The Complainant is Westinghouse Electric Corporation, incorporated in Delaware, United States of America.
The Respondent is Kathy Chang of Sunnyvale, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <westinghousesolar.com> is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2009. On October 30, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On November 2, 2009, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 November 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 26, 2009.
The Center appointed Miriam Sapiro as the sole panelist in this matter on December 16, 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, the Westinghouse Electric Corporation, is now known as CBS Corporation (see “www.cbscorporation.com/investors/public_debt/index.php”) and incorporated in Delaware. The Complainant's use of the WESTINGHOUSE mark dates back to 1886. The Complainant has registered many marks that incorporate WESTINGHOUSE with the U.S. Patent and Trademark Office. These include registration of the trademark WESTINGHOUSE for electric, solar powered and battery powered light bulbs and lighting fixtures (No. 2,538,110) (February 12, 2002). The Complainant is also the registered domain holder of <westinghouse.com>.
The Respondent, Ms. Kathy Chang, registered the disputed domain name on April 21, 2006, and used a private registration service as the contact information.
The Respondent did not reply to the Complainant's requests that it cease and desist all use of <westinghousesolar.com>.
The Center's courier was unable to deliver a hard copy of the Complaint to the Respondent based on the registrar-confirmed contact data included in the domain name registration.
5. Parties' Contentions
A. Complainant
The Complainant believes that the disputed domain name is confusingly similar to its WESTINGHOUSE trademark, and that the addition of the term “solar” only heightens the confusion. The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name as it is not a licensee, nor does it otherwise have its consent. Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present in order to prevail:
(i) the 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 domain name has been registered and is being used in bad faith.
Because the Respondent did not reply to the allegations in the Complaint, in accordance with paragraphs 5(e) and 14 of the Rules, the Panel will base its decision on the Complaint and draw such inferences from the Respondent's failure to reply as it considers appropriate. See, e.g., Plymouth State College v. Domains, Best Domains,
WIPO Case No. D2002-0939 (December 20, 2002).
A. Identical or Confusingly Similar
It is undisputed that the Complainant is the holder of many U.S. trademark registrations for the WESTINGHOUSE mark. These were registered before the Respondent registered the disputed domain name on April 21, 2006. This Panel agrees with the Complainant that the suffix “.com” does not resolve the confusion caused by the dominant portion of the second-level registration, which essentially is identical to the Complainant's registered trademark. In addition, adding the descriptive word “solar” does not ease the confusion. On the contrary, as noted above, the Complainant has a registration specifically for solar powered light bulbs and lighting fixtures. See, e.g., CBS Broadcasting Inc. v. James McKee a/k/a World in Motion a/k/a Colorado Broadcasting Services,
WIPO Case No. D2008-1562 (December 1, 2008) (holding that <cbstelevision.com> and <cbstelevision.net> are confusingly similar to the mark CBS). The disputed domain name <westinghousesolar.com> is therefore confusingly similar and essentially identical to Complainant's mark within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy describes three ways in which the Respondent may establish rights or legitimate interests in a disputed domain name, namely:
(i) before any notice of the dispute, [the Respondent's] 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) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [it has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] 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 Respondent has failed to provide evidence that it meets any of these criteria, and no evidence in the record suggests that it might. There is no indication that the Respondent used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services as a licensee or with other consent, or that it is known by the disputed domain name, or that it is making noncommercial use of the domain name. This Panel therefore finds no evidence that would support a finding that the Respondent has any rights to, or legitimate interests in, the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” shall constitute evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the Respondent] registered or [] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the [C]omplainant who is the owner of the trademark or service mark or to a competitor of that [C]omplainant, for valuable consideration in excess of [the Respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) [the Respondent] 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] web site or other on-line location, by creating a likelihood of confusion with the [C]omplainant's mark as to the source, sponsorship, affiliation, or endorsement of [the] web site or location or of a product or service on [the] web site or location.
The Complainant contends that the Respondent had notice that its selected domain name registration was confusingly similar to the WESTINGHOUSE mark. Further, the Respondent ignored the Complainant's repeated efforts to request that it cease and desist all use of the disputed domain name. The Respondent has continued to conceal its identity during this process.
The Complainant asserts that the Respondent's passive holding of the disputed domain, combined with the factors just mentioned – constructive knowledge of the WESTINGHOUSE mark, the failure to respond to cease and desist letters, and the use of a private registration service to shield contact information – taken together are evidence of the registration and use of a domain name in bad faith.
This case presents the question of what circumstances of inaction (i.e., passive holding) other than those identified in paragraph 4(b) of the Policy can constitute a domain name being registered and used in bad faith. As the panel in Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003 (February 18, 2000) noted, this question “cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the administrative panel must give close attention to all the circumstances of the Respondent's behaviour.” The Telstra panel found that passive holding amounted to bad faith because (i) the complainant's trademarks had a strong reputation and were widely known; (ii) the respondent provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name, (iii) the respondent took active steps to conceal its true identity; and (iv) the respondent failed to provide accurate contact data. The Telstra panel concluded that “taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the [r]espondent that would not be illegitimate . . . .” Accord, Alstom v. Itete Peru S.A.,
WIPO Case No. D2009-0877 (August 27, 2009).
In the case at hand, the Complainant's trademarks and strong reputation are widely known. The Respondent has provided no evidence of good faith to rebut the Complainant's contentions, or any response at all, either to the Complainant's efforts at contact or to the Complaint. The Respondent took steps to conceal its identity and failed to provide usable contact data. As paragraph 4(b) of the Policy states, the criteria it sets forth are “in particular but without limitation” (emphasis added).
This Panel therefore finds evidence in the present case of the registration and use of the domain name in bad faith under paragraph 4(b) of the Policy.
Accordingly, the Complainant has demonstrated that each of the elements of paragraph 4(a) of the Policy are satisfied.
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 name <westinghousesolar.com> be transferred to the Complainant.
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