WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Truform Tool & Equipment, Inc., J&J Carbide & Tool, Inc. v. Sam Psaltakis, Lake & Lake Solutions, LLC
Case No. D2003-0139
1. The Parties
The Complainants Truform Tool & Equipment, Inc. and J&J Carbide & Tool, Inc. of Alsip, Illinois, United States of America; are represented by Collins & Collins, United States of America.
The Respondents are Sam Psaltakis, Lake & Lake Solutions, LLC of Oak Brook, Illinois, United States of America.
2. The Domain Names and Registrar
The disputed domain names <jandjcarbidetool.com> and <truformequipment.com> (the "Domain Names") are registered with Melbourne IT trading as Internet Name Worldwide (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2003. On February 25, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names at issue. On February 26, 2003, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Lake & Lake is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 3, 2003. 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"), 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), 4(a) and 5(a), the Center formally notified the Respondents of the Complaint, that the proceedings commenced on March 11, 2003, as well as the due date of March 31, 2003, for the Response. The Respondents did not submit any response. Accordingly, the Center notified the Respondentsí default on April 2, 2003.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on March 8, 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
As demonstrated by certificates of incorporation annexed to the Complaint, J&J Carbide Tool, Inc. and Truform Tool & Equipment, Inc. are Complainantsí corporate names. Complainants further assert that they have used J&J Carbide Tool, Inc. and Truform Tool & Equipment, Inc. in commerce to sell products and services since June 5, 1964, [sic, 1974] and July 28, 1997, respectively. Furthermore, Complainants had advertised their Domain Names since October 26, 1999, for J&J Carbide Tool, Inc. and November 2, 1999, for Truform Tool & Equipment, Inc. The Domain Names were intended to, and did, point to Complainantsí websites depicting Complainantsí products and services.
5. Partiesí Contentions
The Domain Names are intended to be Complainantsí corporate names.
Neither Sam Psaltakis (identified as the administrative contact for the registrant) nor Lake & Lake LLC (identified as the registrant of the Domain Names) have any rights or legitimate interests in the Domain Names. Complainants hired Lake & Lake to perform certain computer and information technology services, including building websites and obtaining the Domain Names for their businesses. Complainants never authorized Respondents to register the Domain Names as owned by Lake & Lake. In fact, Respondents were instructed to register the Domain Names as owned by Complainants. Lake & Lake is a computer-consulting firm that has never engaged in or had future plans to engage in the tool manufacturing or equipment distribution business. These are the businesses of Complainants and, thus, Lake & Lake has no legitimate use for the Domain Names.
Lake & Lake registered and are using the Domain Names in bad faith. The Domain Names point to Complainantsí websites, and Sam Psaltakis and Lake & Lake have intentionally used the Domain Names to make Complainantsí websites inoperative in order to injure Complainantsí businesses and to prevent Complainantsí customers from accessing the sites. When Mr. Thomas Pavlopoulos, an officer of Complainants, learned that Lake & Lake was controlling the Domain Names, he directed his attorney to send a letter to Sam Psaltakis at Lake & Lake demanding that he transfer ownership of the Domain Names to Complainants. Respondents wrongfully and in bad faith refused to transfer the ownership and have continued to make the Complainantsí websites inoperable through their control over the Domain Names. In addition Lake & Lake has attempted to use its possession of the Domain Names to extort sums of money from the Complainants, when in fact no sums of money are due to Lake & Lake.
The Domain Names be transferred to Complainants.
The Respondents did not reply to the Complainantsí contentions. Accordingly, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this dispute solely on the basis of Complainantsí representations.
6. Discussion and Findings
This dispute is borne out of a relationship between Complainants and Lake & Lake concerning certain computer and information technology services that Lake & Lake was to have provided Complainants. According to Complainants, those services included building certain websites and registering the subject Domain Names. Complainants have framed their Complaint as one under the Policy. The evidence of record (provided solely by Complainants) however, suggests that the parties to this proceeding may have unresolved issues relating to the computer and information technology services, which have nothing to do with the Domain Name issues covered by this proceeding. This proceeding is not the forum for resolving those issues. Complainants are only entitled to relief under paragraph 4(a) of the Policy, if they can prove for each of the Domain Names, that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has a right; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
It is contested that for 29 and 7 years respectively, Complainants have used "J & J Carbide Tool, Inc." and "Truform Tool & Equipment, Inc." in selling their products and services and, thus, they have established trademark rights in their company names. For the reasons that follow, the Panel finds that the Domain Names are identical or confusingly similar to Complainantsí rights.
The Domain Name <jandjcarbidetool.com> is essentially identical to "J & J Carbide Tool. It is well accepted that the addition of the generic top-level domain (gTLD) ".com" has no effect on whether the domain name/mark is identical or confusingly similar to a Complainantís mark. See Viacom Inc. v. Erik Peterson, WIPO Case No. D2001-0346 (June 3, 2001). Similarly, the fact that the ampersand has been elaborated to "AND" has no legal significance on whether the Domain Name is identical or confusingly similar to the trade name insofar as both are interchangeable. Furthermore, the ampersand cannot be used in domain names. See PG&E Corporation v. Samuel Anderson and PGE, WIPO Case No. D2000-1264 (November 22, 2000).
The Domain Name <truformequipment.com> is confusingly similar to "Truform Tool & Equipment." It is insignificant that the Domain Name includes ".com" and omits the ampersand and the word "tool." As explained above, the addition of ".com" is without legal significance. The Domain Name appropriates the distinctive portion of Complainantsí trade name. The idea suggested by <truformequipment.com> is that the goods offered in association with that domain are made or sold by Truform Tool & Equipment. "All that is necessary is that the domain name misappropriate sufficient textual components from the mark(s), whether registered or unregistered, such that an ordinary Internet user who is familiar with the goods or services distributed under the mark(s) would upon seeing the domain name likely think that owing to the visual and/or phonetic similarity between the mark(s) and the domain name that an affiliation exists between the site identified by that domain name and the owner or licensed user of the mark(s)." American Home Products Corp. v. Ben Malgioglio, WIPO Case No. D2000-1602 (February 19, 2001).
Insofar as Complainants hired Respondents to obtain domain names for its businesses, it is inevitable that the Domain Names would be identical or at least confusingly similar to the marks Complainants have used in their businesses.
The Panel holds that Complainants have satisfied element (i) above.
B. Rights or Legitimate Interests
According to Complainants Lake & Lake is a computer-consulting firm that has not been known by either of the Domain Names. Furthermore, Complainants assert that Respondents have neither engaged, nor do they have future plans to engage, in the tool manufacturing or equipment distribution business, like Complainants. Respondents have not asserted any rights or legitimate interests in the Domain Names, nor have they contested Complainantsí allegations on this issue. In fact, in correspondence to Complainants, Respondents have indicated a willingness to transfer the Domain Names to Complainants upon the resolution of certain "outstanding issues." Where a Complainant asserts that a Respondent has no rights or legitimate interests and where Respondent fails to contest such assertions, the Panel is entitled to infer that Respondent has no such rights or interests. See, e.g., Ronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011 (March 11, 2000); Alcoholics Anonymous World Services v. Lauren Raymond, WIPO Case No. D2000-0007 (March 6, 2000).
The Panel holds that Complainants have satisfied element (ii) above.
C. Registered and Used in Bad Faith
The final element that Complainants must prove is that the Domain Names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent 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 it has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent 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 Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location or of a product or service on its website or location.
Respondents were hired to perform certain computer and information technology services for Complainants including, building their websites and obtaining the Domain Names. It is undisputed that without Complainantsí knowledge or consent, Respondents registered the Domain Names in the name of Lake & Lake as opposed to Complainantsí names despite the fact that Respondents were registering them for Complainants and Complainants instructed Respondents to register the Domain Names under Complainantsí names. Furthermore, at the time Respondents registered the Domain Names, Complainants had been advertising the Domain Names to their customers for a couple of years. It appears from the record that Respondents knew, or should have known this. In addition to controlling surreptitiously the ownership of the Domain Names, Respondents inactivated Complainantsí websites so customers were unable to access them. Holding Complainantsí Domain Names and websites hostage, Lake & Lake wrote Complainantsí counsel stating:
The following is a list of the outstanding issues that need to be resolved before Lake & Lake Solutions will work on changing the domain information.
1. All outstanding balances to Lake & Lake Solutions, L.L.C. from J & J Carbide & Tool, Inc. have been paid.
2. All outstanding balances to Lake & Lake Solutions, L.L.C. from Truform Tool & Equipment, Inc. have been paid.
3. The personal computer still in the possession of Tom Pavlos which is Lake & Lake Solutions, L.L.C. property is returned to Lake & Lake.
4. All fees and consulting dollars associated with the domain name registration transfer are paid up front by certified check.
When these outstanding issues are resolved Lake & Lake Solutions will promptly take care of the domain name registrations and transfer them to the appropriate new contact and address information that is provided.
Under paragraph 4(b)(iii) of the Policy, a finding by the Panel that Respondent has "registered the domain name primarily for the purpose of disrupting the business of a competitor" is evidence of registration and use in bad faith. Though it could be argued that Complainants are not "competitors" in the sense that the parties do not sell competing products or services, the definition of competitors has not been so restricted in the Policy. The Panel concurs with the broader meaning that was assigned to the word "competitor" in Mission Kwa Sizabantu v. Benjamin Rost, Case No. D2000-0279 (June 7, 2000) ("competitor" is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor").
Respondents registered the Domain Names knowing they were identical or substantially similar to Complainantsí trade names, they deliberately assumed ownership and control over the Domain Names in contrast to their instructions from Complainants, and they surreptitiously maintained that control and the control over the websites knowing (or at least they should have known) that such actions would disrupt Complainantsí business. Respondents had the opportunity to present reasons why they registered and used the Domain Names as they did, but they chose not to. Accordingly, the Panel finds that Respondentsí activities evinced bad faith in the registration and use of the Domain Names. Moreover, the Panel finds that those activities were carried out with the purpose of disrupting Complainantsí business that is further evidence of bad faith.
The Panel holds that Complainants have satisfied element (iii) above.
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, <jandjcarbidetool.com> and<truformequipment.com> be transferred to the Complainants.
Harrie, R. Samaras
Date: April 22, 2003