WIPO Domain Name Decision: D2008-0333

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Photographic Solutions, Inc. v. Fariborz R-Dehghan

Case No. D2008-0333

1. The Parties

The Complainant is Photographic Solutions, Inc. Massachusetts, United States of America, represented by Wolf, Greenfield & Sacks, P.C., United States of America.

The Respondent is Fariborz R-Dehghan, Alberta, Canada.

2. The Domain Name and Registrar

The disputed domain name <sensorswabplus.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2008. On March 7, 2008, the Center transmitted by email to GoDaddy.com Inc. a request for Registrar verification in connection with the domain name at issue. On March 8, 2008, GoDaddy.com Inc. 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”), 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 March 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2008.

The Center appointed Clive Duncan Thorne as a sole panelist in this matter on April 15, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality of Independence as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant, Photographic Solutions Inc. is a leading provider of cleaning products for the photographic and optical industries. It owns and operates a successful international eCommerce website at “www.sensorswab.com”.

The Complainant owns a United States of America trade mark registration and a European Community Trade Mark registration for the mark SENSOR SWAB; and has a pending US trade mark application for the mark SENSOR SWAB PLUS.

The Complainant has prominently and continuously used the mark SENSOR SWAB for the promotion and sale of its cleaning products since 1997. Evidence of use of the marks is contained in the Declaration of David M. Stone which is exhibited at Exhibit 5 to the Complaint. In his declaration Mr. Stone also gives evidence that the Complainant announced its launch of the Sensor Swab Plus product line during a recent photo marketing association trade show in Las Vegas, Nevada. During the trade show Photographic Solutions exhibited posters and announced in press releases that it was launching the Sensor Swab Plus product line. Mr. Stone points out that individuals connected to the Respondent and his competing Visible Dust business were present at the trade show and had access to the Complainants posters and press releases announcing the launch of Sensor Swab Plus.

The Complainant registered the domain name <sensorswab.com> in October 2004 and has been using the domain name to promote its goods and services since that date. The website “www.sensorswab.com” received about 300,000 hits per month.

Evidence of the Complainant’s trade mark registrations are set out at Exhibits 7 and 8 to the Complaint. Exhibit 7 consists of a print out from the USPTO website in relation to the mark SENSOR SWAB which was filed on October 21, 2005 and registered on November 14, 2006 under registration no. 3171060 in relation to cleaning pads. Exhibit 7 also sets out an extract from a USPTO website in respect of the Complainant’s application to register the mark SENSOR SWAB PLUS in respect of cleaning pads. This application no. 77388008 was filed on February 4, 2008.

Exhibit 7 is an extract from the OHIM trade mark database and shows that the CTM mark SENSOR SWAB was filed on October 27, 2005 and registered on August 24, 2006 in classes 3, and 21 for inter alia cleaning substances and cleaning pads.

The Complainant submits that as a result of its extensive use and promotion of the marks SENSOR SWAB it has established a significant goodwill in the marks which is strongly associated with it.

In the absence of a Response there is no evidence adduced by the Respondent. However, at Exhibit 1 to the Complaint the Complainant exhibits a print out of the registration of the domain name <sensorswabplus.com> by the Respondent. The date of creation of the domain name is shown as February 3, 2008.

In the absence of a Response, the Panel accepts the above evidence adduced by the Complainant as true.

5. Parties’ Contentions

A. Complainant

1. The domain name is identical or confusingly similar to the Complainant’s marks.

i. The Complainant relies upon its trade mark rights in the mark SENSOR SWAB.

ii. The domain name is confusingly similar to the trade mark SENSOR SWAB.

iii. The domain name <sensorswabplus.com> is identical to the Complainant’s common law rights in the mark SWNSOR SWAB PLUS.

2. The Respondent has no rights or legitimate interests with respect to the domain name.

i. The Respondent does not own any trade marks containing the terms “Sensor” or “Swab”.

ii. The Respondent has not been commonly known by the marks SENSOR SWAB or SENSOR SWAB PLUS.

iii. The Respondent is not making any legitimate non-commercial fair use of the domain name.

iv. The Respondent is not licensed by the Complainant to use the marks SENSOR SWAB or SENSOR SWAB PLUS.

v. The Respondent has not made bona fide use of the domain name nor has the Respondent made demonstrable preparations in connection with any bona fide offering of goods and services.

3. The domain name is registered and is being used in bad faith.

i. The domain name incorporates the Complainant’s entire marks.

ii. The Respondent has deliberately attempted to attract internet users to its own website for commercial gain by creating a likelihood of confusion with the Complainant’s marks.

iii. The Respondent intends to disrupt the Complainant’s business.

iv. The Respondent had no plausible or legitimate reason for choosing the domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds on the basis of the evidence set out in (4) above that the Complainant has registered US and European Community Trade Mark rights in the mark SENSOR SWAB. It also finds that as a result of its marketing of products using the mark SENSOR SWAB PLUS that it has unregistered or common law rights in the mark SENSOR SWAB PLUS.

In the Panel’s view, the domain name in dispute is confusingly similar to the Complainant’s registered marks SENSOR SWAB, the additional word “Plus” as used in the domain name is a descriptive adjective that does not detract from the core part of the domain name which is the use of the words “Sensor” and “Swab”. Accordingly, the Panel finds that the domain name in dispute is confusingly similar to the Complainant’s trade mark SENSOR SWAB.

The Panel has also found that the Complainant has unregistered rights for SENSOR SWAB PLUS. This mark is identical to the domain name. The Panel therefore also finds that the domain name is identical to the Complainant’s unregistered mark SENSOR SWAB PLUS.

Accordingly the Panel finds for the Complainant in this element and that the domain name is identical and confusingly similar to the Complainant’s marks.

B. Rights or Legitimate Interests

There is no evidence before the Panel that the Respondent has any rights or legitimate interests in the domain name for the reasons set out in the Complaint:

i. There is no evidence that the Respondent owns any registered trade marks containing the words “Sensor” or “Swab”.

ii. There is no evidence that the Respondent had been commonly known by the marks SENSOR SWAB or SENSOR SWAB PLUS. The Whois information obtained by the Respondent indicates that the Respondent is known as Fariborz R-Dehghan and that there is no evidence displayed on the Respondent’s website indicating that it is known by the names “Sensor Swab” or “Sensor Swab Plus”.

iii. The Respondent is not presently making any legitimate non-commercial or fair use of the domain name. There is no evidence or a legitimate explanation for the Respondent’s acquisition for use of the domain name.

iv. The Respondent is not licensed by the Complainant to use the marks SENSOR SWAB or SENSOR SWAB PLUS. This is clear from the David Stone declaration referred to above.

Having considered all these factors and the evidence submitted by the Complainant the Panel finds that the Respondent has no rights or legitimate interests with respect to the domain name and accordingly finds for the Complainant in this element.

C. Registered and Used in Bad Faith

The Complainant submits that the Respondent has acquired and used the domain name in bad faith. This is reflected by the fact that with knowledge of the Complaint’s trade mark rights, the Respondent acquired the domain name which incorporated the Complainant’s marks. It follows that the Respondent acquired the domain name intentionally to trade off the goodwill of the Complainant and therefore divert for commercial gain internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source sponsorship affiliation or endorsement of the mark.

The Complainant relies upon the Respondent’s decision to incorporate the registered mark SENSOR SWAB in the domain name. It points out that this is a deliberate act and that this is evidenced by the fact that the Respondent registered the domain name immediately after learning about the Complainant’s launch of the “Sensor Swab Plus” product line. It argues that this is an anticipatory domain name registration falling with paragraph 4(b)(iii) of the Policy and constitutes bad faith in the registration of the domain name “primarily for the purpose of disrupting the business of a competitor. This is evidence of bad faith registration and use.

The Panel pays particular attention to the fact that the Respondent is apparently a competitor of the Complainant and offers competitive goods and services. It finds it significant that the Complainant announced its launch of the “Sensor Swab Plus” product line during a photo marketing association in Las Vegas between January 30 and February 2, 2008 and that to the Complainant’s knowledge individuals connected to the Respondent and its business and present at the trade show and had access to the Complainant’s posters and press releases.

In the Panel’s view this fact, taken into account, with the constructive notice that the Complainant had of the Complainant’s trade mark rights (including trade mark rights in the United States) is sufficient evidence of bad faith. There can be no “plausible or legitimate reason for choosing the domain name” as put by the Complainant. The Panel also takes into account that there is no contrary evidence or explanation from the Respondent.

Accordingly, the Panel finds that the domain name was registered and used in bad faith by the Respondent. The Complainant therefore succeeds in this element.

7. Decision

For all the foregoing reasons and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules the Panel orders that the domain names <sensorswabplus.com> be transferred to the Complainant.

Clive Duncan Thorne
Sole Panelist

Dated: 29 April 2008