The Complainant is Perkins Holdings Limited of Illinois, United States of America, represented by The GigaLaw Firm, United States of America.
The Respondent is Domain Admin / Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.
The disputed domain name is <perkinsengine.com>. It is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
According to information and documents provided to the Panel by the WIPO Arbitration and Mediation Center (the “Center”), the history of this proceeding is as follows:
- The Complaint was filed with the Center on October 23, 2011.
- On October 25, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name.
- On October 27, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name and providing the Respondent’s contact details.
- In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 2, 2011.
- The Center verified that the Complaint together with the amendment to 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 Rules paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2011. The notice was sent to the Respondent by courier to one postal address and by email to two email addresses (including the email address for the Respondent set forth in the domain name registration), as required by Rules paragraph 2(a). The emails were rejected, but the couriered package was delivered.
- In accordance with Rules paragraph 5(a), the due date for the Respondent to submit its Response was November 29, 2011. The Respondent did not submit a Response.
- On December 1, 2011, the Center notified the parties that the Respondent was in default because it failed to submit a Response, and that the proceeding would continue with a single-member Administrative Panel. The notice was sent to the Respondent by email to the email address for the Respondent set forth in the domain name registration.
- On December 14, 2011, the Center appointed Bradley Freedman as the sole panelist in this proceeding. Bradley Freedman submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Rules paragraph 7.
Based upon the information and documents provided by the Center, the Panel finds that it was properly constituted in accordance with the Rules and the Supplementary Rules, and that all technical requirements for this proceeding have been met.
The following information is derived from the Complaint and supporting evidence submitted by the Complainant:
- Since 1932, the Complainant has been in the business of designing and manufacturing high-performance diesel and gas engines. The Complainant is one of the world’s leading suppliers of off-highway diesel and gas engines. The Complainant has a global presence, with facilities in Brazil, France, Germany, Italy, Japan, Singapore, the United Kingdom and the United States.
- The Complainant operates a website using the domain name <perkins.com>, which was created on August 3, 1998.
- The Complainant is the owner of current trademark registrations for PERKINS for use in association with engines and related products and services in the United States: U.S. Trademark Registration No. 600,523, registered January 4, 1955; U.S. Trademark Registration No. 2,266,989, registered August 3, 1999; and U.S. Trademark Registration No. 2,197,327, registered on October 20, 1998); and the United Kingdom: U.K. Trademark Registration No. 2,296,330, registered March 28, 2003; U.K. Trademark Registration No. 648272, filed May 29, 1946; U.K. Trademark Registration No. 1,274,840, registered January 27, 1989; U.K. Trademark Registration No. 993,336, registered August 13, 1974; U.K. Trademark Registration No. 664,588, filed December 2, 1947; and U.K. Trademark Registration No. 993,335, registered August 13, 1974.
- The disputed domain name was created on December 17, 1999.
- The registration agreement pursuant to which the disputed domain name is registered incorporates the Policy.
- The Respondent is identified as “Domain Admin / Private Registrations Aktien Gesellschaft” in the registration for the disputed domain name.
- The Respondent uses the disputed domain name for a website that displays the title “perkinsengine.com” and images of a car, and provides hypertext links - organized by topic, such as “Diesel Engine Performance”, “Engine Repair”, “Engine Replacement”, and “Boat Engines” - to various third-party websites that advertise and sell engines and related products and services that directly compete with the Complainant’s products and services.
- The Complainant has not licensed or otherwise authorized the Respondent to use the PERKINS trademark in any manner.
- The Respondent does not use the word PERKINS as a trademark or otherwise, except in connection with the disputed domain name. The Respondent is not commonly known by the name PERKINS.
- The Respondent has engaged in a pattern of registering domain names comprised of well-known trademarks owned by third parties.
- The Complainant sent a demand letter dated August 22, 2011, to the Respondent. The Respondent did not respond to the letter.
The Respondent has not filed a Response to the Complaint or answered the Complainant’s factual assertions or evidence in any other manner.
The Complainant contends as follows:
- The Complainant is the owner of the PERKINS trademark, and the disputed domain name is confusingly similar to the Complainant’s PERKINS trademark.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name.
- The Respondent registered, and is using, the disputed domain name in bad faith to mislead and divert Internet users to a website for commercial gain.
The Respondent has not filed a Response to the Complaint or answered the Complainant’s contentions in any other manner.
The Policy is narrow in scope. It applies only to disputes involving alleged bad faith registration and use of domain names – conduct commonly known as “cybersquatting” or “cyberpiracy”. The Policy does not apply to other kinds of disputes between trademark owners and domain name registrants.
The application of the Policy is limited to situations in which a complainant asserts and proves the following requirements set forth in Policy, paragraph 4(a): (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The burden is on a complainant to prove all three required elements in order to be entitled to relief under the Policy.
Rules paragraph 10(b) requires that the Panel ensure that each party is given a fair opportunity to present its case. The Respondent was given notice of this proceeding in accordance with Rules paragraph 2. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint. Further, the Registrar’s Domain Registration Agreement (section 2(1)) requires the Respondent to keep its contact information in the WhoIs record for the disputed domain name current and complete. The Respondent cannot hide behind its provision to the Registrar of incorrect or out-of-date contact information. In the circumstances, the Panel finds that the Respondent has been given a fair opportunity to answer the Complaint and present its case, and in accordance with Rules paragraph 14(a) the Panel will proceed to a decision on the Complaint.
The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a). Rules paragraph 15(a) provides that the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that the Panel deems applicable. In accordance with Rules paragraph 14(b), the Panel may draw such inferences as are appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply, as set forth in this decision. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6).
The Complainant is the owner of the trademark PERKINS, registered in the United States and the United Kingdom for use in association with engines and related products and services. The Complainant uses the PERKINS trademark in its website domain name <perkins.com>. The Complainant asserts that it has used the PERKINS trademark for nearly 80 years. The Respondent has not contested the Complainant’s assertions. In the circumstances, the Panel finds that the Complainant has rights in the trademark PERKINS.
The Complainant’s PERKINS trademark was first registered decades before the disputed domain name was registered in December 1999.
The Policy requires that the disputed domain name be “identical or confusingly similar” to the Complainant’s trademarks. Neither the Policy nor the Rules provide any explicit guidance with respect to the test to be applied regarding the confusing similarity requirement of the Policy. Nevertheless, the consensus reflected in the decisions is that the appropriate test for confusing similarity is a literal comparison of the disputed domain name and the complainant’s trademark. See WIPO Overview 2.0, paragraph 1.2. The literal comparison approach is supported by a number of considerations, which have been discussed in various decisions. See: Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Ms. Patricia Chung, WIPO Case No. D2004-0490; Pancil, LLC v. Wan-Fu China, Ltd., WIPO Case No. D2007-0492; Highlights for Children, Inc. v. Services LLC, WIPO Case No. D2007-0337; and Scania CV AB (Publ) v. ScaniaFinance.co.uk, WIPO Case No. D2008-0113. For those reasons, the Panel considers the appropriate test for confusing similarity to be a literal comparison of the disputed domain name and the Complainant’s trademark.
The disputed domain name and the Complainant’s PERKINS trademark are visually and phonetically similar. The differences between the Complainant’s PERKINS trademark and the disputed domain name are the addition in the domain name of the word “engine” and the “.com” suffix.
The “.com” suffix is irrelevant for the purpose of determining whether a challenged domain name is identical or confusingly similar to a trademark. Rather, one looks to the second level domain for that determination, since the “.com” suffix is merely descriptive of the registry services. See WIPO Overview 2.0, paragraph 1.2; The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571; Ticketmaster Corporation v. Harold R. Brown, II, Harold R. Brown III, and Ted Waitt, WIPO Case No. D2001-0716; The Chancellor, Masers and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO Case No. D2001-0746; Pancil, LLC v. Wan-Fu China, Ltd., supra.; Highlights for Children, Inc. v. Services LLC, supra.; and Scania CV AB (Publ) v. ScaniaFinance.co.uk, supra.
The addition of generic or descriptive words to a trademark in a domain name normally does not avoid a finding of confusing similarity, particularly where the trademark constitutes the dominant or principal component of the domain name. Further, the use of a generic or descriptive word that describes the products or services with which the trademark is ordinarily used may exacerbate or increase the likelihood of confusion. See WIPO Overview 2.0, paragraph 1.9; Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill, WIPO Case No. D2010-2124; Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604; Guccio Gucci S.p.A. v. Hainei Zhou, WIPO Case No. D2011-1017; The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571; Ticketmaster Corporation v. Harold R. Brown, II, Harold R. Brown III, and Ted Waitt, supra.; The Chancellor, Masers and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University, supra.; Pancil, LLC v. Wan-Fu China, Ltd., WIPO Case No. D2007-0492; Highlights for Children, Inc. v. Services LLC, supra.; and Scania CV AB (Publ) v. ScaniaFinance.co.uk, supra..
Here, the Panel finds that the use of the word “engine” together with the PERKINS trademark increases the confusing similarity between the disputed domain name and the Complainant’s PERKINS trademark, because the Complainant uses its PERKINS trademark in association with engines and related products and services.
In light of the Respondent’s use of the disputed domain name, and in the absence of any explanation or rationale put forward by the Respondent for its registration and use of the disputed domain name, the Panel finds that the disputed domain name was intended by the Respondent to be confusingly similar to the Complainant’s PERKINS trademark.
For those reasons, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s PERKINS trademark. Accordingly, the Panel finds that the Complainant has satisfied the first element required by the Policy.
The second element required by Policy paragraph 4(a) – the registrant has no rights or legitimate interests in respect of the domain name – requires a complainant to prove a negative proposition, which can be particularly difficult. The consensus reflected in the decisions is that the complainant’s burden of proof regarding this element must be applied in light of the fact that the nature of the registrant’s rights or legitimate interests, if any, in a domain name lies most directly within the registrant’s knowledge. As a practical matter, once a complainant makes a prima facie showing that a registrant does not have rights or legitimate interests in a domain name, the evidentiary burden shifts to the registrant to provide evidence of its rights or interests in the domain name. See WIPO Overview 2.0, paragraph 2.1; Chicago Pneumatic Tool Company LLC v. Texas International Property Associates- NA NA, WIPO Case No. D2008-0144; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Group Kaitu, LLC, Darkside Productions, Inc. v. Group Kaitu LLC aka Manila Industries, Inc., WIPO Case No. D2005-1087; and Alfa Laval AB, Laval Corporate AB v. Caribbean Online International Ltd. (ALFALAVALL-COM-DOM), WIPO Case No. D2007-1893.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: the Complainant has not authorized the Respondent to use the PERKINS trademark; the Respondent has never used, or made preparations to use, the disputed domain name for a bona fide offering of goods or services; the Respondent has never been commonly known by the “Perkins” name and does not have any trademark rights in the “Perkins” name; and the Respondent uses the disputed domain name for a website that provides links to third-party websites (including websites of the Complainant’s competitors).
Except for the assertions in the signed and certified Complaint, the Complainant has not provided any evidence of trademark searches or other investigations to indicate that the Respondent does not have any interest in any marks that include the term “Perkins” and is not commonly known as “Perkins”. In some circumstances, the omission of that evidence might be fatal to a complaint under the Policy. Nevertheless, in the circumstances of this dispute (including the name used by the Respondent in the WhoIs record for the disputed domain name), the signed and certified Complaint, together with an adverse inference from the Respondent’s failure to reply to the Complaint or provide any justification for its registration and use of the disputed domain name, are sufficient to satisfy the Complainant’s evidentiary burden.
Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, it is incumbent upon the Panel to consider whether the Respondent’s use of the disputed domain name demonstrates rights or legitimate interests in the domain name. According to Policy paragraph 4(c), the following circumstances, if proved, demonstrate a registrant’s rights to or legitimate interests in a domain name:
(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the registrant 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 complainant’s mark.
Policy paragraph 4(c)(i) is not applicable. To satisfy the requirements of Policy paragraph 4(c)(i), the Respondent’s use of the disputed domain name must be in connection with a bona fide offering of goods or services. In some circumstances, a website providing search results or links to other websites might constitute a bona fide offering of goods or services. In the circumstances of this case, however, the Respondent’s use of the disputed domain name is not bona fide within the meaning of Policy paragraph 4(c)(i) because: (a) the disputed domain name is confusingly similar to the Complainant’s registered PERKINS trademark, which is specific to the Complainant in connection with engines and related products and services and has been used for decades; (b) there is no apparent connection or relationship between the disputed domain name and the Respondent’s name or business; and (c) the Respondent does not use the disputed domain name to advertise or sell its own wares or services, but to provide links to third-party commercial websites offering products in competition to the Complainant. See WIPO Overview 2.0, paragraph 2.6; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; and Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057.
Policy paragraph 4(c)(ii) is not applicable. The Respondent does not contend, and there is no evidence, that the Respondent has been commonly known by the disputed domain name or that the disputed domain name is derived from one of the Respondent’s trademarks or trade names.
Policy paragraph 4(c)(iii) is not applicable. The Respondent does not contend, and there is no evidence, that the Respondent is making a noncommercial or fair use of the domain name. To the contrary, the evidence establishes that the Respondent is using the domain name for commercial purposes – a website that provides links to third-party commercial websites.
For those reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and has used the disputed domain name in bad faith. The language of Policy paragraph 4(a)(iii) is conjunctive and requires that both bad faith registration and bad faith use be proved.
“Bad faith” within the meaning of the Policy is a term of art, and is not intended to apply to distasteful conduct that might constitute bad faith in the ordinary sense of the term. Policy paragraph 4(b) provides that each of the following circumstances are evidence that a registrant has registered and used a domain name in bad faith:
(i) circumstances indicating that the registrant has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.
The Policy expressly states that those circumstances are non-exhaustive.
In order to establish that a registrant registered and is using a domain name in bad faith, a complainant need only establish one of the four non-exhaustive criteria set forth in Policy paragraph 4(b).
Policy paragraph 4(b)(iv) applies if the Complainant establishes that the Respondent registered and is using the disputed domain name in order to confuse and divert Internet traffic to the Respondent’s website for commercial gain. There is no direct evidence that the Respondent knew of the Complainant or its PERKINS trademark, or intended to use the disputed domain name to confuse and divert Internet users. Nevertheless, the Respondent’s knowledge and intention may be determined by common sense inferences from circumstantial evidence.
The Panel finds that the Respondent knew of the Complainant’s PERKINS trademark, and registered and is using the disputed domain name in order to confuse and divert Internet traffic to the Respondent’s website, based upon the following circumstances: (a) the Complainant’s PERKINS trademark is specific to the Complainant in connection with engines and related products and services, and has been used for nearly 80 years; (b) the disputed domain name is comprised of the Complainant’s PERKINS trademark and the word “engine”, which is descriptive of the Complainant’s products and services; (c) there is no apparent connection or relationship between the disputed domain name and the Respondent or its business or services; (d) the Respondent uses the disputed domain name for a website that provides sponsored links to third-party commercial websites offering products in competition to the Complainant; (e) there is no apparent legitimate justification for the Respondent’s registration and use of the disputed domain name; and (f) the Respondent has not denied knowledge of the Complainant or its PERKINS trademark. In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for its use of the disputed domain name.
The Panel also finds that the Respondent’s use of the disputed domain name results in commercial gain to the Respondent. It is well known that many websites generate advertising revenue by directing traffic to other websites. The Panel finds that the links on the Respondent’s website are intended by the Respondent to generate revenue. Based upon the information apparent from the Respondent’s website, and in the absence of any explanation by the Respondent, the Panel finds that the Respondent’s website generates revenue for the Respondent. See WIPO Overview 2.0, paragraph 3.8; and Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951.
The Panel finds, pursuant to Policy paragraph 4(b)(iv), that the Respondent registered and is using the disputed domain name in bad faith to confuse and divert Internet traffic to its website for commercial gain.
In the circumstances, the Panel need not consider whether Policy paragraphs 4(b)(i), (ii) or (iii) are applicable, or whether there are other grounds for finding that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant has established each of the three requirements set forth in Policy paragraph 4(a): the disputed domain name is identical or confusingly similar to the Complainant’s PERKINS trademark, the Respondent does not have any rights to or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith.
The Panel orders that the disputed domain name <perkinsengine.com> be transferred to the Complainant.
Bradley Freedman
Sole Panelist
Dated: December 28, 2011