DECISION

Textron, Inc. v. Focus Service, Inc.

Claim Number:  FA0404000250239

PARTIES

Complainant is Textron, Inc. (“Complainant”), represented by Richard A. Giangiori, of Trexler, Bushnell, Giangiorgi, Blackstone, & Marr, Ltd., 105 W. Adams, Ste. 3600, Chicago, IL 60603.  Respondent is Focus Service, Inc. (“Respondent”), 115 Broadway Rd, Los Angeles, CA 41057.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <avdelcherrytextron.com>, registered with Enom, 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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 31, 2004; the Forum received a hard copy of the Complaint on April 2, 2004.

On April 1, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <avdelcherrytextron.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 April 9, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 29, 2004 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@avdelcherrytextron.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 May 12, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 <avdelcherrytextron.com> domain name is confusingly similar to Complainant’s AVDEL, CHERRY and TEXTRON marks.

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

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

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

FINDINGS

Complainant, Textron, Inc., is in the business of industrial machinery. Complainant’s products include fasteners, rivets, fitters, sealing pins, riveting guns, screws, staples, studs, motors, pumps, saws, engine cylinder heads, gears, bits, surface grinders, turret lathes and rocket engines.

Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for the AVDEL (Reg. No. 577,603, issued July 21, 1953 and Reg. No. 632,176, issued August 7, 1956), CHERRY (Reg. No. 1,445,980, issued July 7, 1987 and Reg. No. 1,482,135, issued March 29, 1988) and TEXTRON (Reg. No. 1,066,630, issued May 31, 1977; Reg. No. 1,074,863, issued October 11, 1977; Reg. No. 1,090,704, issued May 9, 1978; Reg. No. 1,090,737, issued May 9, 1978 and Reg. No. 1,090,806, issued May 9, 1978) marks. Complainant also holds numerous trademark registrations in China for the AVDEL, CHERRY and CHERRY TEXTRON marks. An application for a Chinese trademark for the TEXTRON mark was filed on behalf of Complainant in May 2003.

Complaint’s main website is located at the <textron.com> domain name, where consumers can conduct their business online with Complainant. Many of Complainant’s customers are only interested in its fastener products. Thus, Complainant utilizes sub-domain names for specific groups of products like fasters. For example, the <advelcherry.textron.com> domain name directs consumers to the portion of Complainant’s web address relating to its AVDEL and CHERRY fastener products.

Respondent registered the domain name on July 2, 2003 and is using the <avdelcherrytextron.com> domain name to redirect Internet users to a commercial Chinese website that offers industrial machinery products and services, specifically fasteners and fitters. Competitors of Complainant also advertise their products on Respondent’s website.

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 that it has rights in the AVDEL, CHERRY and TEXTRON marks through registration with the United States Patent and Trademark Office of these marks and through the use of its marks in commerce for the last fifty-one, seventeen and twenty-seven years, respectivly. See 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that 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).

Respondent’s <avdelcherrytextron.com> domain name is confusingly similar to Complainant’s AVDEL, CHERRY and TEXTRON marks because the domain name incorporates Complainant’s marks in their entireity and merely combines all of Complainant’s marks into one word. The addition of the top-level domain “.com.” to a combination of Complainant’s registered marks does not remove Respondent’s domain name from the realm of confusing similarity. See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”); see alsoRollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

            The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the domain name. Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name. The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no rights or legitimate interests is sufficient to shift the burden of proof to Respondent to demonstrate that such rights or legitimate interests do exist); see also 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 with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Moreover, the Panel may accept all reasonable allegations and inferences in the Complaint as true because Respondent has not submitted a Response. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”).

Respondent is using the <avdelcherrytextron.com> domain name to redirect Internet traffic to a Chinese website that offers fasteners and fitters, industrial machinery products similar to those offered by Complainant. Respondent’s use of a domain name confusingly similar to Complainant’s marks to redirect Internet users interested in Complainant’s industrial machinery goods and services to a commercial website that offers similar industrial machinery goods and services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “it would be unconscionable to find 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”).

Moreover, Respondent has offered no evidence and there is no proof in the record suggesting that Respondent is commonly known by the <avdelcherrytextron.com> domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered the domain name for its own commercial gain. Respondent’s domain name diverts Internet users who intend to search under Complainant’s marks to a website sponsored by Respondent that offers fasteners and fitters, industrial machinery products similar to those offered by Complainant. Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant); 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 Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks).

Respondent registered the domain name for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website that competes with Complainant by offering similar industrial machinery products and services. Furthermore, products of Complainant’s competitors are advertised on Respondent’s website. Registration of a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding evidence of bad faith use and registration where Respondent and Complainant both operated in the highly regulated field of radio broadcasting and Respondent registered a domain name incorporating Complainant’s call letters); see also So. Exposure v. So. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that Respondent registered the domain name in question to disrupt the business of Complainant, a competitor of Respondent).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

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

Louisa E. Condon, Panelist

Dated:  May 24, 2004

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