DECISION

Factory Physics Inc. v. Vertical Axis Inc.

Claim Number: FA0212000135047

PARTIES

Complainant is Factory Physics, Inc., College Station, TX, USA (“Complainant”) represented by Mark L. Spearman of Factory Physics, Inc.  Respondent is Vertical Axis, Inc., Central, Hong Kong, CHINA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <factoryphysics.com>, registered with IA Registry.com.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 29, 2002; the Forum received a hard copy of the Complaint on December 9, 2002.

On December 2, 2002, IA Registry.com confirmed by e-mail to the Forum that the domain name <factoryphysics.com> is registered with IA Registry.com and that Respondent is the current registrant of the name. IA Registry.com has verified that Respondent is bound by the IA Registry.com 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 December 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 6, 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@factoryphysics.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On January 14, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <factoryphysics.com> domain name is confusingly similar to Complainant’s FACTORY PHYSICS mark.

2. Respondent has no rights or legitimate interests in the <factoryphysics.com> domain name.

3. Respondent registered and used the <factoryphysics.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Factory Physics Inc., has established in this proceeding that it holds rights in the service mark FACTORY PHYSICS, U.S. Reg. No. 2,504,746. This mark was registered on the Principal Register of the United States Patent and Trademark Office (“USPTO”) on November 6, 2001, and first used in commerce in September of 1995.

The FACTORY PHYSICS mark was coined by the president of Complainant while he was a professor at Northwestern University. It was used as the title of the book Factory Physics: Foundations of Manufacturing Management, co-written by Wallace J.Hopp and Mark L. Spearman. The FACTORY PHYSICS term is used to denote the flow of products through a manufacturing process. The term is also the name of Complainant’s consultation, training, and software development company, which uses the ideas conveyed by the FACTORY PHYSICS mark.

Respondent, Vertical Axis Inc., registered the <factoryphysics.com> on November 13, 2001, but is not licensed or authorized by Complainant to use the FACTORY PHYSICS mark for any purpose. Respondent’s website contains a series of links to terms that are similar to Complainant’s mark and two “pop-up” advertisements. The website also notes that the website is “Planned for Development” and that the domain name registration is “for sale at Onbid.com.” The Panel notes that Respondent has been brought before previous Panels for nearly identical behavior.

DISCUSSION

Paragraph 15(a) of 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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 to and/or Confusingly Similar

Complainant has established rights in the FACTORY PHYSICS mark through registration on the Principal Register of the USPTO prior to Respondent’s registration of the disputed domain name, as well as through continuous use of the mark.

Respondent’s <factoryphysics.com> domain name is identical to Complainant’s FACTORY PHYSICS mark. The only distinction between the disputed domain name and Complainant’s mark is the elimination of the space between the words FACTORY and PHYSICS and the addition of the top-level domain “.com” after Complainant’s mark. Neither change is relevant to the Panel in determining whether the domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i), as both differences are the result of the standardized nature of domain names and not changes that assist Respondent in defeating a claim that the domain name is identical or confusingly similar. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com.’”).

The Panel notes that a term is generally not viable for registration if it is “merely descriptive” when applied to the goods of the applicant. However, an exception is made for terms that, although merely descriptive, have become “distinctive of the applicant’s goods in commerce.” If such “secondary meaning” is shown, the mark may be registered. See 15 U.S.C. § 1052(e)-(f); Lanham Act § 2(f). Complainant’s mark consists of two descriptive words that Complainant coined to describe a specific process. Complainant has shown sufficient secondary meaning associated with its mark to remove the <factoryphysics.com> domain name from being so generic as to be available on a “first come, first served” basis for any Registrant.

Accordingly, the Panel finds that the <factoryphysics.com> domain name is identical to Complainant’s FACTORY PHYSICS mark under Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

While the burden of proving each element under Policy ¶ 4(a) initially lies upon Complainant, the Panel will nevertheless consider Respondent’s lack of a response to the Complaint as evidence that it lacks rights and legitimate interests in the <factoryphysics.com> domain name under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent failed to invoke any circumstance that could demonstrate rights or legitimate interests in the domain name); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

To meet its burden under Policy ¶ 4(a)(ii), Complainant can show that none of the elements listed in Policy ¶ 4(c)(i)-(iii) are applicable to Respondent, thus shifting its burden. At that point, Respondent’s lack of a response will result in its inability to meet its burden, compelling a finding for Complainant. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant asserts that Respondent has no rights or legitimate interests relative to the domain name, it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Respondent has posted nominal content at the <factoryphysics.com> domain name, mainly consisting of links associated with the FACTORY PHYSICS mark. Other than these links, Respondent’s website contains no original content, only noting that the website is “Planned for Development.” It also states that the domain name is for sale and takes advantage of Complainant’s mark to dupe Internet users into viewing two pop-up advertisements. None of these facts evidence a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) and they do not evidence a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). Complainant has shown that both of these Policy provisions do not apply to Respondent. See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website).

Respondent’s contact information lists its name as “Vertical Axis Inc.,” and nothing on its website mentions the FACTORY PHYSICS mark. Without a Response to rely upon, the Panel infers that Respondent was not “commonly known by” the name FACTORYPHYSICS or <factoryphysics.com> prior to registration of the domain name and does not qualify for the protection of Policy ¶4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also 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).

Complainant made an uncontested prima facie case against Respondent and the Panel finds that Respondent does not have rights or legitimate interests in the <factoryphysics.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s <factoryphysics.com> domain name is identical to Complainant’s FACTORY PHYSICS mark, creating a likelihood of confusion in the minds of Internet users as to the source or sponsorship of the disputed domain name. The fact that Respondent’s website contains both static and “pop-up” advertisements permits the Panel to infer that Respondent is realizing a profit from the operation of its domain name. In capitalizing on Complainant’s mark for commercial gain, Respondent’s actions equate to bad faith use and registration of a domain name pursuant to Policy ¶ 4(b)(iv). See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where Respondent attracted users to advertisements); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked a domain name to another website and presumably received a portion of the website’s advertising revenue by directing Internet traffic to the site, thus using a domain name to attract Internet users for commercial gain).

Complainant has also pointed out that Respondent has been found to be in violation of the UDRP on other occasions. See Harvey Casino Resorts v. Vertical Axis, Inc. FA 117320 (Nat. Arb. Forum Oct. 10, 2002) (finding that Respondent’s use of a confusingly similar domain name to attract Internet users to pop-up advertising evidenced bad faith use and registration); see also MBNA America Bank, N.A. v. Vertical Axis, Inc., FA 133632 (Nat. Arb. Forum Jan. 6, 2003) (finding for Complainant on facts similar to those above). The Panel notes that Respondent registered the domain name in the Harvey Casino Resorts case on the same day that it registered the infringing domain name in this dispute. The Panel concludes that Respondent’s bad faith pattern of registering infringing domain names violates Policy ¶ 4(b)(ii) and supports findings of bad faith use and registration of the <factoryphysics.com> domain name. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where Respondent engaged in the practice of registering domain names containing the trademarks of others).

Accordingly, the Panel finds that Respondent registered and used the <factoryphysics.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <factoryphysics.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: January 28, 2003.

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