The Complainant is Baldor Electric Company of Fort Smith, Arkansas, United States of America (“United States”), represented by Williams & Anderson PLC, United States.
The Respondent is Domain Manager of Boynton Beach, Florida, United States.
The disputed domain name <mybaldor.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2011. On January 3, 2012, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the Domain Name. On January 4, 2012, Moniker Online Services, LLC 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” or “UDRP”), 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 January 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2012.
The Center appointed Michelle Brownlee as the sole panelist in this matter on February 1, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant owns United States Trademark Registration Number 1908157 for the BALDOR trademark in connection with electric motors for industrial, commercial and agricultural uses; power operated industrial grinders; power operated industrial buffers; power operated polishing lathes; and lifting magnet electric generators, United States Registration Number 1905463 for the BALDOR trademark in connection with electric motor controls and controllers including electronic controllers for starting and braking electric motors, and tachometers for electric motors, United States Registration Number 1907223 in connection with dental lathes, as well as numerous other registrations in the United States and other countries for BALDOR and a stylized version of the mark in connection with similar and related goods and services.
The Respondent registered the Domain Name on February 12, 2006.
The Complainant is a designer, manufacturer and marketer of industrial electric motors, mechanical power transmission products, drives and generators. The Complainant sells its products to more than 10,000 distributors and original equipment manufacturers in more than 70 countries. The Complainant has been in business since 1920 and operates 26 plants in the United States, Canada, United Kingdom of Great Britain and Northern Ireland, Mexico and China. The Complainant was ranked in the top 100 of 2010 Most Innovative Business Technology Organizations by InformationWeek Magazine, and ranked #1 in Control Design’s 2011 Readers Choice Awards in the category of Industrial Electric Motors.
The Complainant submits that the Domain Name is identical or confusingly similar to the Complainant’s BALDOR trademark, that the Respondent has no rights to or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith. The Domain Name resolves to a “parking” website that provides links to websites that offer products and services that are similar to and in competition with those offered by Complainant. Further, the Complainant asserts that the Respondent has been found to have registered and used numerous domain names in bad faith in other complaints that were asserted under the Policy.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Complainant has demonstrated that it owns rights in the BALDOR trademark. There are many UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (<leasinglexus.com> and <lexuselite.com> confusingly similar to the LEXUS trademark). Accordingly, the Panel finds that the Domain Name, which comprises the Complainant’s BALDOR trademark with the less distinctive term “my,” is confusingly similar to the Complainant’s trademark.
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
The Respondent has not presented evidence that the Respondent used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case. The Complainant has presented evidence, which was not refuted by the Respondent, that the Respondent is using the Domain Name as a “parking” website that provides links to websites that offer competitive goods and services in order to collect click-through referral fees. This activity cannot under the circumstances be considered a bona fide offering of goods or services. See, e.g., PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Respondent’s use of the Domain Name to earn referral fees by linking to other websites attracts Internet users to the Respondent’s website hosted at the Domain Name by creating confusion as to source and results in commercial gain to the Respondent. Further, the Respondent’s history of bad faith domain name registration reinforces the conclusion that the Domain Name was registered and used in bad faith in this case.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <mybaldor.com>, be transferred to the Complainant.
Michelle Brownlee
Sole Panelist
Dated: February 6, 2012