DECISION

Rockford Corp. v. Joerg Kniebel

Claim Number:  FA0311000209982

PARTIES

Complainant is Rockford Corp., Tempe, AZ (“Complainant”) represented by Christy Hubbard, of Lewis & Roca LLP, 40 N. Central Avenue, Phoenix, AZ 85004.  Respondent is Joerg Kniebel, Heinrich-Fritz-Str. 5, Greiz, Germany 07973 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rockford-fosgate.com>, registered with Schlund+Partner AG.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on November 9, 2003; the Forum received a hard copy of the Complaint on November 21, 2003.

On November 24, 2003, Schlund+Partner AG confirmed by e-mail to the Forum that the domain name <rockford-fosgate.com> is registered with Schlund+Partner AG and that Respondent is the current registrant of the name. Schlund+Partner AG has verified that Respondent is bound by the Schlund+Partner AG 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 November 24, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 15, 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@rockford-fosgate.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 December 23, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 <rockford-fosgate.com> domain name is identical to Complainant’s ROCKFORD FOSGATE mark.

2. Respondent does not have any rights or legitimate interests in the <rockford-fosgate.com> domain name.

3. Respondent registered and used the <rockford-fosgate.com> domain name in bad faith.

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

FINDINGS

Complainant registered its ROCKFORD FOSGATE mark with the United States Patent and Trademark Office (“USPTO”) on November 16, 1982 and February 28, 1989 (Reg. Nos. 1526601, 1216478). Complainant has used the mark continuously since 1980 in connection with its consumer electronics equipment and clothing.

Complainant operates its business from <rockfordfosgate.com>, to which an estimated 125,000 consumers visit each month.  Complainant has gained widespread recognition for its ROCKFORD FOSGATE mark due to extensive advertising, especially on the Internet. 

Respondent registered <rockford-fosgate.com> on June 1, 2002.  The attached website contained a statement requesting an offer to purchase the domain name.  On July 8, 2002, Complainant’s authorized representatives contacted Respondent via mail and e-mail to object to the registration and use of <rockford-fosgate.com>.  Respondent e-mailed Complainant and offered to sell the domain name to Complainant, but Respondent also stated the name was being offered to other businesses in competition with Complainant.

In November of 2002, Respondent used the disputed domain name to direct Internet users to a site that sells competing goods with Complainant. 

In November of 2003, the disputed domain name appeared to contain Complainant’s official content located at <rockfordfosgate.com>.  However, Internet users accessing the site remained at the <rockford-fosgate.com> location.  Complainant’s true website is hosted at <amps.rockfordcorp.com>.  Respondent has copied Complainant’s site to create the appearance for consumers of the official website of Complainant.  Thus, consumers who were deceieved could unknowingly supply private information to Respondent, among other dubious possibilities.

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 draw such inferences it 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 and/or Confusingly Similar

Complainant has established rights in the ROCKFORD FOSGATE mark through registration with the USPTO and continuous use in commerce since 1980.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption.); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

The disputed domain name, <rockford-fosgate.com>, is identical to Complainant’s ROCKFORD FOSGATE mark because the domain name incorporates Complainant’s mark in its entirety.  The addition of a hyphen or top-level domain name is irrelevant for determining a mark’s distinctiveness, in relation to a domain name.  See Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) finding <game-boy.com> identical and confusingly similar Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen; see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) finding that putting a hyphen between words of Complainant’s mark is identical to and confusingly similar to Complainant’s mark; see also 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 Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level domain name, such as “.net” or “.com,” does not affect the determination of whether it is identical or confusingly similar to a mark.

Therefore, Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not asserted any rights or legitimate interests in the domain name.  Therefore, the Panel may accept all reasonable inferences of fact in the allegations of Complainant, without the benefit of a Response.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint; see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names.

Additionally, there is no evidence that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  The WHOIS registration information fails to imply that Respondent is commonly known by the name.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) stating, “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply; 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.

Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is it making a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶ 4(c)(i) & (iii), because Respondent has attempted to pass itself off as Complainant by copying Complainant’s website, opening the door for Respondent to obtain private information from Complainant’s customers.  See Am. Int’l Group, Inc. v. Busby d/b/a AIG Mergers & Acquisitions, FA 156251 (Nat. Arb. Forum May 30, 2003) finding that Respondent attempted to pass itself off as Complainant online, through wholesale copying of Complainant’s website; thus, Respondent had no rights or legitimate interests in the name; see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) stating that, where Respondent copied Complainant’s website in order to steal account information from Complainant’s customers, Respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”.

Additionally, Respondent has used the site to solicit offers for the sale of the <rockford-fosgate.com> name.  See 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 Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights.

Moreover, Respondent has actually used the disputed domain name to direct Internet users to competitors of Complainant, presumably for revenue.  See Winmark Corp. d/b/a Play It Again Sports v. In The Zone a/k/a Giant Sports Factory, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) finding that Respondent had no rights or legitimate interests in a domain name that used Complainant’s mark to redirect Internet users to a competitor’s website; see also 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.  

Therefore, Respondent has no rights and legitimate interests in <rockford-fosgate.com>, pursuant to Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and uses the disputed domain name in bad faith by attempting to pass itself off as Complainant.  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) finding that Respondent's use of <monsantos.com> to misrepresent itself as Complainant and to provide misleading information to the public supported a finding of bad faith; see also Am. Int’l Group, Inc. v. Walter Busby d/b/a AIG Mergers and Acquisitions, FA 156251 (Nat. Arb. Forum May 30, 2003) finding that the disputed domain name was registered and used in bad faith where Respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . . In a nutshell, Respondent used the disputed domain name to perpetrate a fraud”.

Moreover, Respondent has attempted to attract Internet users to its phony site, for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source and sponsorship, which is bad faith registration and use, pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) finding 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; see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site; see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) finding bad faith where Respondent attracted users to a website sponsored by Respondent and created confusion with Complainant’s mark as to the source, sponsorship, or affiliation of that website.  

Therefore, Complainant has satisfied Policy ¶ 4(a)(iii).

DECISION

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

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

Sandra Franklin, Panelist

Dated:  January 6, 2004

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