WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Senco Products, Inc. v. Camp Creek Co., Inc.
Case No. D2000-0590
1. The Parties
The Complainant is Senco Products, Inc. ("Senco"), an Ohio corporation with its principal place of business in Cincinnati, Ohio, U.S.A.
The Respondent is Camp Creek Co., Inc. ("Camp Creek"), a Virginia Corporation with a place of business in Floyd, Virginia, U.S.A.
2. The Domain Name and Register
The Complainant seeks the transfer of several domain names Ė SENCOTOOLS.COM, SENCOSTAPLERS.COM, SENCONAILS.COM, SENCOSTAPLES.COM, and SENCO.ORG, -- each registered with Network Solutions, Inc. ("NSI"), of Herndon, Virginia, USA. However, because the Respondent has, in its Response, stated that "it has attempted to delete" the first four of these domain names and "gives up all rights to these names voluntarily," the Solo Panelist will enter an order in the nature of a consent judgment with respect to those names and will focus this decision on the resolution of the remaining dispute regarding the domain name SENCO.ORG.
3. Procedural History
Sencoís Complaint was received by the WIPO Arbitration and Mediation Center ("the Center"), by e-mail and in hard copy, on June 13, 2000. The Center sent an Acknowledgement of Receipt of Complaint to the Complainant on July 6, 2000.
On July 7, 2000, Mr. Thomas Vangunten sent an e-mail to the Center alleging, in relevant parts, that "the complainant has falsely listed Thomas Vangunten as the respondent, while acknowledging that Camp Creek Co., Inc. is the registrant of the names in question." NSIís Verification Response to the Center confirmed that Camp Creek Co., Inc. is the current registrant of all five domain names that are the subject of the Complaint, identifying Tom Vangunten only as the registrantís Administrative Contact. NSI further confirmed that its 4.0 Service Agreement was in effect and that the registrations of the domain names are in "Active" status.
On July 20, 2000, the Center notified the parties that "the registrant of record for the domain names is not the person specified in the Complaint as the respondent" and requested that the Complainant "submit an additional petition to the Complaint rectifying the name of the Respondent." Senco complied and, on or about July 31, 2000, filed a Petition to the Complaint amending all relevant parts of its Complaint to identify Camp Creek Co., Inc. as the Registrant of the disputed domain names and the proper Respondent in this case.
There then ensued some confusion or dispute as to the timeliness of the Respondentís Response, the particulars of which are immaterial because the Center resolved it in the Respondentís favor and accepted the Response as part of the record. The Center then proceeded to appoint the undersigned as the Sole Panelist to decide the case. The Sole Panelist finds that the administrative panel was properly constituted and appointed in accordance with the ICANN Rules and WIPOís Supplemental Rules.
4. Factual Background
The allegations and evidence in the record show as follows:
Senco has been in the business of manufacturing, distributing and selling pneumatically-powered tools to drive nails and staples for construction since 1951. Its products are distributed and sold worldwide. Senco is the owner of two registered trademarks: "SENCO" and "SENCO FASTENING SYSTEMS & DESIGN", which it has used continuously for more than five years following their registration.
In 1992, SENCO appointed Camp Creek Supply Co. of Floyd, Virginia 24091, as an authorized dealer of Sencoís product line of industrial pneumatic power tools. Camp Creek Supply Co.ís acceptance of this Appointment bears a signature which is identical to that of Thomas Vanguten on the Respondentís Response. The terms and conditions of the Appointment included the grant to the Dealer of a non-exclusive right to use Sencoís trademarks during the life of the Appointment. On August 24, 1998, a Mr. Bud Dunphy wrote on behalf of Senco to Camp Creek Supply Co., attention of Mr. Tom Vangunton [sic], rescinding the Appointment effective September 24, 1998. The Sole Panelist takes judicial notice of information publicly available at NSIís WHOIS website, which indicates that Senco.org was registered by Camp Creek on May19, 1999 and remains registered to Camp Creek.
On March 6, 2000, Camp Creek transferred, for the stated consideration of $1.00 and other, undisclosed, consideration, all assets of Camp Creek Co., including domain names, to an Alabama-based company, Nailzone, Inc. Much of the partiesí dispute focuses on the relationship among Camp Creek, Mr. Vangunten, and Nailzone, Inc. Since this dispute relates only to the rights to the four domain names which the Respondent has voluntarily relinquished, it is not necessary to resolve it.
On June 12, 2000, Camp Creek filed a Certificate in the Commonwealth of Virginia stating that it is a civic organization conducting its business under the assumed or fictitious name of South Eastern Nature Conservation Organization.
5. Partiesí Contentions
A. Complainant, who appears implicitly to assume that Respondent, Camp Creek Co., Inc. is either the same company or a successor-in-interest to its former authorized dealer Camp Creek Supply Co., asserts that because the dealership Appointment and permission to use Senco trademarks were terminated effective September 24, 1998, Respondentís registration and use of domain names incorporating the word "senco" constitute bad faith piracy and cybersquatting. Claimant further contends that Respondent has engaged in a pattern of such conduct, citing as evidence the findings in WIPO Case No. D2000-20013, as well as Respondentís alleged registration of "hittachi.com", a domain name similar to Hitachi, another manufacturer of pneumatic fastening products.
B. As previously noted, Respondent voluntarily relinquishes rights to SENCOTOOLS.COM, SENCOSTAPLERS.COM, SENCONAILS.COM, SENCOSTAPLES.COM, but insists that it has an absolute right to retain the registration to SENCO.ORG for the non-commercial use by its civic subsidiary, Southeast Nature Conservation Organization. Respondent further contends that there are many companies using "Senco" in their names, citing a number of domain names which use the word "Senco" with a variety of prefixes and suffixes.
6. Discussion and Findings
Under Paragraph 15(a) of the ICANN Rules, "a panel shall decide a complaint on the basis of the statements and documents submitted in accordance with Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the ICANN Policy places on a complainant the burden to prove each of the following elements:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no legitimate interest in respect to the domain name; and
(iii) that the domain name has been registered and used in bad faith.
With respect to the first element, the domain name SENCO.ORG is indisputably identical to one of Complainantís registered marks. Furthermore, in accordance with the Lanham Act, 15 U.S.C. ßß 1058 and 1059, Complainantís rights in the Senco mark have acquired "incontestable status" by virtue of continuous use of this registered mark for more than five years.
With respect to the second element, the Sole Panelist finds that, given the similarity of the names "Camp Creek Supply Co." and "Camp Creek Co., Inc. and the fact that Thomas Vangunten is the principal in both companies, the Respondent is either the same company or a successor-in-interest to the company that had formerly been an authorized dealer of Complainantís products. Therefore, the Sole Panelist agrees with Complainant that the termination of the dealership Appointment and the concomitant termination of Respondentís non-exclusive right to use Sencoís trademark deprived the Respondent of any legitimate justification for using the trademark.
Indeed, the chronology of Respondentís actions in the wake of the termination bears on the third element of Paragraph 4(a). Respondentís registration of domain names incorporating the word "Senco", including SENCO.ORG, a few months after the termination of the Appointment strongly suggests a malicious, retaliatory motive, which in the Sole Panelistís view, is sufficient to support a finding of bad faith.
It is apparent that Respondent is seeking to shield itself from that finding by purporting to be retaining the registration for SENCO.ORG "for use by itís [sic] subsidiary organization, South East Nature Conservation Organization, a civic organization," and characterizing this unspecified use as "non-commercial." It is true that Paragraph 4(c)(iii) of the Policy provides that "making a legitimate noncommercial or fair use of the domain name" is among the circumstances that can demonstrate a respondentís rights or legitimate interests in the domain name if - but only if - such circumstance "is found by the Panel to be proved based on its evaluation of all evidence presented." However, Respondentís conclusory assertion about its civic subsidiaryís intended use of the SENCO.ORG domain name is insufficient to support the finding required by Paragraph 4(c).
Paragraph 4(c) expressly references and directs respondentsí attention to Paragraph 5 of the Rules, which mandates that a "response ... shall [inter alia] [r]espond specifically to the statements and allegations contained in the complaint ... ." (Emphasis supplied). Thus, it was incumbent upon Respondent to meet the bad faith allegations of Complainant with specific and concrete facts about the ongoing or planned non-commercial use of SENCO.ORG by its civic subsidiary. Given the conspicuous absence of such facts, combined with the fact that Respondent registered that domain name more than a year before registering South East Nature Conservation Organization as its assumed or fictitious name, it is difficult to avoid the inference that the name was simply invented to provide Respondent with an acronym identical to Complainantís mark. Thus, far from exonerating Respondentís registration and use of that domain name, the creation of South East Nature Conservation Organization only adds further evidence of bad faith.
In sum, the panelist concludes that the Complainant has discharged its burden of proof with respect to each element of Paragraph 4(a) of the Policy.
Based on Respondentís relinquishment of all rights to four of the five disputed domain names and on the above findings and conclusions with respect to the fifth, it is hereby ordered that the following domain names be transferred to the Complainant, Senco Products, Inc.:
Natasha C. Lisman, J.D., F.C.I. Arb.
Dated: September 11, 2000
1. NSIís Verification Response does not include "Sencostaples.com" but lists "Sencostaplers.com" twice. It is fair to assume that this is a typographical error.
2. For this reason, Respondentís allegation that many companies use "senco" in their domain names is an irrelevancy. In any event, in the absence of any evidence of who these companies are and other circumstances, such as, e.g, whether or not they are authorized distributors or licensees of Complainant, Respondentís insinuation that their registration and use of those domain names are somehow inconsistent with Complainantís rights is unfounded.