a name is associated with the source of a different
product
represented by a similar name or mark.
Scott Paper Co. v. Scott's Liquid
Gold, Inc., [1978] USCA3 1009; 589 F.2d 1225, 1229 (C.A. Del.,1978). Similarity or dissimilarity of the products themselves is only
one of several factors to be considered.
Others include (1) the strength of Plaintiff’s mark; (2) the degree of
similarity between marks; (3) the relationship between parties’
channels of
trade; (4) the relationship between parties’ advertising; (5) the degree of
care exercised by relevant consumers; (6)
evidence of actual confusion, and (7)
the intent of the allegedly infringing user.
Id.; Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d
Cir.1961).
In the present case, both parties
products are or involve filters for automotive applications. (Complaint Exhibit D, Respondent’s web
site) Complainant’s FILTERCHARGER mark
is famous world wide and was before Respondent registered <filtercharger.com>. <Filtercharger.com>
is virtually identical to Complainant’s FILTERCHARGER mark. Both parties actively market and advertise
via the Internet; the channels of trade are the same. Similarly, both parties cater to the same automotive market. The degree of care exercised by consumers of
Complainant's and Respondent's products is not materially different from that
exercised
by consumers of other automotive consumer products generally. The Complainant has received numerous
complaints from its customers that they located Respondent’s web site and were
confused about
whether the Respondent was in some manner affiliated with, or
owned by Complainant. Finally,
Respondent appears to be deliberately creating a likelihood of confusion between
it and Complainant. See, discussion below under the heading Registration
and Use in Bad Faith.
Based upon the foregoing, the Panel finds
and determines that <filtercharger.com>
is identical or confusingly similar to the mark FILTERCHARGER, in which
Complainant has rights.
Rights
and Legitimate Interests
Apart from the mere registration of <filtercharger.com> by
Respondent, the record is devoid of evidence of any right or legitimate
interest Respondent may have in respect of FILTERCHARGER
or the disputed
domain-name. While use of a name or a
mark may give rise to a common law trademark right, Respondent's use of the
disputed domain-name in this
case is solely to attract the attention of
Internet users. Any person visiting the
<filtercharger.com> website is
immediately redirected to another website under the name
<autoairgroup.com> at which goods and services are offered
under the name
AutoAir. (Complaint Exhibit D) This type of use is not a bona fide offering
of goods or services within the meaning of Policy Paragraph 4(c)(i). See
Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum
Feb. 27, 2001) (commercial use of the domain-name to confuse and divert
Internet traffic is not a legitimate
use of the domain-name).
Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no
rights in the domain-name where Respondent has an intention to divert consumers
of Complainant’s
products to Respondent’s site by using Complainant’s mark). Big
Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding
no legitimate use when Respondent was diverting consumers to its own website by
using Complainant’s trademarks); see also
Household Int’l, Inc. v. Cyntom Enter.,
FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered
the domain name <householdbank.com>, which
incorporates Complainants
HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus
finding no rights or legitimate
interests). Ticketmaster Corp. v. DiscoverNet, Inc.,
D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where
Respondent generated commercial gain by intentionally
and misleadingly
diverting users away from Complainant's site to a competing website).
Even though Respondent lists its name as
“Filter Charger Mfg Co,” Complainant’s search revealed no record or evidence
that such a
company really exists under or lawfully uses that name. Respondent admits that its authority to use
“Filter Charger Mfg Co,” or “Filter Charger Manufacturing Sdn Bhd” as its
corporate name
was still pending before the Malaysian Registrar of Companies as
of March, 25, 2002, the date of the Response.
(Response Section 2.0)[1] Accordingly, the Panel finds that Respondent
is not commonly known as “Filter Charger Mfg Co,” or “Filter Charger
Manufacturing Sdn
Bhd” and has no rights or legitimate interest in respect of
<filtercharger.com> based upon
its attempt to incorporate under or to use either of those names as an assumed
corporate name. See, Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Jan. 23, 2001) (finding that Respondent does not have rights in a domain name
when Respondent is not known
by the mark); see
also, Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant;
(2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the
domain
name in question).
Finally, Complainant, which clearly does
have rights in the mark FILTERCHARGER, has not granted Respondent any right to
use it as
part of <filtercharger.com>,
and indeed has commenced these proceedings to prevent that use.
Based upon the foregoing, the Panel finds
and determines that Respondent has no right or legitimate interest in respect
of the disputed
domain-name.
Registration
and Use in Bad Faith
Respondent asserts that it did not
register the disputed domain name in bad faith because it is a generic name
intended to redirect
Internet traffic to Respondent’s main website located at
<AutoAirGroup.com.> Respondent
asserts that these products do not compete with Complainant’s products, and
lists other generic domain names that it has
registered for the same purpose,
including <filterdrier.com>, <filtercharger.biz>, <filterchargers.
com> and <autoaircond.com.>
Respondent points out that Complainant has done the same thing, by
registering a generic name-based domain, <AirFilter.com,>
and that other
companies have similar registrations to direct consumer attention to their
websites and products. (Response
Section C.) As was determined above,
however, FILTERCHARGER is not a generic term.
Furthermore, these other registrations and uses do not involve the
potential for confusion present with Respondent's registration
and use of
FILTERCHARGER. The generic name-based
domain argument simply does not work in this case.
Much of the evidence supporting the
confusingly similar and no right or legitimate interest elements, as set forth
above, also supports
the bad faith use element. The <filtercharger.com>
domain-name is so confusingly similar to Complainant's mark that the Internet
user will likely believe that there is an affiliation
between Respondent and
Complainant or that Complainant has at least endorsed this use of it. Moreover, the fact that the disputed
domain-name is used solely to attract attention and then divert traffic to
another site, at which
there is absolutely no use of or even reference to it,
is convincing evidence of bad faith use. Kosmea Pty Ltd. v. Krpan, D2000-0948
(WIPO Oct. 3, 2000) (finding no rights in the domain-name where Respondent has
an intention to divert consumers of Complainant’s
products to Respondent’s site
by using Complainant’s mark).
Based upon the foregoing, the Panel finds
and determines that the Respondent registered and is using <filtercharger.com> in bad faith.
DECISION
Based upon the foregoing Findings and
Discussion, the relief sought in the Complaint is granted. The disputed domain-name <filtercharger.com>
is ordered transferred to Complainant.
Charles A. Kuechenmeister
Dated:
April 15, 2002
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