DECISION

Republic Sheet Metal and Manufacturing Co. Inc. v. Velocity Industries c/o Eamon McDonald

Claim Number: FA0408000314315

PARTIES

Complainant is Republic Sheet Metal and Manufacturing Co. Inc. (“Complainant”), represented by Heather C. Brunelli of Thompson & Knight, LLP, 1700 Pacific Avenue, Suite 3300, Dallas, Texas 75201.  Respondent is Velocity Industries c/o Eamon McDonald (“Respondent”), 43153 Business Park Drive, Temecula, California 92590.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <republicsales.us> and <republicblowers.us>, registered with Go Daddy Software, 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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 18, 2004; the Forum received a hard copy of the Complaint on August 19, 2004.

On August 19, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <republicsales.us> and <republicblowers.us> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

On August 23, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 13, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

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 September 22, 2004, 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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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. The <republicsales.us> and <republicblowers.us> domain names registered by Respondent are confusingly similar to Complainant’s REPUBLIC marks.

2. Respondent has no rights to or legitimate interests in the <republicsales.us> and <republicblowers.us> domain names.

3. Respondent registered and used the <republicsales.us> and <republicblowers.us> domain names in bad faith.

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

FINDINGS

Complainant, Republic Sheet Metal and Manufacturing Co. Inc., is in the metal fabrication business and provides product design, layout, fabrication, installation and plant maintenance.  Additionally, Complainant is a distributor of industrial equipment such as blowers, filters and vacuum pumps.

Complainant has done business under the REPUBLIC SALES & MANUFACTURING mark since 1962.  Complainant discovered a mechanical design for centrifugal blowers and air knife drying systems in 1999 and created a line of these products under the REPUBLIC BLOWER SYSTEMS mark. 

Furthermore, Complainant and its customers have shortened the REPUBLIC marks to “Republic Sales” and “Republic Blowers” respectively due to the length of the actual marks.  Complainant has owned the <republicsales.com> domain name since March 1998 and the <republicblowers.com> domain name since August 1999.  Complainant uses these domain names to operate websites that promote and provide information about Complainant’s products under the REPUBLIC marks. 

Respondent registered the <republicsales.us> and <republicblowers.us> domain names on August 15, 2003.  Respondent has used the disputed domain names to divert Internet users to Respondent’s website at the <velocity-industries.com> domain name, which features the products of Complainant’s competitors. 

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(f), 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 or is being used in bad faith.

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

Identical and/or Confusingly Similar

Complainant has done business under the REPUBLIC SALES & MANUFACTURING mark since 1962 and has used the REPUBLIC BLOWER SYSTEMS mark since about 1999.  Furthermore, Complainant has promoted its products online since at least as early as 1998 and distributes marketing materials displaying the REPUBLIC marks.  Thus, the Panel finds that Complainant has established common law rights in its REPUBLIC marks by a showing of secondary meaning associating Complainant as the source of products sold under the REPUBLIC marks.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law.”); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that Complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark). 

The <republicsales.us> and <republicblowers.us> domain names registered by Respondent are confusingly similar to Complainant’s REPUBLIC SALES & MANUFACTURING and REPUBLIC BLOWER SYSTEMS marks because the domain names utilize the principal term of Complainant’s marks.  The <republicsales.us> domain name omits only the ampersand and the term “manufacturing,” while the <republicblowers.us> domain name adds the letter “s” to the term “blowers” and deletes the term “systems.”  The Panel finds that the abbreviation of Complainant’s marks or the deletion of some terms of Complainant’s marks are not sufficient to negate the confusing similarity of the disputed domain names.  See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”); see also Down E. Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE).

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

Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the <republicsales.us> and <republicblowers.us> domain names, which contain Complainant’s REPUBLIC marks.  Due to Respondent’s failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain names.  In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Furthermore, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as 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.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent has used the <republicsales.us> and <republicblowers.us> domain names to redirect Internet users to Respondent’s website at the <velocity-industries.com> domain name, which features products that compete with Complainant’s products.  Respondent’s use of domain names that are confusingly similar to Complainant’s REPUBLIC marks to redirect Internet users interested in Complainant’s products to a commercial website that primarily offers the products of Complainant’s competitors is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and 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); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan. 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant). 

There is no evidence to suggest that Respondent is the owner or beneficiary of a trade or service mark identical to the <republicsales.us> and <republicblowers.us> domain names pursuant to Policy ¶ 4(c)(i).  Furthermore, Respondent was not authorized or licensed by Complainant to register or use domain names that incorporate the REPUBLIC marks and nothing within the record shows that Respondent is commonly known by the <republicsales.us> and <republicblowers.us> domain names.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the domain names pursuant to Policy ¶ 4(c)(iii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Thus, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent intentionally registered the <republicsales.us> and <republicblowers.us> domain names for Respondent’s commercial gain.  Respondent’s domain names divert Internet users who seek Complainant’s REPUBLIC marks to Respondent’s commercial website through the use of domain names that are confusingly similar to Complainant’s marks.  Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s REPUBLIC marks.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See 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 direct 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); see also G.D. Searle & Co. v. 24-7-Commerce.com, FA 114707 (Nat. Arb. Forum July 31, 2002) (finding that although Respondent failed to come forward and provide evidence of a planned use for the <celebrex-vioxx-ultram-super-blue-stuff.com> domain name, due to the fact that the domain name incorporates marks of competing pharmaceutical products, it can be inferred that Respondent registered the domain name for ultimate use as an online pharmacy).

Furthermore, Respondent registered the <republicsales.us> and <republicblowers.us> domain names for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s competing website.  Respondent’s use of Complainant’s REPUBLIC marks to sell goods and services similar to Complainant’s goods and services is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Surface Prot. 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 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).

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

DECISION

Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <republicsales.us> and <republicblowers.us> domain names be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  October 6, 2004

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