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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Salton, Inc. v. H. Khan

Case No. D2008-1540

1. The Parties

The Complainant is Salton, Inc. of United States of America, represented by Baker Botts, L.L.P., United States of America.

The Respondent is H. Khan, of Canada.

2. The Domain Name and Registrar

The disputed domain name <stiffel.com> registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2008. On October 9, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On October 9, 2008, Network Solutions, 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 October 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2008.

The Center appointed Debrett G. Lyons as the sole panelist in this matter on December 3, 2008. 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.

4. Factual Background

1. The Complainant is a marketer and distributor of small domestic goods including lighting, home decor and personal care products.

2. The Complainant’s main customers are mass merchandisers, department stores, specialty retailers and appliance distributors located in North America, Europe, Asia, Australia, New Zealand, South America, and the Middle East.

3. The Complainant reported net sales in excess of USD 523 million for the fiscal year that ended June 30, 2007.

4. The Complainant and its predecessors-in-interest have used the US Federally registered trade mark STIFFEL in relation to lamps since 1934.

5. The Complainant has not licensed or otherwise permitted the Respondent to use the trade mark or to register or use any domain name incorporating the trade mark.

6. The Respondent registered the disputed domain name on May 9, 2004.

7. The disputed domain name redirects Internet users to a commercial website that provides links to third party retailers of lamps and lighting fixtures, the majority of which compete with the Complainant goods.

8. The Complainant petitions the Panel to order transfer of the disputed domain name from the Respondent to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts trade mark rights and states that the disputed domain name is identical to the trade mark.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.

The detail of the Complaint is included where necessary in Part 6 of this Decision.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant premises its trade mark rights on U.S. Federal Trademark Registration No. 1,078,331, filed February 2, 1977 and registered on November 29, 1977 and Registration No. 2,707,321, filed September 17, 1997 and registered on April 15, 2003. No explanation is given as to why Registration No. 1,078,331 is owned by Beatrice Foods Co. and there is no change of owner documentation. The Panel must disregard it. Registration No. 2,707,321 belongs to the Complainant and is for the plain word mark, STIFFEL. It is sufficient to establish rights in the trade mark¹.

Applying the principles developed and now broadly accepted under the Policy, the disputed domain is identical to the trade mark².

The Panel has no hesitation in finding that the Complainant satisfies the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the domain name. Nevertheless, it is well settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to demonstrate rights or legitimate interests³.

Notwithstanding the lack of a Response to the Complaint, Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 or service mark at issue.

The Complainant states that the STIFFEL mark is an arbitrary trade mark. The Panel surmises that it may be a surname, however, the WhoIs data does not support any argument that the Respondent might be commonly known by the domain name. There is no evidence that the Respondent has any trade mark rights in the name, registered or not. The Complainant has stated there to be no relationship between the parties.

The Respondent is not using, nor has it made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Respondent is using the domain name to re-direct Internet users to a commercial website that provides links to third party retailers of lamps and lighting fixtures. It is established by former decisions under the Policy that such action is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the domain name⁴.

The Panel finds that the Complainant has succeeded in making out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not discharged the onus which fell to it as a result. The Panel finds that the Respondent has no rights or legitimate interests in the domain name and so the Complainant has established the second limb of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:

(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.

What is noteworthy about paragraphs 4(b)(i) – (iv) is that they are cases of both registration and use in bad faith. Paragraph 4(b) is not exhaustive and other instances of bad faith might be in evidence but, in those instances, the Panel must be able to find both bad faith registration and bad faith use. It is therefore logical to first test the facts against the Policy itself.

The Complainant alleges that the Respondent’s conduct falls under paragraphs 4(b)(iii) and (iv). Since paragraph 4(b)(iii) requires examination of the Respondent’s primary purpose at the time of registration in May 2004, the Panel prefers to turn to the paragraph 4(b)(iv) claim.

Paragraph 4(b)(iv) requires a use of the domain name creating a likelihood of confusion with the Complainant’s mark as to the source of the online location to which Internet users are attracted. The Panel has already found the domain name to be identical to the trade mark. The Panel finds that the likelihood of confusion as to source is therefore inevitable.

Paragraph 4(b)(iv) also requires an intention for commercial gain. What is required is proof that it is more likely than not, that intention existed; absolute proof is not required and the Panel is entitled to accept reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory⁵.

The Complainant states that:

On information and belief, Respondent derives a financial benefit from the web traffic that is diverted through the Domain Name to a linking portal where users are presented with paid advertising links and revenue-generating searches.

On the facts, the Panel finds it more likely that not that the Respondent had the requisite intention for commercial gain. Moreover, what is clear is that use of a domain name in this same manner is very frequently for commercial gain⁶.

The Panel finds that the Complainant has shown the Respondent’s use of the disputed domain name falls under Paragraph 4(b)(iv) and was therefore used and registered in bad faith. Accordingly, the Panel finds that the Complainant has satisfied the third and final limb of the Policy.

7. Decision

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

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Debrett G. Lyons
Sole Panelist

Dated: December 14, 2008

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¹ See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Case No. 705262 (National Arbitration Forum, June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark STATE FARM establishes its rights in the STATE FARM mark pursuant to Policy paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Case No. 174052 (National Arbitration Forum, September 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).

² See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.

³ See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Case No. 741828; AOL LLC v. Jordan Gerberg, NAF Case No. 780200.

⁴ See, for example, Bank of America Corporation v. Azra Khan, NAF Case No. 124515 (finding that the respondent’s diversionary use of the domain name to “www.magazines.com” was not a bona fide offering of goods or services, was not noncommercial use, and was not fair use); see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

⁵ See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Case No. 95095 (National Arbitration Forum) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

⁶ See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (finding that redirecting users to the website “www.magazines.com” was for commercial gain and was bad faith registration and use); Ticketmaster Corporation v. Amjad Kausar, WIPO Case No. D2002-1018 (holding that “[t]he Respondent is clearly acting in bad faith by using the Complainant’s mark to profit in the form of commissions by linking of the Ticketsnow.com Affiliate Program”); Yahoo! Inc. v. DFI Inc., NAF Case No. FA147313 (holding that, because respondent participated in an affiliate program whereby it earned a commission for each user redirected from its infringing site, its ultimate goal was commercial gain and thus it was using the name in bad faith); and Showboat, Inc. v. Azra Khan, NAF Case No. 125227 (redirecting users for a commission is using a confusingly similar domain name for commercial benefit, which is evidence of bad faith).