WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Central Purchasing, LLC v. FIG Vietnam
Case No. D2007-0124
1. The Parties
The Complainant is Central Purchasing, LLC, Camarillo, California, United States of America, represented by Mark J. Rosenberg, United States of America.
The Respondent is FIG Vietnam, Ho Chi Minh City, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <harborfrieght.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2007. On February 1, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On February 2, 2007, Fabulous.com transmitted by email to the Center its verification response confirming that:
(a) it is the registrar for the disputed domain name;
(b) the Respondent is listed as the registrant of the disputed domain name;
(c) the contact details for the Registrant specified in the Complaint are correct;
(d) English is the designated language under the Registration Agreement for the disputed domain name; and
(e) the registration of the disputed domain name is subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy”).
The Center verified that the Complaint satisfied the formal requirements of 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 February 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2007.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 23, 2007. 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
According to the Complaint, the Complainant is a retailer of power tools, hand tools and related items throughout the United States of America, operating under the name “Harbor Freight Tools”. It has for “many years” provided its goods and services through a mail order catalogue and a website at “www.harborfreight.com”.
Amongst other things, the Complainant has registered in the United States of America the following trademarks:
(a) Trademark No. 1,530, 291 for HARBOR FREIGHT and device consisting of two ships for mail order services in respect of hand and power tools and tool accessories;
(b) Trademark No. 2,264,787 for HARBOR FREIGH TOOLS for mail order catalog and retail store services featuring machinery, clothing, furniture, safety equipment and automotive equipment;
(c) Trademark No. 2,394,977 for HARBOR FREIGHT for retail stores and mail order services in respect of hand and power tools and tool accessories.
Each of these trademarks was filed before the earliest possible registration date of the disputed domain name. Each was also registered on the basis of first use in commerce dating back to 1988, at least some 11 years before the earliest possible registration date of the disputed domain name.
The disputed domain name resolves to a website which states that it is “For resources and information on Air compressor and Power Tools”. Many of the links under various types of “tool” references such as Power Tools, Automotive Tools, Discount Tools and Discount hand tools produce listings of sponsored links for retailers of products other than the present Complainant. Under the heading for “Harbor Freight”, there are links to various freight providers, mostly in Australia and under the heading for “Harbor Freight Tools” (correctly spelled) the Sponsored Results were empty at the time of writing this decision.
5. Discussion and Findings
There has been no Response. The Center has forwarded the Complaint to the Respondent by email and courier to the addresses which the Registrar, Fabulous.com, has confirmed are the correct details for the domain name as registered. The Registration Agreement, by which the Respondent registered the disputed name, obliges the Respondent to keep “current, complete and accurate” the registrant’s name, postal address, e-mail address, voice telephone number and, where available, fax number. Consequently, the Panel is satisfied that the Center has taken all reasonable steps to bring the Complaint to the Respondent’s attention and the Respondent has had an adequate opportunity to put his, her or its case in rebuttal of the Complaint.
In the absence of exceptional circumstances, paragraphs 5(e) and 14(a) of the Rules direct the Panel to decide the dispute on the basis of the Complaint where the Respondent does not submit a Response. This is not a simple “rubber stamping”, however, as paragraph 15(a) directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.
Accordingly, under paragraph 4(a) of the Policy the Complainant has the burden of proof in respect of the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel deals with each of these elements in turn.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it?
The Complainant has demonstrated ownership of at least the three trademarks registered in the United States of America referred to in section 4 above.
That is sufficient to satisfy the first part of this inquiry. The fact that the trademarks are registered in the United States of America and for relatively limited classes of services is not relevant to this part of the inquiry as the question is simply one of comparing the disputed domain name to the relevant trademarks. See for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. Such limitations may become relevant, if at all, under the second and third limbs of the inquiry under paragraph 4(a) of the Policy discussed below.
Apart from the addition of the gTLD “.com”, the disputed domain name is identical to Trademark No. 2,394,977. This difference can be disregarded for the purposes of the Policy. See for example Telstra Corporation Ltd v. Ozurls, WIPO Case No. D2001-0051, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252, Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493. Similarly, HARBOR FREIGHT is the prominent and distinctive component (in the sense of identifying the source of goods and services designated by the trademarks) of the other two trademarks. Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to the trademark rights proved by the Complainant.
B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
These are not an exhaustive enumeration of rights or legitimate interests, they are examples only.
In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.
The Complainant has not authorised the Respondent to use the domain name. The domain name is not derived from the Respondent’s own name.
Arguably, in some contexts, the expression “Harbor Freight” could be descriptive. That is not, however, the term that has been registered as the disputed domain name. Moreover, the Respondent is using it for a website that provides links to services and products provided by persons unrelated to the Complainant which are the same as, of the same nature as, those covered by the Complainant’s registered trademarks in the United States of America. Those services and products, for the most part, are not aptly described by the expression “Harbor Freight” (which in any event is not the expression used in the disputed domain name) and appear to have relevance to such services and products only by reason of the Complainant’s use of its trademarks in connection with similar services and products.
Cumulatively, these factors raise a clear prima facie case that the Respondent does not have any rights or legitimate interests in the domain name.
The Respondent has not sought to rebut that prima facie case in any way. In particular, the Respondent has not sought to advance any right or entitlement to use either the expression Harbor Freight or the misspelled expression Harbor Frieght in Viet Nam, where the Respondent is apparently located, or Australia, which appears to be a focus of the Respondent’s activities.
Accordingly, the Panel finds that the Complainant has sufficiently established for the purposes of the Policy in the circumstances of this case that the Respondent does not have any rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that the disputed Domain Name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:
“(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(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.”
The first salient consideration on this part of the dispute is that the disputed domain name is identical to the distinctive component of the Complainant’s registered trademarks save that the letters “i” and “e” have been transposed.
The second salient consideration is that the Respondent is using the disputed domain name for a website which principally provides links to services competitive with the Complainant’s services, although the expression “Harbor Freight” (whether spelled correctly or misspelled) is not apt to describe such services.
In these circumstances, the Complainant contends that the Respondent clearly registered the disputed domain name as a form of cybersquatting known as “typosquatting”. See for example ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 and Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517 which, amongst other things, recognise that typosquatting is presumptively bad faith.
The third salient consideration is that the Respondent has not made any attempt to rebut the Complainant’s allegations.
Given the clear lack of connection between the disputed domain name and the Respondent or with the goods and services primarily offered at the Respondent’s website (apart from the association with the Complainant’s business and trademarks), there can be little doubt that the disputed domain name was registered and is being used in bad faith.
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 name, <harborfrieght.com> be transferred to the Complainant.
Warwick A. Rothnie
Dated: April 4, 2007