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Generic Top Level Domain Name (gTLD) Decisions |
Computerized Security Systems, Inc. d/b/a
SAFLOK v. Bennie Hu
Claim Number: FA0305000157321
PARTIES
Complainant
is Computerized Security Systems, Inc., Costa
Mesa, CA (“Complainant”) represented by Robert
S. Gurwin, of Rader, Fishman, Grauer
PLLC. Respondent is Bennie Hu, Wujiang City, Jiangsu,
CHINA (“Respondent”) represented by Jin
Ling of Jin, Li & Wang Dispute
Service Center.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <saflock.com>,
registered with Bulkregister.com, Inc.
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.
Hugues
G. Richard as panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 14, 2003; the Forum received
a hard copy of the Complaint
on May 14, 2003.
On
May 14, 2003, Bulkregister.com, Inc. confirmed by e-mail to the Forum that the
domain name < saflock.com > is
registered with Bulkregister.com, Inc. and that the Respondent is the current
registrant of the name. Bulkregister.com, Inc. has
verified that Respondent is
bound by the Bulkregister.com, Inc. 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
May 15, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 4,
2003 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@saflock.com by e-mail.
A
timely Response was received and determined to be complete on June 2, 2003.
On June 9, 2003, Additional
Submission by Complainant was received pursuant to National Arbitration Forum
Supplemental Rule 7(a).
On June 10, 2003, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hugues H. Richard as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends that the <saflock.com>
domain name is nearly identical or confusingly similar in sight, sound and
appearance to Complainant’s famous “SAFLOK” Mark, which
has been in use since
at least as early as 1982, and <saflock.com> Internet domain.
Complainant submits that consumer
confusion is particularly likely because Respondent is using the famous and
distinctive mark “SAFLOK”
adding only the single letter “C” (while the spelling
and pronunciation is identical in every way) to misdirect web traffic of
individuals
who are looking for the Complainant’s famous SAFLOK products and
official SAFLOK website.
The fact that the infringing domain name
includes the letter “C” as compared to Complainant’s SAFLOK Mark does not
defeat this identity,
as the mere inclusion of the letter “C” cannot serve to
distinguish[1]. Indeed,
domain names that deviate insignificantly from a famous mark are rendered
confusingly similar under ICANN Policy 4(a)(i)
analysis[2].
Furthermore, Complainant argues that the
likelihood of confusion is enhanced by the fact that Complainant is one of the
world’s largest
manufacturing and distributors of electronics locks, access
management systems and safes in the hospitality, multi-family, government,
military and commercial industries and sells electronic lock products similar
to those offered by Respondent.
Complainant
claims that Respondent has no rights or legitimate interests in the domain
name. According to Complainant,
Respondent has never offered bona fide goods or services under the SAFLOCK
Mark, and since Complainant holds
worldwide registrations for its SAFLOK Mark
and variations thereof, any such use of these marks by Respondent would
constitute trademarks
infringement[3].
Moreover,
Respondent has never been commonly known by the name SAFLOCK in accordance with
ICANN Policy 4(c) (ii). Complainant makes
reference to the Victoria’s Secret et al. v. Victoria Summers, FA 96931 (Nat. Arb.
Forum May 8, 2001) decision in which the panel found that the respondent failed
to demonstrate any rights or
legitimate interest in the disputed domain name,
and points out the similarities with the case at hand.
Respondent’s
conduct cannot constitute “noncommercial or fair use without intent for
commercial gain to misleadingly divert customers
or to tarnish the trademark or
service mark at issue” under paragraph 4(c)(iii) of the ICANN Policy.
Complainant recently became
aware that Respondent has offered, and continues to
offer, electronic lock products in direct competition with Complainant.
Respondent’s
registration and use of <saflock.com> is per se evidence of an intent to reap
commercial gain from Complainant’s protected and famous SAFLOK mark[4].
Complainant
contends that Respondent registered and used the <saflock.com>
domain name in bad faith. In light of the worldwide fame of Complainant’s
SAFLOK mark, and the reputation of SAFLOK.COM as an Internet
site offering
information about Complainant, its products and the sale of such products, it
is inconceivable that Respondent could
have registered the domain names now in
dispute without actual knowledge of Complainant’s rights. Under the ICANN
Policy, registration
of a domain name which one knows to be identical or confusingly
similar to another’s trademark is evidence of bad faith[5].
Registrant has used and registered the infringing domain name in connection
with a website to directly compete against SAFLOK to
sell electronic lock
products, and advertising that it will “[b]ring more cheaper good products to
you!”. Respondent has engaged
in a clear scheme to reap personal financial gain
on the fame and goodwill of Complainant’s protected famous mark and its primary
Internet domain name[6].
B.
Respondent
Respondent is a China based manufacturer
of electronic safes and locks in business since 1997, a wholly-owned subsidiary
of Secustar
Co. Ltd., a trading company on safety products.
It registered the domain name <saflock.com>
on October 19, 2001 because it equals its company name.
Respondent does not dispute that the
domain name <saflock.com> is similar to the Complainant’s
registered trademark SAFLOK.
Respondent claims that he has rights and
legitimate interests in the domain name because it registered its company name,
Saflock Electronics
Co. Ltd. d/b/a Saflock, as a domain name, which has been
advertised and widely promoted in China over the years[7].
The disputed domain name has been used,
before the notice of this dispute, for more than two years, on its company
website introducing
safes and locks, as well as on its e-mail addresses to
communicated with clients and business partners, and as such the domain name
has been commonly known by Respondent’s clients and business partners.
Respondent has spent substantial funds to promote its website,
is a legitimate
company and consequently, the domain name is in connection with a bona fide
offering of goods and services.
The domain name incorporates “lock”, a
common generic word, and “saf” which is similar to another descriptive word and
is widely used
by companies all around the world to represent “safe” or
“safety”, e.g. SAFAIR, SAFWAY.
An ICANN domain name dispute proceeding
is not a forum for resolving disputes over trademarks rights (VeriSign Inc. v. VeneSign C.A. d-2000-0303
(WIPO June 28, 2000): “this decision should not be understood as a substantive
decision on the likelihood of confusion
between the Parties’ use of “VeriSign”,
which will be a dispute for the courts to decide”.
It has spent a lot of money to promote it
and actively uses it in its business and as such should have a legitimate
interest (Grand Bay Management Company v.
Allegory Investments, D-2001-0874, (WIPO Sept. 21, 2001).
Finally, Respondent submits that he has
not registered and is not using the domain name in bad faith. Respondent
contends that Complainant
bears the burden of proof as to each element of its
claim (ICANN Policy 4(a)). It further alleges that Complainant must establish
bad faith in both use and registration[8].
According to Complainant, there is no evidence whatsoever that the Respondent
registered the domain name with the intent to sell
it to Complainant, to
prevent Complainant from registering a domain name incorporating its trademark,
to disrupt Complainant’s business,
or to misdirect customers seeking to
purchase its products. Respondent has never approached Complainant before.
According to Respondent, Complainant’s
Mark “SAFLOK” is not a famous mark in China. Respondent’s company is based in
China, which
is very clear since the Chinese flag and the trademark “SECUSTAR”
are shown on Respondent’s website, and Complainant did not enter
the Chinese
market until 2002, two years after Respondent registered the disputed domain
name. Most of the Chinese customers and
professional Locker retailers and
distributors do not know the Complainant’s SAFLOK mark. Respondent had not
prior knowledge of Complainant’s
existence.
Respondent contends that the trademark
“SAFLOK” is not registered in China and quotes Etam, plc. V. Alberta Hot Rods, D2000-1654 (WIPO January 31, 2000),
VZ VermögensZentrum AG v. Anything.com
and Allocation Network GmbH v. Steve
Gregory.
According to the most popular China based
Chinese search engine, <baidu.com>, the keyword “SAFLOK” appears on 8 web
pages, and
on 9 pages on Google’s Chinese version search engine.
C.
Complainant’s Supplemental Submissions
Complainant
further submits in its “Supplemental written statement” that Respondent admits
that its <saflock.com> domain name is identical and confusingly
similar and that therefore, Complainant has satisfied Policy 4(a)(i). Clearly,
by virtue
of its trademarks registrations in the United-States and in China
specifically (No. 1338763 for SAFLOK & Design issued on November
28, 1999),
there can be no dispute that Complainant is the rightful owner and has
exclusive rights to use its SAFLOK Marks, along
with confusingly similar
variations thereto.
According
to Complainant, the trademark SAFLOK is not generic. Respondent’s notion is
erroneous since it ignores the most fundamental
principles of both U.S. and
Chinese trademark law that afford Complainant protection of and exclusive
rights to use its SAFLOK marks.
Clearly, Respondent, a direct competitor of
Complainant, now claims that SAFLOCK is generic solely to further its own bad
faith activities
which continue to deprive Complainant of the use of its own
marks as incorporated within the domain name that is the subject of this
action.
Complainant’s
trademarks registration pre-dates by nearly two years Respondent’s registration
and use of the domain name. It is well
established that under the law of both
the United-States and China the use of a confusingly similar domain name to the
registered
mark for similar or identical goods is regarded as an infringement
of Complainant’s rights[9].
In fact, infringing use vests no rights with Respondent and must therefore be
rejected.
Complainant’s
trademark registration in China is constructive notice of Complainant’s rights,
which cannot be ignored[10]. Therefore Respondent has no legitimate rights
or interests in the <saflock.com> domain name.
Respondent himself submitted into
evidence an e-mail message it had received on May 8, 2001, from Dina Butts of
Thompson Waterproofing,
Inc., that was intended for Complainant. As a matter of
fact, Complainant learned of Respondent’s infringing registration and use
of
the <saflock.com> domain name when Complainant received inquiries
from customers who either mistakenly ordered goods from the Respondent due to
actual
confusion presented by Respondent’s registration and use of the domain
name at issue or, were misled by the difference in price between
Complainant’s
goods and those offered by Respondent.
Respondent’s
reliance on prior UDRP decisions such as Etam,
plc v. Alberta Hot Rods, VZ
VermögensZentrum AG v. Anything.com and Allocation
Network GmbH v. Steve Gregory is misguided and misleading, since the
complainant in each of these cases had not registered its mark in the
respondent’s home country. In contrast,
in the instant case, Complainant did in fact register its mark in China,
Respondent’s home country, and the registration
was granted for nearly two
years before Respondent applied to register the <saflock.com>
domain name. Moreover, Complainant
applied to register its mark in China on February 1, 1998, some 32 months
before Respondent applied to register
<saflock.com>. As noted above, a trademark registration in
a respondent’s place of domicile places a respondent on constructive notice of
the registered
mark[11].
Thus, Respondent had knowledge of Complainant’s SAFLOK marks by virtue of
Complainant’s Chinese trademark registration.
Complainant is therefore entitled to a legal presumption of bad faith.
Respondent has failed to provide any evidence to overcome this
presumption of
bad faith, and thus Complainant succeeds under Policy 4(a)(iii).
Despite
having knowledge of actual confusion as early as May 8, 2001, it wasn’t until
after being served with the Complaint herein,
that Respondent redesigned its
home page to make it clear that its brand name is SECUSTAR SMARTLOCK[12].
Respondent’s efforts to change its website after receiving the Complaint are
further evidence that Respondent’s registration of
<saflock.com>
was in bad faith[13].
Accordingly, Respondent’s attempt to play on the fame and goodwill of
Complainant’s registered SAFLOK marks, even after it had actual
knowledge of
customer confusion is bad faith under Policy 4(a)(iii).
In a nutshell, when considering that
there is an admission by Respondent that the domain name at issue is identical
and confusingly
similar to Complainant’s SAFLOK marks, Respondent’s failure to
demonstrate any legitimate rights or interests to the <saflock.com>
domain name, and Respondent’s absolute misrepresentations of its own bad faith
conduct, it is clear that Complainant has met its
burden of proof for all three
prongs under Policy 4(a) and there can be no question that this arbitration
Panel should issue an order
to transfer <saflock.com> to
Complainant as the rightful owner.
FINDINGS
The Complainant, is the owner of numerous
trademark registrations worldwide for the mark SAFLOK, including the following
US registrations:
1,330,642 1,394, 673 2,522,943 registered on April 16, 1985,
May 27, 1986 and December 25, 2001 respectively as well as the China
registration 1338763 registered on November 28, 1999 as it appears from Exhibit
F of the Affidavit of Glenn Peacock.
Complainant has used, since at least
1982, and is using its SAFLOK trademark continuously and extensively in
connection with its electronic
lock products, namely, among other things :
“computer controlled electronic door access system for use in hotels and
offices, namely
door locks, key cards, system host computer, key card encoding
computer”.
On October 19, 2000, the Respondent
registered the domain name <saflock.com>.
Having reviewed the evidence submitted by
the parties and their written representations, the Panel makes the following
findings:
The
disputed domain name <saflock.com> is confusingly similar to
Complainant’s trademarks SAFLOK.
The Respondent
does not have any rights or legitimate interests in respect of the domain name;
and
The domain
name has been registered and used by the Respondent in bad faith.
DISCUSSION
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.
On this issue, the Panel is of the
opinion that the disputed domain name is confusingly similar to Complainant’s
registered trademarks
for the following reasons.
As previously stated, Complainant has
provided evidence to the effect that the registrations in regard to the
trademark SAFLOK have
been made (notably USPTO Registration No. 1,330,642,
registered in April 1985 and Chinese Registration 1338763 registered on
November
28, 1999). Complainant registered its principal domain name
<saflok.com> on April 3, 1996 and has continuously used the domain
name
since at least as early as December 1, 1998.
Those
registrations are sufficient to establish prima facie the rights of Complainant
over the said trademarks[14].
It
has been recognized in previous decisions that the adaptation of a trademark in
a domain name by variation in spelling or by deletion,
addition or insertion of
letters or numbers does not escape a finding of confusing similarity. As stated in the decision America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 12, 2000), the
addition of the suffixes “502” and “520” to the “ICQ” trademark does little to
reduce the potential
for confusion.
Also, in America Online Inc.
v. Chinese ICQ Network, D2000-0808
(WIPO Sept. 7, 2000), the Panel found that adding the numeral 4 in the domain
name <4icq.com> does nothing to deflect
the impact on the viewer of the
ICQ mark and is therefore confusingly similar.[15]
The
panel is of the view that the addition of the letter “C” does nothing to
“distinguish” Respondent’s domain name from Complainant’s
registered trademark,
which remains the principal element of the domain name. This is even more so if
one considers that Respondent
is offering for sale similar products to those of
Complainant.
Respondent
does not dispute that its <saflock.com> domain name is similar to
Complainant’s SAFLOK mark in which Complainant has rights. The Panel considers
that this admission is sufficient
for the Complainant to satisfy 4(a) Policy.
The
Panel therefore finds that it is perfectly plausible for a consumer to be
confused by the terminology used in the Respondent’s
domain name. Any Internet user may be led into thinking
that the <saflock.com> website is provided or endorsed by the
Complainant.
Any of
the following circumstances, in particular but without limitation, if found by
the Panel, shall demonstrate Respondent’s rights
or legitimate interests to the
domain name:
i)
The 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)
The fact
that the Respondent has been commonly known by the domain name; or
iii)
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. [ICANN Policy: 4(c)]
Apart from the mere registration of the <saflock.com>
domain name by Respondent, the Panel does not find any evidence of any
right or legitimate interest the Respondent may have in respect
of the disputed
domain name. The Respondent’s use of a domain name confusingly similar to
Complainant’s mark to sell goods in direct
competition with Complainant’s goods
is neither a bona fide offering of goods or services pursuant to Policy 4(c)(i)
nor a legitimate
noncommercial or fair use pursuant to Policy 4(c)(iii).[16]
It has been decided in Vapor Blast Mfg. Co. v. R & S Tech. Inc, FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) <vaporblast.com>, that the commercial use of the
domain name to confuse and divert
Internet traffic was not a legitimate use of
the domain name. In Kosmea Pty Ltd.
v. Krpan, D2000-0948 (WIPO Oct. 4,
2000) (<kosmea.com>), the Panel found that Respondent had no rights in
the domain name because of
its intention to divert consumers of Complainant’s
products to Respondent’s site by using Complainant’s mark.
Furthermore, the Panel accepts the
Complainant’s contention to the effect that the Respondent’s appropriation of
the SAFLOK mark to
market products that compete with Complainant’s goods does
not constitute a bona fide offering of goods and services. As it was stated in America Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 12, 2000) (<icq502.com> and <icq520.com>),
“it would be unconscionable to find a bona fide offering
of services in a
respondent’s operation of a website using a domain name which is confusingly
similar to Complainant’s mark and for
the same business”.[17]
Regarding Rule 4(c)(ii), it is not
plausible for Respondent to claim that he has been commonly known by either
SAFLOCK or the domain
name <saflock.com>. Respondent has contended
that since it uses its company name as its domain name, it has a legitimate
interest in the latter[18].
Even the evidence submitted by the Respondent which consists the back cover of
a product manual, a product quality assurance label,
a business card copy and
an exclusive distributor agreement is not sufficient to prove that Respondent
has become commonly known.
The Panel cannot accept the view
expressed by Respondent when it argues that the dispute between the parties is
a legitimate trademark
dispute, which would be more properly resolved in a
court proceeding. It seems that Respondent makes an inappropriate analysis of
the last paragraph in VeriSign Inc. v.
VeneSign C.A. D2000-0303 (WIPO June 28, 2000). In that decision, the
Panelist simply noted that its decision was not a substantive one on
likelihood of confusion between the marks.
In
relation to Rule 4(c)iii), there is no indication that the Respondent is making
a legitimate non-commercial or fair use of the
domain name.
Under the circumstances, the Panel finds
that Respondent has no rights or legitimate interests in the domain name.
Rule 4(b) of the ICANN Policy states that
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 the Respondent has registered or has acquired the domain name
primarily for the purpose of selling […]
for a valuable consideration in excess
of Respondent’s documented out-of-pocket costs directly related to the domain
name; or
ii)
that the
domain name has been registered in order to prevent the owner of the trademark
from reflecting the mark in a corresponding
domain name, provided that you have
engaged in a pattern of such conduct; or
iii)
that the
domain name has been registered primarily for the purpose of disrupting the
business of a competitor; or
iv)
that the
domain is used to intentionally attempt to attract, for commercial gain,
internet users to respondent’s 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 respondent’s website or location or
of a product or service on respondent’s website or location.
The Panel finds, as above-mentioned, that
the <saflock.com> domain name is so confusingly similar to
Complainant’s marks 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. In fact, when
Respondent registered the domain name in dispute, which is long after
Complainant had adopted and first used its trademark,
Complainant already had a
worldwide reputation. Thus, Respondent should have known about Complainant’s
trademark at the time he registered
the domain name given the Chinese
registration. In Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum
Aug. 29, 2000) <perot.net>, the Panel found bad faith where “the domain
name in question is obviously
connected with Complainant’s well-known marks,
thus creating a likelihood of confusion strictly for commercial gain”.
The Panel further finds that Respondent’s
use of the <saflock.com> domain name to offer competing goods
illustrates Respondent’s bad faith registration and use and is intentionally
attempting to attract
Internet users to Respondent’s website for commercial
gain by creating a likelihood of confusion with Complainant’s mark as to the
source, sponsorship, affiliation or endorsement of Respondent’s website, which
evidences bad faith registration and use pursuant
to Policy 4(b)(iv)[19].
The Panel cannot accept that Respondent’s
use of the website prior to the initiation of the dispute may be regarded as an
indication
of a lack of bad faith. In both Mule
Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no
bad faith where Respondent has an active website that has been in use for two
years and where there was no intent to cause confusion with
Complainant’s website and business) and DJF
Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1,
2000) (finding Respondent has shown that it has a legitimate interest in the
domain name because
Respondent selected the name in good faith for its
website, and was offering services under the domain name prior to the
initiation of the dispute)(our emphasis), the respondent
had at least
established that it had no intent to confuse or that it had registered in good
faith when the issue of prior registration
came into the Panel’s scope. In the
case at hand, Respondent cannot rely on this unique matter in order to prove
its good faith.
Furthermore, the Panel, following National Association of Professional Baseball
Leagues v. Zuccarini, D2002-1011 (WIPO, Jan. 21, 2003) and Bama Rags, Inc. v. Zuccarini, FA 94380
(Nat. Arb. Forum May 8, 2000), finds that Respondent has engaged in a
“typosquatting” behavior, a practice which implicates
the registration of a
domain name that takes advantage of Internet users who inadvertently misspell
the domain name of a trademark
holder. The Panel finds that Respondent’s
registration and use of a domain name that differs from Complainant’s mark by
only one
letter indicates “typosquatting”, which is evidence of bad faith
registration and use.
As to Respondent’s distinction between
use in bad faith and registration in bad faith, it seems again that its
understanding of the
matter is erroneous since the decision referred to (World Wrestling Federation Entertainment,
Inc. v. Brosman, D1999-0001 (WIPO Feb. 21, 2000)) simply states that mere
registration in bad faith is not sufficient although in the present case,
the
evidence submitted clearly demonstrates both registration and use in bad faith.
According to the foregoing, the Panel
concludes that the Respondent has intentionally attempted to attract, for
commercial gain, Internet
users to Complainant’s website.
Consequently, this Panel finds that
Respondent has registered and used the disputed domain name in bad faith.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <saflock.com> domain name be TRANSFERRED from Respondent to
Complainant.
Hugues G.
Richard, Panelist
Dated: June 23, 2003
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