DECISION

Thomas & Betts Corporation v. Emergency Lite

Claim Number: FA0204000109039

PARTIES

Complainant is Thomas & Betts Corporation, Memphis, TN (“Complainant”) represented by Andrew Barger.  Respondent is Emergency Lite, Golden Valley, MN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <emergilite.com>, registered with Network Solutions.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 2, 2002; the Forum received a hard copy of the Complaint on April 5, 2002.

On April 8, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <emergilite.com> is registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 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 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 30, 2002 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@emergilite.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 13, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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

1. Other than omitting a hyphen, the disputed domain name <emergilite.com> is identical to Complainant’s EMERGI-LITE mark.

2. Respondent is not commonly known by <emergilite.com>.  Furthermore, Respondent uses the disputed domain name to promote competing products.  Therefore, Respondent does not have a legitimate interest in <emergilite.com>.

3. Respondent has regsitered a domain name that is nearly identical to Complainant’s mark and uses it to promote a competing product.  Respondent has also agreed to transfer the disputed domain name to Complainant, yet has not followed through on its promise.  Thus, Respondent has regsitered and used <emergilite.com> in bad faith.

B. Respondent

No Response was submitted.

FINDINGS

Complainant registered the EMERGI-LITE mark with the United States Patent and Trademark Offices on May 26, 1981, Reg. No. 1,155,476.  Complainant uses the mark in connection with: battery powered emergency lighting equipment comprising light fixtures or safety signs, batteries and circuit means, sold as a unit, in International Class 11. 

Respondent registered the disputed domain name on March 2, 1998.  Respondent uses the disputed domain name to promotes goods and services that compete with Complainant’s business.  In a letter sent to Complainant, Respondent agreed to transfer the disputed domain name to Complainant.  However, despite being sent an NSI transfer agreement numerous times, Respondent has refused to sign it.

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 the 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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 its rights to the EMERGI-LITE mark through registration with the USPTO and subsequent continuous use.

Because omitting a hyphen in the disputed domain name does not create a distinctive mark capable to over come confusing similarity, the disputed domain name <emergilite.com> and Complainant’s EMERGI-LITE mark are confusingly similar.  See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738  (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to Complainant's mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the domain name, <tippex.com> is confusingly similar to Complainant’s mark, TIPP-EX, and that use of a hyphen does not negate likelihood of confusion).

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

Rights or Legitimate Interests

Respondent has not filed a Response in this matter.  Therefore, the Panel presumes that Respondent has no rights or legitimate interests in any of the disputed domain names.  See 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).  Because a Response was not filed, the Panel presumes that all allegations in the Complaint are true.  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”).

According to the evidence presented, Respondent uses a confusingly similar domain name in connection with a website that offers competing services.  Such activity is not considered a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i).  See Chip Merchant, 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 Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

According to the Complaint, Respondent is known as “Emergency Lite Service Center,” and there is no evidence presented that Respondent has been commonly known as <emergilite.com>.  Therefore, Respondent has no legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name). 

Respondent has used a confusingly similar domain name to confuse Internet users of sponsorship of a commercial website in connection with the disputed domain name.  This behavior by Respondent is not considered a legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D.Mass 2002) (finding that, because the Respondent's sole purpose in selecting the domain names was to cause confusion with the Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

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

Registration and Use in Bad Faith

Respondent has sent a letter to Complainant agreeing to transfer the disputed domain name to Complainant.  Although this transfer has not occurred, the letter allows an inference that Respondent has registered and used the disputed domain name in bad faith.  See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s registration and use of the domain name at issue coupled with its expressed willingness to transfer the name amply satisfies the bad faith requirements set forth in ICANN Policy); see also Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding Respondent’s failure to address Complainant’s allegations coupled with its willingness to transfer the names is evidence of bad faith registration and use).

Respondent has registered a confusingly similar domain name that is connected with a website that offers goods which compete with Complainant’s goods.  This activity by Respondent is considered registering the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).

Finally, by using a confusingly similar domain to promote competing products, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s EMERGI-LITE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.  Therefore, Respondent has used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a competitor of Complainant); see also 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).

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

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

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

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY  (Ret.)

Dated: May 15, 2002

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