WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Oreck Corporation v. John Doe / Whois Privacy Protection Services

Case No. D2009-0505

1. The Parties

The Complainant is Oreck Corporation, Nashville, United States of America, represented by Winston & Strawn LLP, Los Angeles, United States of America.

The Respondent is John Doe, Netherlands and Whois Privacy Protection Services, Ravi Singh, India.

2. The Domain Name and Registrar

The disputed domain name <oreckfreshair.com> is registered with Lead Networks Domains Pvt. Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2009. On April 20, 2009, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On April 23, 2009, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 24, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 30, 2009. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “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 May 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 27, 2009.

The Panel has been provided with evidence of communications between the Respondent and the Complainant regarding a possible settlement. However the Respondent did not file any response with the Center regarding the proceedings or taken any steps to do so. Instead the Respondent attempted to agree with the Complainant to suspend the proceeding in order for the disputed domain name to be transferred. The Complainant decided not to agree to suspension of the proceedings but to advance with the proceedings, leading to the Respondent's default.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on June 5, 2009. 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

The Complainant, Oreck Corporation was incorporated in Delaware in 1975 and since then has been known by the name “Oreck”. The Complainant is a recognized manufacturer of vacuum cleaners and other home cleaning products. The products manufactured by the Complainant are targeted at home consumers and are sold through retail stores throughout the world.

The Complainant has acquired substantial goodwill in the ORECK trademark first used since at least 1964 (U.S.P.T.O. Serial No. 73599366) and is also subject of several other U.S.P.T.O. Serial Numbers.

The Complainant also owns the <oreck.com> domain name, which is used as its main website for providing information to its customers.

The Respondent, John Doe of the Netherlands and Whois Privacy Protection Services, Ravi Singh of India has registered the disputed domain name <oreckfreshair.com> on October 8, 2005. The disputed domain name <oreckfreshair.com> is currently used by the Respondent for providing links to websites that are related to the ORECK trademark or other sites that sell vacuum cleaners or vacuum cleaner components as well as other home cleaning products.

5. Parties' Contentions

A. Complainant

(a) The disputed domain name <oreckfreshair.com> is confusingly similar to and incorporates the marks owned by the Complainant:

- The Complainant is commonly known as “Oreck” and the Complainant owns a broad range of trademarks, which incorporate the mark ORECK. This is reflected in the <oreck.com> domain name.

- The disputed domain name <oreckfreshair.com> incorporates the “Oreck” trademark, which is central to the Complainant's trademarks.

(b) The Respondent has no rights or legitimate interests in the domain name:

- The Complainant is only aware of one use of the disputed domain name, specifically that of unlawfully and illegitimately profiteering form the “Oreck” name by taking advantage of the Complainant's name, trademarks and goodwill associated with them.

- The Respondent is paid for each click on the links that are provided on the disputed domain name.

- The Respondent is taking advantage of the Complainant's marks and associated goodwill for the Respondent's own financial benefit.

- The Complainant's counsel sent a letter to the Respondent demanding immediate cessation of the infringing activity and transfer of the disputed domain name to the Complainant. The Complainant's counsel received no response from the Respondent.

- The Respondent has made no effort to commence use of the disputed domain name in connection with bona fide offering of goods and services. Misleadingly diverting customers with the intent of commercial gain is not evidence of bona fide use.

- The Respondent is not commonly known by the disputed domain name.

- The Respondent is not making legitimate non-commercial or fair use of the disputed domain name.

(c) The Respondent registered and is using the domain name in bad faith:

- Search conducted through Internet Domain Name Registrar “www.godaddy.com”: on April 9, 2009 demonstrates that the Respondent registered and maintains the disputed domain name.

- On the set of facts, the Respondent registered the disputed domain name for the purpose of attracting Internet users to the Respondent's website for commercial gain by creating likelihood of confusion with the Complainant's trademarks.

- Bad faith can be found when the Respondent is clearly aware of the Complainant and it is clear that the aim of registration of the disputed domain name was to block the Complainant from obtaining the domain name or in order to take advantage of the confusion between the domain name and the Complainant's potential rights.

- The Respondent is currently using the disputed domain name for own financial benefit.

- Respondent's use of the Complainant's protected marks for own financial benefit indicates the presence of bad faith in registering and using the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules.

However the Respondent failed to file a Response to the Complaint and has not sought to answer the Complainant's assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.

The Panel finds the communication regarding a possible settlement between the Respondent and the Complainant immaterial to the Complaint. Furthermore it highlights the fact that the Respondent was aware of these proceedings but chose not to submit a response to the assertions of the Complainant.

The Respondent's default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent's failure to reply to the Complainant's assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel's decision is based upon the Complainant's assertions and evidence and inferences drawn from the Respondent's failure to reply.

A. Identical or Confusingly Similar

The Complainant has registered the trademark ORECK in the United States. The Complainant submits that the disputed domain name <oreckfreshair.com> is confusingly similar to the trademark ORECK as the domain name incorporates the whole of the trademark, this being a registered trademark.

While accepting the Complainant's assertion of this being confusingly similar the Panel has also noted that in Annex C to the Complaint, which lists trademark registrations of the Complainant, there is in fact a registration for a trademark ORECK FRESH AIR (U.S.P.T.O. Serial No. 75394521; Registration No. 2255054). This trademark is in fact identical to the disputed domain name <oreckfreshair.com>.

The Panel finds that the disputed domain name <oreckfreshair.com> is in fact identical to the Complainant's trademark ORECK FRESH AIR.

Furthermore, the Panel finds that the disputed domain name may be directly associated in the minds of the consumers with the Complainant's trademarks.

The Panel refers to a number of past WIPO UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd,WIPO Case No. D2000-0802).

The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant's assertions, it is up to the Panel to consider whether the Respondent's use of the disputed domain name demonstrates rights or legitimate interests in the domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent's rights or legitimate interests in a domain name:

(i) Respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant's marks.

A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy. By not responding to the Complainant's contentions, the Respondent in this proceeding has never attempted to show its rights and legitimate interests.

Firstly, there is no evidence that before any notice of a dispute with the Complainant, the Respondent was using the disputed domain name for a legitimate offer of goods and services. The Respondent does not use the domain name in connection with the bona fide offering of goods and services, for example, according to the standards set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

According to the documents submitted by the Complainant and a subsequent verification by the Panel, the home page of the website under the disputed domain name <oreckfreshair.com> displays a list of websites related to vacuum cleaners, vacuum cleaner parts and other home cleaning products (Annex E to the Complaint). The website itself does not offer any goods or services; it merely provides links to other websites.

The Panel finds no evidence that the Respondent was using or is using the disputed domain name for a legitimate offering of goods and services.

Secondly, as for the Respondent's proof under paragraph 4(c)(ii) of the Policy there is no evidence that the Respondent has been commonly known by the disputed domain name.

The Panel recalls that the Respondent registered the disputed domain name on October 8, 2005 (Annex A to the Complaint). The Complainant asserts that the trademark ORECK has been in use since at least 1964.

The Panel believes that the Respondent knew about the Complainant's trademark at the time of registration of the disputed domain name.

Afterwards, regarding these facts, it is the Panel's view that the Respondent probably registered the disputed domain name with awareness of the Complainant's products and trademarks as well as goodwill associated with them.

Thus, the Panel finds that the Respondent's use of the disputed domain name does not constitute a bona fide offering of services under paragraph 4(c)(i) the Policy.

The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using 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, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name was registered and used primarily for the purpose of confusing the public and diverting public attention from the Complainant's official website to the Respondent's website for potential commercial gain.

According to the evidence submitted by the Complainant, the home page under the disputed domain name <oreckfreshair.com> displays links to websites that offer products and services in relation to vacuum cleaners, vacuum cleaner parts and other home cleaning products (Annex E to the Complaint).

The Panel finds that the Respondent's website could have attracted potential attention from the public because of its probable association with the Complainant's products and services. At the same time it has created a risk of confusion with the Complainant's products and trademarks as to the source, sponsorship, affiliation or endorsement of its website.

The Panel's independent verification has shown that the current use of the Respondent's website at the domain name <oreckfreshair.com> is still the same. It is therefore clear that the Respondent continues using the disputed domain name.

The Panel finds that the Complainant presented circumstantial evidence that the Respondent was and is in violation of the provisions of paragraph 4(b)(iv) of the Policy.

The Panel holds that the Respondent “has registered the disputed domain name in bad faith”. The Respondent does not conduct any legitimate business activity using the disputed domain name. The Respondent must have known the Complainant's products and should have been aware of the trademarks of the Complainant. These findings, together with the finding that the Respondent has no rights or legitimate interests in the domain name, lead the Panel to conclude that the disputed domain name has been registered by the Respondent in bad faith.

The fact that the Respondent's use of the disputed domain name has created a likelihood of confusion with the Complainant's products and trademarks under paragraph 4(b)(iv) of the Policy indicates that the disputed domain name has been used and is still being used in bad faith.

The Panel finds the Complainant has shown that the Respondent registered and used the disputed domain name in bad faith.

7. Decision

The Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Policy. In accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <oreckfreshair.com> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist

Dated: June 19, 2009