DECISION

Brechbuhler Scales, Inc. v. Dynamic Scales c/o Victoria Herrmann

Claim Number:  FA0306000164564

PARTIES

Complainant is Brechbuhler Scales, Inc., Canton, OH (“Complainant”) represented by Karen D. Butera, of Buckingham, Doolittle & Burroughs, LLP.  Respondent is Dynamic Scales c/o Victoria Herrmann, Terre Haute, IN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <brechbuhlerscales.com>, <brechbuhlerscale.com>, <durlinescale.com>, <duralinescale.com>, <duralinescales.com>, <btekscale.com>, <btekscales.com>, <b-tekscale.com>, and <durlinescales.com>, registered with Enom, Inc.

PANEL

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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 19, 2003; the Forum received a hard copy of the Complaint on June 23, 2003.

On July 2, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain names <brechbuhlerscales.com>, <brechbuhlerscale.com>, <durlinescale.com>, <duralinescale.com>, <duralinescales.com>, <btekscale.com>, <btekscales.com>, <b-tekscale.com>, and <durlinescales.com> are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 July 3, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 23, 2003 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@brechbuhlerscales.com, postmaster@brechbuhlerscale.com, postmaster@durlinescale.com, postmaster@duralinescale.com, postmaster@duralinescales.com, postmaster@btekscale.com, postmaster@btekscales.com, postmaster@b-tekscale.com, and postmaster@durlinescales.com by e-mail.

On July 23, 2003, Respondent requested an extension in order to respond to the Complaint.  On July 24, 2003, Respondent was granted an extension to respond with a deadline of July 30, 2003 to submit a response.  Having received no substantive 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 August 5, 2003 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <brechbuhlerscales.com>, <brechbuhlerscale.com>, <durlinescale.com>, <duralinescale.com>, <duralinescales.com>, <btekscale.com>, <btekscales.com>, <b-tekscale.com>, and <durlinescales.com> domain names are confusingly similar to Complainant’s BRECHBUHLER, B-TEK, and DURLINE marks.

2. Respondent does not have any rights or legitimate interests in the <brechbuhlerscales.com>, <brechbuhlerscale.com>, <durlinescale.com>, <duralinescale.com>, <duralinescales.com>, <btekscale.com>, <btekscales.com>, <b-tekscale.com>, and <durlinescales.com> domain names.

3. Respondent registered and used the <brechbuhlerscales.com>, <brechbuhlerscale.com>, <durlinescale.com>, <duralinescale.com>, <duralinescales.com>, <btekscale.com>, <btekscales.com>, <b-tekscale.com>, and <durlinescales.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Brechbuhler, Inc., has been in business since 1929.  Since 1959, Complainant has used the BRECHBUHLER mark in conjunction with its business, which supplies scales and related accessories and services.  Complainant is known throughout the nation for its products and services.  Complainant holds the registration for the <brechbuhler.com> domain name and uses it in conjunction with its scale business.

Through Complainant’s wholly owned subsidiaries, Complainant has rights in the B-TEK and DURLINE marks.  Both the B-TEK and DURLINE marks are used in the scale industry.  Complainant’s subsidiary, B-TEK, Inc., registered the B-TEK mark with the U.S. Patent and Trademark Office on January 9, 2001 (Reg. No. 2,419,126).  Complainant acquired the subsidiary Durtek, Ltd on April 2, 2001.  Durtek, Ltd acquired Durline Scales and Manufacturing, Inc. on May 1, 2001.

Respondent registered the disputed domain names between April 11, 2003 and May 17, 2003.  The disputed domain names redirect Internet users to a competing commercial website, i.e., the site for Dynamic Scales.

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 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.

Identical and/or Confusingly Similar

Respondent did not provide the Panel with a Response in this proceeding.  Therefore, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (stating that in the absence of a Response a Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); 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).

Complainant asserts rights in the BRECHBUHLER mark because it has used the mark in commerce since 1959.  The evidence Complainant supplied to prove its rights in the mark was a print-off from Complainant’s website located at the <brechbuhler.com> domain name, which indicates that Complainant’s business was established in 1929.  Complainant has provided scant evidence of common law rights in the BRECHBUHLER mark.  However, due to the absence of contrary evidence, the Panel concludes that Complainant’s assertions are true, and therefore has established common law rights in the BRECHBUHLER mark through use of the mark in commerce since 1959.  See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy).

In addition, Complainant asserts rights in the DURLINE mark.  However, Complainant has provided scant evidence of rights in the mark.  Complainant has merely provided evidence that it wholly owns Durtek, Ltd, which in turn owns Durline Scales and Manufacturing.  Consequently, Complainant has merely provided evidence that Complainant owns a company known as Durline Scales and Manufacturing and that it markets its scale products with the trade name DURLINE.   However, due to the lack of contrary evidence, the Panel concludes that Complainant’s assertions are true, and therefore Complainant holds common law rights in the DURLINE mark. 

Furthermore, Complainant asserts that it has rights to the B-TEK mark because the mark was registered with the U.S. Patent and Trademark Office (“USPTO”) by its subsidiary B-TEK, Inc.  Registration of a mark with the USPTO is sufficient to establish rights in a mark; however, Complainant has provided scant evidence that B-TEK, Inc. is an actual subsidiary of Complainant.  Nevertheless, due to the absence of contradictory evidence, the Panel concludes that B-TEK, Inc. is Complainant’s subsidiary; therefore, Complainant has established rights in the B-TEK mark through its subsidiary’s registration of the mark.  See 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”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that 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).

Based on the discussion above, the Panel concludes that Complainant has rights in the BRECHBUHLER, R-TEK, and DURLINE marks. 

Respondent’s <brechbuhlerscales.com> and <brechbuhlerscale.com> domain names are confusingly similar to Complainant’s BRECHBUHLER mark because the disputed domain names fully incorporate the mark and merely add the word “scale(s)” to the mark.  The addition of the word “scale(s)” causes confusion with Complainant’s mark because the word describes the type of products Complainant markets.  Furthermore, confusion is likely becaue the disputed domain names redirect Internet users to a competing commercial website.  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Vivid Video, Inc. v. Tennaro a/k/a Vivid Revolution, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any distinctiveness resulting from Respondent’s addition of a generic word to Complainant’s mark in a domain name is less significant because Respondent and Complainant operate in the same industry).

Respondent’s <btekscale.com>, <btekscales.com>, and <b-tekscale.com> domain names are confusingly similar to Complainant’s B-TEK mark because the disputed domain names fully incorporate the mark and merely add the word “scale(s)” to the mark and in two instances omit the hyphen from the mark.  The addition of the word “scale(s)” causes confusion with Complainant’s mark because the word describes the type of products Complainant markets.  Furthermore, confusion is likely because the disputed domain names redirect Internet users to a competing commercial website.  Also, the omission of the hyphen from the Complainant’s mark is insufficient to avoid a finding of “confusingly similar” pursuant to Policy ¶ 4(a)(i).  See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); see also 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).

Respondent’s <durlinescale.com>, <duralinescale.com>, <duralinescales.com>, and <durlinescales.com> domain names are confusingly similar to Complainant’s DURLINE mark because the disputed domain names fully incorporate the mark and merely add the word “scale(s)” to the mark and two domain names add the letter “a” to the mark.  The addition of the word “scale(s)” causes confusion with Complainant’s mark because the word describes the type of products Complainant markets.  Furthermore, confusion is likely becaue the disputed domain names redirect Internet users to a competing commercial website.  Also, by adding the letter “a,” the disputed domain name has merely misspelled the DURLINE mark, and therefore is insufficient to avoid a finding of “confusingly similar” pursuant to Policy ¶ 4(a)(i).  See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Due to Respondent’s failure to contest the allegations in the Complaint, the Panel presumes that Respondent lacks rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality, Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Furthermore, Respondent’s disputed domain names redirect Internet users to a website that competes with Complainant.  Respondent’s use of the disputed domain names is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Yahoo!, Inc. v. Web Master a/k/a MedGo, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).

Also, Respondent is not affiliated with Complainant and is not authorized or licensed to register domain names that incorporate Complainant’s marks.  The WHOIS information for the disputed domain names lists Respondent, Dynamic Scales a/k/a Victoria Herrmann, as the registrant; however, it fails to establish Respondent as one commonly known as any of the disputed domain names.  Therefore, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent, Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

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

Registration and Use in Bad Faith

The Panel presumes that Respondent knew of Complainant’s rights in the BRECHBUHLER, B-TEK, and DURLINE marks because Respondent registered several domain names that fully incorporate these marks and the disputed domain names link to a website that competes with Complainant.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l, Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Also, Respondent’s registration and use of the disputed domain names constitutes bad faith pursuant to Policy ¶ 4(b)(iii) because Respondent’s confusingly similar domain names redirect Internet users to a website that competes with Complainant.  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Gen. Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site).

Furthermore, the Panel presumes that Respondent has attempted to capitalize on the goodwill related to Complainant’s marks by incorporating the marks within the disputed domain names.  Through this practice, Respondent has attempted to attract, for commercial gain, Complainant’s customers by creating a likelihood of confusion with Complainant’s marks and diverting them to the competing website.  This practice constitutes an act of bad faith under Policy ¶ 4(b)(iv).  See 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 State Fair 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).

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 relief shall be GRANTED.

Accordingly, it is Ordered that the <brechbuhlerscales.com>, <brechbuhlerscale.com>, <durlinescale.com>, <duralinescale.com>, <duralinescales.com>, <btekscale.com>, <btekscales.com>, <b-tekscale.com>, and <durlinescales.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  August 11, 2003

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