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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Diebold, Incorporated v. Paul Terwilliger
Case No. D2003-0416
1. The Parties
The Complainant is Diebold, of North Canton, Ohio, United States of America, represented by Walker & Jocke of United States of America.
The Respondent is Paul Terwilliger, of Grantham, NH, United States of America.
2. The Domain Names and Registrar
The disputed domain names are:
The registrar for all domain names is Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 29, 2003. On May 29, 2003, the Center transmitted by email to Register.com, a request for registrar verification in connection with the domain names at issue. On May 29, 2003, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 June 6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2003.
The Center appointed Sandra Franklin as the sole panelist in this matter on July 3, 2003. 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
Complainant holds over 250 registered trademarks for DIEBOLD in the U.S. and many other countries. The registrations date back to 1959, and generally pertain to business machines and equipment. Complainant’s Trademark Application Serial Number 78/124060 has been approved for publication for use in connection with paper ballot boxes, paper ballot box carrying cases, election systems for tabulating votes, voter registration systems, stand-alone kiosks and booths, the design of voter registration systems and electronic voting administration services.
5. Parties’ Contentions
Complainant contends the following:
1. Respondent’s <dieboldelection.com>, <dieboldelections.com>, <dieboldvote.com> and <dieboldvotes.com> domain names are confusingly similar to Complainant’s DIEBOLD marks.
2. Respondent does not have any rights or legitimate interests in the <dieboldelection.com>, <dieboldelections.com>, <dieboldvote.com> and <dieboldvotes.com> domain names.
3. Respondent registered and used the <dieboldelection.com>, <dieboldelections.com>, <dieboldvote.com> and <dieboldvotes.com> domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant states that it has been using the DIEBOLD mark since 1859, and is the owner of 5 U.S. and 245 international trademark registrations for DIEBOLD. Complainant also has several pending registrations, including those approved for publication for use in connection with various voting products and services. Complainant uses the mark DIEBOLD as a source identifier for a wide range of products and services, and has pending registrations and domain names for combinations of DIEBOLD with other words and marks. Complainant has established rights in the mark DIEBOLD.
Respondent’s domain names <dieboldelection.com>, <dieboldelections.com>, <dieboldvote.com> and <dieboldvotes.com> contain Complainant’s distinctive DIEBOLD mark and a generic word that denotes goods or services that are provided by Complainant under that mark. Respondent has merely added the generic words "election" and "vote" to DIEBOLD and added the letter "s." Such differences are insufficient to create domain names that are distinct from Complainant’s DIEBOLD mark. See Google, Inc. v. Freije, FA 102609 (Nat. Arb. Forum, January 11, 2002), finding the addition of the generic word "sex" to the GOOGLE mark in a domain name was confusingly similar to Complainant’s mark.
Accordingly, the Panel finds that Respondent’s domain names <dieboldelection.com>, <dieboldelections.com>, <dieboldvote.com> and <dieboldvotes.com> are confusingly similar to Complainant’s DIEBOLD mark, and that Policy paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Respondent did not submit a response in this proceeding. The Panel can accept all reasonable allegations and inferences submitted by Complainant in the absence of a response. Since Respondent failed to submit a response, it has not shown any circumstances that could substantiate its rights or legitimate interests in the <dieboldelection.com>, <dieboldelections.com>, <dieboldvote.com> and <dieboldvotes.com> domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum October 1, 2002), holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is "uniquely within the knowledge and control of the respondent"; see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum, July 31, 2000), which holds that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true.
No evidence has been presented to show that Respondent is commonly known by any of the disputed domain names. In fact, Respondent appears to be associated with Complainant’s competitor, Sequoia Voting Systems. Both the fame of Complainant’s mark and the name given in the WHOIS contact information for the <dieboldelection.com>, <dieboldelections.com>, <dieboldvote.com> and <dieboldvotes.com> domain names supports the reasonable inference that Respondent is not commonly known as any of the disputed domain names. The Panel reasonably infers the Policy paragraph 4(a)(i) does not apply to Respondent. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum, February 10, 2003), stating "nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name" as one factor in determining that Policy paragraph 4(c)(ii) does not apply); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum, February 28, 2001), finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark.
Respondent does not have any rights or legitimate interests in the <dieboldelection.com>, <dieboldelections.com>, <dieboldvote.com> and <dieboldvotes.com> domain names. Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Respondent is or was an engineer and director of development with Sequoia Voting Systems, a competitor of Complainant’s. Respondent is no doubt aware of both Complainant’s well known and distinctive mark DIEBOLD, and it’s entry into the voting products and services market, reported in the press. Respondent attended a Voting Systems Trade Show at which Complainant also presented its goods and services. As Respondent is a visible employee of Complainant’s competitor and the domain names contain Complainant’s famous mark, it is reasonable to infer bad faith use by Respondent, primarily for the purpose of disrupting the business of a competitor. See The Cheap Escape Company v. Auto Accents and Amid Yousef, WIPO Case No. D2000-0514 (September 19, 2000), citing the use of confusingly similar domain names by a competing magazine as "clearly intended to interfere with and to disrupt Complainant’s business by preventing Complainant from using the most obvious and logical domain names" for Internet business. This Panel accordingly finds that Policy paragraph 4(a)(iii) has been satisfied.
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 names <dieboldelection.com>, <dieboldelections.com>, <dieboldvote.com> and <dieboldvotes.com> be transferred to Complainant.
Dated: July 15, 2003