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Generic Top Level Domain Name (gTLD) Decisions |
Honeywell International Inc. v. Domain
Deluxe
Claim
Number: FA0405000269166
Complainant is Honeywell International Inc. (“Complainant”),
represented by Peter S. Sloane, of Ostrolenk, Faber, Gerb & Soffen, LLP, 1180 Avenue of the Americas, New York, NY 10036. Respondent is Domain Deluxe (“Respondent”), General Post Office Box 7628,
Central, Hong Kong.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <honyewell.com> and <homeywell.com>,
registered with The Registry At Info Avenue d/b/a IA Registry and
Enom, respectively.
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.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 7, 2004; the Forum
received a hard copy of the Complaint
on May 10, 2004.
On
May 7, 2004, The Registry At Info Avenue d/b/a IA Registry confirmed by e-mail
to the Forum that the domain name <honyewell.com> is registered
with The Registry At Info Avenue d/b/a IA Registry and that Respondent is the
current registrant of the name. The Registry
At Info Avenue d/b/a IA Registry has
verified that Respondent is bound by the The Registry At Info Avenue d/b/a IA
Registry 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 7, 2004, Enom confirmed by e-mail to the Forum that the domain name <homeywell.com>
is registered with Enom and that Respondent is the current registrant of the
names. Enom has verified that Respondent is bound by
the Enom 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 13, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
June 2, 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@honyewell.com and postmaster@homeywell.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
June 15, 2004, 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <honyewell.com> and
<homeywell.com> domain names are confusingly similar to
Complainant’s HONEYWELL mark.
2. Respondent does not have any rights or
legitimate interests in the <honyewell.com> and <homeywell.com>
domain names.
3. Respondent registered and used the <honyewell.com>
and <homeywell.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
leading manufacturer of aerospace products and services, control technologies
for buildings, homes and industry,
automotive products, power generation
systems, specialty chemicals, fibers, plastics and advanced materials. Over the past 90 years, Complainant has used
the name and mark HONEYWELL to identify its goods and services. In this period of time, Complainant
registered its HONEYWELL mark with governments throughout the world, including
the United States
Patent and Trademark Office (“USPTO”), such as registration
numbers 520,350 (issued Jan. 31, 1950 for thermostatic regulating and
controlling switches), 810,725 (issued 810,725 for a variety of goods including
mixing valves, manually operated electric switches,
thermostatic regulating and
controlling switches, and pilot burners), and 929,818 (issued Feb. 22, 1972 for
“training and instruction
of others in the servicing and maintenance of
controlling, indicating, measuring, security, switching, data processing,
aerospace,
and photographic equipment”).
Complainant
operates its online activities at the domain names <honeywell.com>,
<honeywell.com.au>, <honeywell.com/china>,
and
<honeywell.com/uk>.
Respondent
registered the disputed domain names <honyewell.com> and <homeywell.com>
on October 2, 2003 and June 30, 2003, respectively. Respondent uses the domain names to host
nearly identical websites that feature links to a variety of third party
businesses, as well
as advertisements for businesses such as “Cheap Tickets,”
“Verizon,” and “T-Mobile.”
The website
attached to the <honyewell.com> domain name contains the following
statement at the top of the page: “This domain is for sale at Domain
Deluxe.” Complainant has provided a
printout of Respondent’s website at the domain name <domaindeluxe.com>
and has included a request
for an offer for the purchase of the domain name <honyewell.com>. Specifically, the language from Respondent’s
website states:
If
you wish to submit an offer for honyewell.com, you must first register
for a free DomainDeluxe.com account.
You need an account to submit offers. The current selling prices for
most of our domain names range from US$1,500 to US$10,000.
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.
Complainant’s
numerous registrations for its HONEYWELL mark throughout the world and
specifically with the USPTO establish Complainant’s
rights in the HONEYWELL
mark under the Policy. 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 domain name <honyewell.com>
is confusingly similar to Complainant’s HONEYWELL mark because Respondent
has merely transposed the letters “e” and “y” in Complainant’s
mark to form an
incoherent word, specifically “honyewell.”
The transposition of two letters in Complainant’s mark does not
significantly differentiate Respondent’s domain name from Complainant’s
mark
under Policy ¶ 4(a)(i). See Google Inc.
v. Jon G., FA 106084 (Nat. Arb. Forum
Apr. 26, 2002) (finding <googel.com> to be confusingly similar to
Complainant’s GOOGLE mark and
noting that “[t]he transposition of two letters
does not create a distinct mark capable of overcoming a claim of confusing
similarity,
as the result reflects a very probable typographical error”); see also Pier 1
Imp., Inc. v. Success Work,
D2001-0419 (WIPO May 16, 2001) finding that the domain name <peir1.com>
is confusingly similar to Complainant's PIER 1 mark;
see also Geocities
v. Geociites.com, D2000-0326 (WIPO June 19, 2000) finding that the domain
name <geociites.com> is confusingly similar to Complainant’s GEOCITIES
mark.
The domain name <homeywell.com>
is confusingly similar to Complainant’s HONEYWELL mark because Respondent
has merely exchanged the letter “n” in Complainant’s mark
with the letter “m,”
the effect of which is to form another incoherent word, specifically
“homeywell.” Merely changing a single
letter in a third party’s mark to another letter is also insufficient under the
Policy to overcome the confusing
similarity inherent in the adoption of nearly
the exact mark of the third party. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001)
finding the domain names <tdwatergouse.com> virtually identical to
Complainant’s TD WATERHOUSE
name and mark; see also Belkin Components v. Gallant, FA 97075 (Nat.
Arb. Forum May 29, 2001) finding the domain name <belken.com> confusingly similar to Complainant's BELKIN
mark because the name merely exchanged the letter “i” in Complainant's
mark
with the letter “e”.
Therefore,
Complainant has established that the disputed domain names <honyewell.com>
and <homeywell.com> are both confusingly similar to
Complainant’s HONEYWELL mark under Policy ¶ 4(a)(i).
The failure of
Respondent to respond to the Complaint functions both as an implicit admission
that Respondent lacks rights to and
legitimate interests in the domain names,
as well as a presumption that Complainant’s reasonable allegations are true. See 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; see also Vert.
Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095 (Nat. Arb.
Forum July 31, 2000) holding that Respondent’s failure to respond allows all
reasonable inferences of fact in
the allegations of Complainant to be deemed
true; see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) finding that failing to respond
allows a presumption that Complainant's allegations are true unless
clearly
contradicted by the evidence.
The only
evidence in the record that relates to the Panel’s determination of whether
Respondent is commonly known by the disputed
domain names is the WHOIS
registration information for the respective domain names. However, the WHOIS information for both
domain names lists the domain name registrant as Domain Deluxe, not “honyewell”
or “homeywell.” Therefore, the Panel
finds that the evidence fails to indicate that Respondent is commonly known by
the disputed domain names pursuant
to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
finding that the WHOIS information, and its failure to imply that Respondent is
commonly
known by the disputed domain name, is a factor in determining that
Policy ¶ 4(c)(ii) does not apply; see
also Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat.
Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and
the fact that Respondent’s WHOIS information reveals its name
to be ‘Bruce
Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of
the disputed domain names prior to their
registration, and concludes that
Policy ¶ 4(c)(ii) does not apply to Respondent.”); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) relying
on the WHOIS information in stating, “[g]iven the WHOIS contact information for
the disputed domain, one can infer that Respondent,
Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”; see also G.D.
Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2002) suggesting that there is a correlative association between the
fame of a complainant’s mark and the necessary strength of the evidence
that a
respondent must exhibit to prove it is commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii).
In the case of the domain
name <honyewell.com>, Respondent is attempting to sell its
rights to the domain name registration, as evidenced by its own statement
posted on the attached
website.
Likewise, by its own online statement, Respondent is actively seeking to
dispense of its rights in the disputed domain name for a
value between $1,500
and $10,000. Past panels have found
that the willingness of a respondent to dispense of its rights in a domain name
registration does not evidence
a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA
154098 (Nat. Arb. Forum May 27, 2003) holding that under the circumstances,
Respondent’s apparent willingness to dispose of its
rights in the disputed domain
name suggested that it lacked rights or legitimate interests in the domain
name; 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.
Nevertheless,
both disputed domain names are confusingly similar to Complainant’s mark and
are used to host virtually identical websites
that feature advertisements and
links to unrelated third-party businesses.
Such use has consistently and frequently been found not to be a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Tencent Communications
Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) finding that use of
Complainant’s mark “as a portal to suck surfers into a site sponsored
by
Respondent hardly seems legitimate”; see
also Bank of Am. Corp. v. Northwest Free Community
Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's
benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii).”).
Therefore, Complainant has
established Policy ¶ 4(a)(ii).
As previously
stated, Respondent has manifested its intent to sell the <honyewell.com>
domain name registration for a price well in excess of any out-of-pocket
expenses it may have incurred in relation to the domain name. Given the long-standing use of the HONEYWELL
mark and the fame associated with the mark in the public’s mind, it is more
likely than
not that Respondent’s future sale of the domain name registration
was aimed at the deep pockets of Complainant’s business. Without the benefit of a response, the Panel
finds that the circumstances sufficiently indicate that Respondent acquired the
domain
name primarily to sell the registration of the domain name to
Complainant for a value in excess of its out-of-pocket expenses directly
related to the domain name pursuant to Policy ¶ 4(b)(i). See
Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) finding
that “general offers to sell the domain name, even if no certain price is
demanded,
are evidence of bad faith”; see also Neiman Marcus Group, Inc. v. Achievement Tec,
Inc., FA 192316 (Nat. Arb. Forum
Oct. 15, 2003) finding respondent’s offer to sell the domain name for $2000
sufficient to find that respondent
“acquired
the disputed domain name primarily for the purpose of selling the domain name
registration to Complainant for valuable consideration
in excess of
Respondent's out-of-pocket costs, which is evidence of bad faith registration
and use under Policy ¶ 4(b)(i)”.
Moreover,
both disputed domain names are used to direct Internet users to advertisements
and third-party businesses, which is evidence
of Respondent’s commercial
motivations in registering and using the domain names. Bad faith is established under Policy ¶
4(b)(iv) if a respondent uses a domain name intentionally in an attempt to
attract Internet
users to its website for commercial gain by creating a
likelihood of confusion with a complainant’s mark. The fact that Respondent registered domain names that are
confusingly similar to Complainant’s HONEYWELL mark and merely contain
incoherent
words evidences Respondent’s bad faith registration and use pursuant
to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website;
see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov.
22, 2002) finding that, if Respondent profits from its diversionary use of
Complainant's mark when
the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv); see also Philip Morris Inc. v. r9.net,
D2003-0004 (WIPO Feb. 28, 2003) finding that Respondent’s registration of an
infringing domain name to redirect Internet users to
banner advertisements
constituted bad faith use of the domain name.
Complainant
has established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <honyewell.com> and <homeywell.com>
domain names be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
June 29, 2004
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