ADMINISTRATIVE PANEL DECISION
Chicago Pneumatic Tool Company v. Kentech, Inc, a.k.a Titan Net
Case No. D2006-0345
1. The Parties
The Complainant is Chicago Pneumatic Tool Company, Rock Hill, South Carolina, United States of America, represented by Atlas Copco North America Inc., United States of America.
The Respondent is Kentech, Inc., a.k.a Titan Net, Eldoret, Kenya.
2. The Domain Names and Registrars
The disputed domain names <chicagopneumatic.name> and <chicagopneumatic.org> are registered with Intercosmos Media Group d/b/a directNIC.com Domain Contender, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2006. On March 21, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com Domain Contender, LLC a request for registrar verification in connection with the domain names at issue. On March 22, 2006, Intercosmos Media Group d/b/a directNIC.com Domain Contender, LLC 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 March 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on April 18, 2006.
The Center appointed Daniel Peña as the sole panelist in this matter on April 25, 2006. 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 was incorporated in the State of New Jersey, United States of America, in 1901. Its business includes development, assembly and marketing of power tools and equipment, including but not limited to pneumatic industrial tools, constructions tools, demolition equipment and assembly system tools.
Complainant’s products are sold through a world-wide sales and service network. It is also the owner of various registered trademarks and service marks in many countries around the world including the United States Trademark registration number 1879515 for the word mark Chicago Pneumatic. This mark is used in commerce since 1919, in connection with power operated impact wrenches, power operated screwdrivers, power operated nutrunners, power operated compression tools, power drills, power operated abrasive tools, power operated hammers, power operated demolition tools, power drills for rock, power operated tampers, power operated vibrating machines, power operated pumps, stationary motors for power operated machines and tools, air compressors and air lines, mechanical balancers, power operated hoists, power operated cutting tools, power operated riveting tools, riveting bucking bars, power operated etching tools, power operated saws, power operated hedge trimmers, hydraulic boom mounted concrete breakers, hydraulic pumps, power operated jacks, power operated polishing tools, accessories and parts for any of the foregoing.
5. Parties’ Contentions
The disputed domain names are identical or confusingly similar to Complainant’s registered trademarks, as well as to Complainant’s corporate name and domain names.
Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain dames. Respondent is in no way licensed or authorized by Complainant to use its trademarks.
Moreover the Complainant argues that the Respondent has neither used, nor prepared to use, the disputed domain names in connection with a bona fide offering of goods or services before notice to it of this dispute, and therefore cannot claim any legitimate interests in the disputed domain names.
Respondent has not been commonly known by the disputed domain names and therefore cannot claim any legitimate interest in the domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
This Panel is satisfied that the Center took all steps necessary to notify the Respondent of the Complaint and the commencement of these proceedings, and that the failure of the Respondent to furnish a Response to the Complaint is not due to any omission by the Center.
According to paragraph 4(a) of the Policy the Complainant must prove each of the following:
(i) That the domain names registered by the Respondent are identical or confusingly similar to the trademarks or service marks in which the Complainant has rights;
(ii) That the Respondent has no rights or no legitimate interests in respect of the domain names; and
(iii) That the domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s trademarks.
The Panel finds that the Complainant has provided proof of its rights to several trademarks including the United States Trademark registration number 1879515 for the word mark CHICAGO PNEUMATIC.
This mark is used in commerce since 1919, in connection with power operated equipment.
The suffixes ‘.name’ and ‘.org’ are to be disregarded in assessing the confusing similarity between the domain names and the trademarks.
The Panel finds that Respondent’s domain names are identical to Complainant’s trademarks.
B. Rights or Legitimate Interests
This Panel notes that Complainant has demonstrated prima facie that none of the examples regarding the rights or legitimate interests set forth in Paragraph 4(c) of the Policy are applicable here.
It does not appear that Respondent is or has been making a bona fide use of the domain names before receiving notice of this dispute. Instead, the websites to which the domain names refer display sponsored links, unrelated to the Complainant’s activities, and provide links to services in the field of travel, financial planning or lifestyle. In addition it does not appear that the term ‘Chicago Pneumatic’ is the name of Respondent or that it is commonly used in trade to identify the Respondent.
Based on these circumstances, combined with the adverse inference drawn by Respondent’ failure to respond to the Complaint, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
(i) The fact that Respondent registered the infringing domain names, which are virtually identical to Complainant’s trademark and corporate name, indicates that Respondent had actual knowledge of Complainant’s activities and trademark.
(ii) The Respondent seems to have registered, in addition to the disputed domain names a wide range of domain names that incorporate third party trademarks and/or corporate names. Respondent’s bad faith pattern of registering trademarks of others is evidenced by prior WIPO UDRP decisions quoted by the Complainant: Unilever N.V. v. Kentech, Inc., WIPO Case No. D2005-1021; Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890; Bart van den Bergh Merk-Echt BV v. Kentech Company Ltd., WIPO Case No. D2005-0127; Enterprise Rent-A-Car Company v. Kentech Company Ltd. In these decisions panels have found bad faith on the part of Respondent and transferred the domain name(s) at issue.
(iii) Based on Respondent’s pattern of registering domain names containing third parties’ trademarks and/or corporate names the Panel concludes that Respondent has registered the infringing domain names in order to prevent Complainant from using its mark in corresponding domain names.
(iv) Further, the disputed domain names create a likelihood of confusion with Complainant’s trademark, corporate name, and domain names as to the source, sponsorship, affiliation, or endorsement of the disputed domain names. Internet visitors who enter the Internet address “www.chicagopneumatic.name” or “www.chicagopneumatic.org”, expect to arrive at Complainant’s website. However, they are diverted to another online location.
Therefore the Panel concludes that the Respondent has registered and is using the domain names in bad faith within the meaning of paragraph 4(b) of the Policy.
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 <chicagopneumatic.name> and <chicagopneumatic.org> be transferred to the Complainant.
Dated: May 5, 2006