Complainant is Anton/Bauer, Inc., of Shelton, Connecticut, United States of America, represented by McCormick, Paulding & Huber LLP, United States of America.
Respondent is eBattery Inc., of California, United States of America.
Each is registered with GoDaddy.com, Inc. (“GoDaddy”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on June 30, 2008. On July 3, 2008, the Center transmitted by email to GoDaddy a request for registrar verification in connection with each of the domain names at issue. On July 3, 2008, GoDaddy transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant for each of the domain names, providing contact information, and confirming other details of the registrations.
In reply to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on July 24, 2008. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2008. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on August 22, 2008.
The Center appointed Debra J. Stanek as the sole panelist in this matter on September 2, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant owns United States of America (“United States”) federal trademark registrations for the marks set out below for batteries and related products:
ANTON BAUER COM PAC DIONIC GOLD MOUNT HYTRON PRO PAC TRIM PAC
The registrations date from the mid-1980s to 2004.
Respondent registered the disputed domain names in 2007. One of the domain names, <antonbauerbattery.com>, currently leads to a web page that offers to sell the disputed domain names (for a total price of $1,500.00), while the other domain names are not active.
5. Parties’ Contentions
A. Complainant
(1) Each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant is a well-known manufacturer of portable power systems for cameras and camcorders, including batteries and related accessories.
Complainant owns United States federal trademark registrations for the marks:1
ANTON BAUER COM PAC DIONIC GOLD MOUNT HYTRON TRIM PAC
The dates of first use of these marks range from as early as 1971 (for ANTON BAUER) to 1997 (for HYTRON).
In August 2007, Complainant learned that Respondent had registered and was using the following domain names:2
Each of the disputed domain names is virtually identical to Complainant’s corresponding mark because it “fully incorporate[s]” the mark adding the term “battery,” which describes the goods, and the “.com” top-level domain.
(2) Respondent has no rights or legitimate interests in respect of any of the domain names.
Currently, the <antonbauerbattery.com> domain name leads to a web page that offers to sell the disputed domain names for $1,500.00.
Prior to displaying that offer, Respondent used the pages to divert visitors to Respondent’s “www.batteryrefill.com” web site. That site offers battery refill services, including for Complainant’s brand of batteries.
There is no evidence that Respondent has ever been known by the domain names identified in the Complaint. There are no federal trademark applications currently pending for the “Marks or variations thereof for related goods or services.”
Complainant has not authorized Respondent to use its trademarks and has advised Respondent to cease such use.
(3) Each of the disputed domain names was registered and is being used in bad faith.
Respondent is currently using the disputed domain names to attempt to obtain money from Complainant for the transfer of the names. Prior to that request, it used the domain names to redirect visitors to Respondent’s “www.batteryrefill.com” web site by creating a likelihood of confusion with Complainant’s marks as to source, sponsorship, affiliation, or endorsement for commercial gain.
At Respondent’s “www.batteryrefill.com” site, visitors were offered “cheap, refilled Anton/Bauer batteries as an alternative to buying a new battery directly from Complainant.”
After Complainant’s August 2007 cease and desist letter, Respondent removed the links to its “www.batteryrefill.com” web site and offered to sell the domain names, through advertising linked to the domain names, for $700 per name. The parties subsequently agreed that Complainant would purchase the domain names for $300, but Respondent subsequently refused to sell them unless Complainant paid $1,500. Respondent currently offers the names to the general public for that amount.
B. Respondent
The Respondent did not file a Response or otherwise reply to the Complainant’s contentions.
6. Discussion and Findings
In order to prevail, Complainant must prove, as to each of the disputed domain names, that:
(i) It is identical or confusingly similar to Complainant’s mark.
(ii) Respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing each of the required elements. The Panel may, however, draw such inferences from the default as it considers appropriate. See Rules, paragraph 14(b).
A. Identical or Confusingly Similar
Complainant has established its rights in the following marks by virtue of the evidence of its United States federal trademark registrations for those marks:
ANTON BAUER COM PAC DIONIC GOLD MOUNT HYTRON PRO PAC3 TRIM PAC
Thus, with the exception of the domain name <antonbattery.com>, which is discussed below, each of the disputed domain names incorporates one of Complainant’s marks in its entirety4 followed by the word “battery.” Here, the Panel finds that, with respect to each of those domain names (listed below), the addition of that generic term after Complainant’s mark in does not distinguish or differentiate the domain name from Complainant’s mark – instead, it reinforces the trademark function of Complainant’s mark as part of the domain name:
The above finding does not apply to one of the domain names at issue, however. With respect to <antonbattery.com>, Complainant asserts that the domain name is “virtually identical to and confusingly similar” to its ANTON BAUER mark because it “fully incorporate[s]” the mark, and differs only in “the addition of the term ‘battery’” and the “.com” domain. This is obviously not accurate; <antonbattery.com> does not “fully incorporate” the ANTON BAUER mark and is therefore not identical to it.
Whether the domain name is confusingly similar to Complainant’s mark presents a closer question. The similarity is limited to the first of the two components of the ANTON BAUER mark, “Anton,” which is a personal name. Absence of the term “Bauer” does result in a difference in appearance, pronunciation, and meaning. Complainant makes no argument whatsoever on this point, such as whether or not the term “Anton”, standing alone or in combination with the term “battery,” serves a trademark function, is the dominant portion of its mark, etc.
Accordingly, Respondent might have been able to advance compelling arguments that Complainant’s trademark rights are limited to the combination of “Anton” with “Bauer” and do not extend to the term “Anton” alone. Respondent might also have argued that the differences in meaning, appearance, and pronunciation, sufficiently distinguish the domain name from Complainant’s mark. By virtue of its default, however, Respondent has not advanced such argument.
The Panel finds, as to the <antonbattery.com> domain name that the combination of the first half of Complainant’s mark with the term “battery” results in a domain name that is confusingly similar to Complainant’s ANTON BAUER mark.
Thus, the Panel finds that Complainant has established this element as to each of the disputed domain names.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of each domain name by making a primafacie showing that respondent lacks corresponding rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in Paragraph 4(c)(i)-(iii) of the Policy as to each of the domain names at issue.
It does not appear that Respondent engaged in – or could under the circumstances have engaged in – any legitimate use of any of the domain names. There is no reason to believe, from the WHOIS record or otherwise, that Respondent is or could be known by any of the domain names. It does not appear that Respondent is making a legitimate noncommercial or fair use of any domain name.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in any of the disputed domain names.
C. Registered and Used in Bad Faith
Complainant must establish that each of the disputed domain names was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)-(iv):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii).
(3) Registering the domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).
Complainant’s rights in each of its marks clearly predate Respondent’s registration and use of the disputed domain names. Complainant’s rights in those marks appear to be well-established and well-known. Based on the printouts of pages from Respondent’s “www.batteryrefill.com” website, Respondent was aware of and intended to refer to Complainant’s marks and corresponding products. Further, the Panel has already concluded that Respondent has no rights or legitimate interests in respect of the domain names and that the earlier use of the domain names was not in connection with a bonafide offering of goods or services.
Under these circumstances, combined with Respondent’s offer to sell the domain names and the adverse inferences drawn by Respondent’s failure to file a Response, the Panel finds that Complainant has established that Respondent has registered and is using the domain names in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names:
1 As discussed below, inexplicably, the Complaint does not reference Complainant’s United States federal trademark registration for the mark PRO PAC or include it in its chart of “Anton/Bauer Trademark[s].” See footnote 3.
2 As discussed below, inexplicably, the Complaint does not discuss in detail Respondent’s <propacbattery.com> domain name or include it in its chart of “Infringing Name[s].” See Id
3 The Complaint does not reference Complainant’s PRO PAC mark, which is not included in its chart of trademark registrations, in Complaint Annex B, which contains copies of its other trademark registrations, or in its chart comparing Complainant’s marks to the disputed domain names. However, a copy of Complainant’s federal trademark registration for the mark PRO PAC was appended to another of Complainant’s Annexes (Annex E), an August 2007 cease and desist letter. On that basis, the Panel finds that Complainant established its rights in the PRO PAC mark.
4 Absence of a space between terms and presence of the top-level domain are irrelevant for these purposes.
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