Auto-C, LLC v. Chip Brown

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Auto-C, LLC v. Chip Brown

Case No. D2003-0288

1. The Parties

The Complainant is Auto-C, LLC ("Auto-C"), a limited liability company organized and existing under the laws of Delaware, United States of America ("USA") maintaining its principal place of business in Memphis, Tennessee, USA. Auto-C is a wholly-owned subsidiary of Johnson Diversey, Inc.

The Respondent is Chip Brown, an individual resident of Cordova, Tennessee, USA.

2. The Domain Names and Registrar

The disputed domain names are <auto-chlor.com> and <auto-chlor.net> registered with Innerwise, Inc. d/b/a YourDomain.com of Schaumburg, Illinois, USA.

3. Procedural History

Auto-C filed a Complaint with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2003. The Center subsequently 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").

The Center notified the Respondent of the Complaint on April 23, 2003. On May 10, 2003, a response to the Complaint was served by a non-party identifying itself as "Electro Wiring Systems, Inc."

The Center appointed the undersigned as Sole Panelist in this matter on June 4, 2003.

4. Factual Background

Complainant is a leading U.S. manufacturer of commercial dishwashing machines

and accessories sold under the mark AUTO-CHLOR. Complainant is the owner of

several incontestable United States registrations of trademarks comprising the

phrase AUTO-CHLOR, including the following:

- U.S. Reg. No. 363,438 for AUTO-CHLOR SYSTEM (stylized) issued December 27, 1938,

reciting "chlorinating units for use with water systems" and use since

February 4, 1937.

- U.S. Reg. No. 505,303 for AUTO-CHLOR (stylized) issued December 28, 1948,

reciting "chemical solutions for sterilizing eating utensils" and

use since January 1, 1938.

- U.S. Reg. No. 845,387 for AUTO-CHLOR (stylized) issued March 5, 1968,

reciting "commercial dishwashing machines" and use since 1955.

- U.S. Reg. No. 1,018,200 for AUTO-CHLOR SYSTEM (stylized) issued August 12, 1975,

for "maintenance and repair of dishwashing equipment" and use since

February 4, 1937.

- U.S. Reg. No. 1,617,277 for AUTO-CHLOR issued October 16, 1990,

for various goods in International Class 3 including "grease removing preparations

for commercial dishwashers."

Respondent and his company, Electro Wiring Systems, Inc., market and sell what

they call "a digital timer designed to replace the traditional analog timer

found in chemical dispensing commercial dishwashers sold by businesses such

as the Complainant" (Response at 2-3). According to Respondent, the timer

marketed by him "replicates the functions of a chemical dispensing commercial

dishwasher that have traditionally been controlled by a cam timer. This device

replicates the functions of the cam timer with electronic precision that provides

vastly improved accuracy and reliability in functioning for commercial dishwashers"

(id. at 3). Respondent markets his timer product under the name DISHMACHINE

and does so via an Internet website associated with the domain name <ew-sys.com>.

In addition to the DISHMACHINE product, the "www.ew-sys.com" site

features advertisements for diverse third parties offering telephone long distance

services, telephone calling cards, satellite television, personal computers,

home security services, and other goods and services. Among the third-party

advertisers on the "www.ew-sys.com" website is "www.esoapers.com"

whose site posts listings of used commercial dishwashing machines being offered

for sale.

From time to time between March 29, 2001, and March 29, 2002,

Respondent contacted Complainant and dealers in new AUTO-CHLOR dishwashers and

attempted to interest them in purchasing DISHMACHINE timers from Respondent

or his company. Respondent's solicitations were rebuffed. Then on April 8, 2002,

Respondent registered the domain name <auto-chlor.com>. Approximately

three weeks later on April 24, 2002, Respondent registered the domain

name <auto-chlor.net>. Respondent caused these names to resolve to the

"www.ew-sys.com" website. Respondent subsequently refused Complainant's

demands that the domain names be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain names <auto-chlor.com> and <auto-chlor.net>

are identical or confusingly similar to registered trademarks in which Complainant

has rights. Complainant further contends that Respondent has no rights or genuine

interests in the domain names <auto-chlor.com> or <auto-chlor.net>.

Finally, Complainant alleges Respondent registered and has used the domain names

<auto-chlor.com> and <auto-chlor.net> in bad faith.

B. Respondent

Respondent "concedes that Complainant’s ‘auto-chlor’ trademarks are identical

or confusingly similar to Respondent’s registered domain names <auto-chlor.com>

and <auto-chlor.net>" (Response at 3-4). Respondent nonetheless contends

that his use of the domain names in question "is protected as fair use

because the mark ‘auto-chlor’ is descriptive in nature" (id. at

6). Respondent denies having registered or used the disputed domain names in

"bad faith" within the meaning of the Policy.

6. Discussion and Findings

Paragraph 4(a) of the Policy entitles a Complainant to seek an administrative

transfer of a second level Internet domain name in the event that it "proves,"

to the satisfaction of the Panel, three predicates: (1) an accused domain name

is identical or confusingly similar to a trademark or service mark in which

the Complainant has rights; (2) a registrant has no rights or legitimate interests

in respect of the accused domain name; and (3) a registrant’s domain name has

been registered and is being used in bad faith. A fact is "proved,"

for purposes of the Policy, when it is "more likely to be true than not

true based on the evidence." Ciccone v. Parisi, WIPO

Case No. D2000-0847 (October 12, 2000).

A. Similarity of the Disputed Domain Name and Complainant’s Marks

As noted above, Respondent concedes that the domain names <auto-chlor.com>

and <auto-chlor.net> are confusingly similar to Complainant’s registered

trademark, AUTO-CHLOR.

B. Rights or Legitimate Interests

Respondent has submitted no evidence that he had any rights or legitimate interests

in the mark AUTO-CHLOR at any relevant time. The record shows, on the contrary,

that Respondent registered the domain names <auto-chlor.com> and <auto-chlor.net>

with full knowledge of Complainant's prior use of AUTO-CHLOR and after attempting,

and failing, to establish a vendor-vendee relationship with Complainant. Respondent

makes no claim, and submits no evidence, that he has ever been known as "AUTO-CHLOR,"

that he has ever marketed any goods or services identified by the mark AUTO-CHLOR,

or that he has any other cognizable basis for claiming "rights" in

the name AUTO-CHLOR.

Respondent contends he is within Paragraph 4(c)(i) of the Policy because he

used the disputed domain names in connection with a commercial website "well

in advance of any knowledge of this domain name dispute" (Response at 5).

The contention is baseless. Paragraph 4(c)(i) of the Policy is addressed to

cases of bona fide concurrent uses of names, as "where two parties

independently are employing the same mark upon goods of the same class, but

in separate markets wholly remote the one from the other." Hanover Star

Milling Co. v. Metcalf, 240 U.S. 403, 415 (1916). Paragraph 4(c)(i) of the

Policy has no proper application to a person, such as Respondent, who registers

and commences use of a domain name with full knowledge of another's pre-existing

use of an identical trademark, in the same geographic area, on closely related

goods.

Equally baseless is Respondent's argument that its use of the domain names

in question "is protected as fair use because the mark ‘auto-chlor’ is

descriptive in nature" (Response at 6). Respondent is making commercial,

not "fair," use of the disputed domain names, in order to attract

attention to products adapted for use in AUTO-CHLOR and other makes of commercial

dishwashing machines, as well as to other goods and services totally unrelated

to dishwashing machines that Respondent is marketing and selling. The "fair

use" doctrine is patently inapplicable to such commercial advertising activity.

Furthermore, in view of Complainant's ownership of an incontestable federal

registration of AUTO-CHLOR as a mark for, among other things, commercial dishwashing

machines, supplies for commercial dishwashing machines, and servicing of commercial

dishwashing machines, Respondent's assertion that AUTO-CHLOR purportedly is

merely descriptive of commercial dishwashing machine timers is both unsupported

and, at all events, no basis on which Respondent could claim "rights"

of use vis a vis the Complainant in this case. See Park ‘N Fly, Inc. v. Dollar

Park and Fly, Inc., 469 U.S. 189, 205 (1985) ("the holder of a registered

mark may rely on incontestability to enjoin infringement and . . . such an action

may not be defended on the grounds that the mark is merely descriptive").

Complainant has proved, to the Panel's full satisfaction, that Respondent has

no rights or legitimate interests in the disputed domain names.

C. Bad Faith Registration and Use

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances

which, if found by a Panel to be present, constitute "evidence of the registration

and use of a domain name in bad faith." The Policy makes clear that a "bad

faith" determination can be based on circumstances other than the four

examples listed in Paragraph 4(b) of the Policy.

Here the record overwhelmingly supports a conclusion that Respondent registered

the domain names <auto-chlor.com> and <auto-chlor.net> with bad

faith intent to profit from pre-existing goodwill associated with those marks.

The Panel rejects, as pretextual and false, Respondent's assertion that these

names were adopted because they purportedly were "descriptive" of

commercial dishwasher timers or any of the other goods and services offered

at the "ew-sys.com" website.

The present case falls squarely within Paragraphs 4(c)(iii) and (iv) of the

Policy which provide:

(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.

Both of the above-quoted provisions well describe the conduct of this Respondent

as shown by the record. The Panel finds that it is more likely true, than not

true, that Respondent registered and used the disputed domain names for the

improper purpose of attempting to induce the Complainant, by wrongful and extortionate

means, to purchase DISHMACHINE timer products from Respondent or his company.

Appropriating Complainant’s registered trademark, and preventing Complainant

from using <auto-chlor.com> or <auto-chlor.net> to identify genuine

AUTO-CHLOR commercial dishwashing equipment and accessories, were ways that

Respondent could seek to induce Complainant into doing business with Respondent

that Complainant would not otherwise engage in.

The Panel further finds that it is more likely true, than not true, that Respondent

registered and has used the disputed domain name because Respondent was aware

of the renown of the AUTO-CHLOR mark among potential purchasers of DISHMACHINE

timer products, and Respondent intentionally attempted to attract, for commercial

gain, Internet users to its "www.ew-sys.com" website by means of confusion

or deception of persons seeking information concerning genuine AUTO-CHLOR products.

Such conduct falls within the core of the proscribed "bad faith" justifying

a transfer of a domain name under Paragraph 4(c)(iv) of the Policy.

7. Decision

I find in favor of the Complainant. The disputed domain names are legally identical

to trademarks in which Complainant has rights. Complainant has proved to my

satisfaction that the Respondent had no rights or legitimate interests in the

disputed domain names at any relevant time. Complainant also has proved to my

satisfaction that the disputed domain names were registered and are being used

in bad faith. It is, therefore, ORDERED and ADJUDGED that the domain names <auto-chlor.com>

and <auto-chlor.net> be transferred to Complainant.

James W. Dabney

Sole Panelist

Dated: June 18, 2003

More cases by this complainant

• Auto-C, LLC v. MustNeed.com — D2004-0025 · autochlor.com · Transfer · 30 Mar 2004