DECISION

Fluid Tech Group Inc. v. Penn Valley Pump Co., Inc.

Claim Number:  FA0307000168842

PARTIES

Complainant is Fluid Tech Group Inc., Gillespie, IL (“Complainant”) represented by Nelson D. Nolte. Respondent is Penn Valley Pump Co., Inc., Warrington, PA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <diadiskpump.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 14, 2003; the Forum received a hard copy of the Complaint on July 14, 2003.

On July 15, 2003, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain name <diadiskpump.com> is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 7, 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@diadiskpump.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 August 18, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 makes the following assertions:

1. Respondent’s <diadiskpump.com> domain name is confusingly similar to Complainant’s DIADISK mark.

2. Respondent does not have any rights or legitimate interests in the <diadiskpump.com> domain name.

3. Respondent registered and used the <diadiskpump.com> domain name in bad faith.

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

FINDINGS

Complainant, Fluid Tech Group Inc., first began using the DIADISK mark on March 5, 2001, in connection with the sale of pumps. Since its first use of the DIASISK mark, Complainant has attended several trade shows which exposed Respondent to its use of the DIADISK mark. Complainant, as a seller of its DIADISK branded pumps, has also competed for the same jobs as Respondent on numerous occasions. Complainant filed for a trademark registration for the DIADISK mark on November 25, 2002 (U.S. Ser. No. 78/188,693).

Respondent, Penn Valley Pump Co., Inc., registered the <diadiskpump.com> domain name on February 28, 2003, and is not licensed or authorized to use Complainant’s DIADISK mark for any purpose. Respondent has posted no original content at the disputed domain name since its registration, and has instead permitted a temporary “parking page” to be displayed. Both parties are currently invovled in litigation regarding money owed to one another, litigation that commenced prior to Respondent’s registration of the disputed domain name.

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

Complainant’s uncontested evidence establishes its rights in the DIADISK mark through proof of secondary meaning associated with the mark due to use of the mark in commerce. See 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); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications).

Respondent’s <diadiskpump.com> domain name is confusingly similar to Complainant’s DIADISK mark. The disputed domain name incorporates the distinctive DIADISK mark with the inclusion of the word “pump.” As the word “pump” in this context describes the goods that Complainant offers under its DIADISK mark, the inclusion of this word in the domain name does not dispell the confusing similarity surrounding Respondent’s incorporation of Complainant’s DIADISK mark. See Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

Accordingly, the Panel finds that the <diadiskpump.com> domain name is confusingly similar to Complainant’s DIADISK mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

In light of Respondent’s failure to respond to the Complaint, the Panel chooses to view the allegations and evidence within the Complaint in a light favorable to Complainant. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

Respondent has not used the disputed domain name for over five months, and has instead chosen to leave a temporary “parking page” hosted at the domain name. While this does not automatically equate to Respondent having no rights or legitimate interests in the disputed domain name, Respondent has not come forward with evidence that it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Furthermore, Respondent is a direct competitor of Complainant, and Complainant’s DIADISK mark is hardly generic. For these reasons, the Panel infers that Respondent deliberately registered a domain name that appropriated Complainant’s mark, and Respondent’s non-use of such a domain name cannot be considered to vest rights or legitimate interests in Respondent. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <diadiskpump.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the <diadiskpump.com> domain name in bad faith. Respondent, as a competitor of Complainant, registered a domain name that completely incorporates the distinctive DIADISK mark. Furthemore, Respondent registered the disputed domain name after court proceedings between it and Complainant had begun. This is evidence that Respondent actually knew of Complainant’s rights in the DIADISK mark when it chose to registered the disputed domain name, evidence that the domain name was registered in bad faith. Under circumstances such as these, Respondent’s passive holding of a domain name that so closely mirrors Complainant’s mark amounts to bad faith use of the domain name, which fulfills the second prong of bad faith analysis under Policy ¶ 4(a)(iii). See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

The Panel thus finds that Respondent registered and used the <diadiskpump.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

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

Judge Harold Kalina (Ret.), Panelist

Dated:  September 2, 2003

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