WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chicago Pneumatic Tool Company LLC v. Tool Gopher
Case No. D2007-0330
1. The Parties
The Complainant is Chicago Pneumatic Tool Company LLC, Rock Hill, South Carolina, United States of America, represented by Fredrik Lund, United States of America.
The Respondent is Tool Gopher, Murietta, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <chicagopneumatictools.net> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2007. On March 6, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On March 7, 2002, Go Daddy Software 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 and technical contacts. 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 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2007.
The Center appointed Dana Haviland as the sole panelist in this matter on May 7, 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
Complainant has submitted a copy of United States Patent and Trademark Office records evidencing that the Complainant is the registered owner of United States Trademark registration number 18789515, registered on February 21, 1995, for the word mark CHICAGO PNEUMATIC in connection with various types of power tools (the “Trademark”). Complaint, Annex 3. Complainant’s primary website is located at “www.chicagopneumatic.com” (also at “www.cp.com”). Complaint, paragraph 12.
Respondent registered the domain name <chicagopneumatictools.net> (the “Domain Name”) on September 9, 2006. Complaint, Annex 1. The Domain Name links to a website with advertisements and links to numerous other websites selling tools, including tools sold by competitors of Complainant. Complaint, Annex 5.
On December 1, 2006, and March 1, 2007, Complainant’s attorney sent Respondent cease and desist letters advising Respondent of Complainant’s rights to the CHICAGO PNEUMATIC trademark and requesting transfer of the Domain Name to the Complainant. Complaint, Annex 4.
In emails dated March 1 and 2, 2007, the Respondent offered to sell the Domain Name to the Complainant, suggesting Complainant make a “generous offer” in order to avoid “the legal cost that Chicago Pneumatic would have to endure” if it pursued its legal rights to the Trademark. Complaint, Annex 6. Respondent’s correspondence to Complainant regarding the sale of the Domain Name did not contain any assertion of an independent right or interest in the CHICAGO PNEUMATIC trademark.
5. Parties’ Contentions
Complainant Chicago Pneumatic contends that its business includes development, assembly, and marketing of power tools and equipment, including but not limited to pneumatic industrial tools. Complainant’s products are sold through a worldwide sales and service network.
Complainant contends that it is the owner of various registered trademarks in many countries around the world, including United States Trademark registration number 1879515 for the word mark CHICAGO PNEUMATIC 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 (the “Trademark”).
(1) Identical or confusingly similar
Complainant contends that the Domain Name is virtually identical to the Chicago Pneumatic Trademark, corporate name, and domain name. The only difference is that the descriptive word “tools” has been added to the Trademark. The addition of nothing more than a descriptive word to the trademark portion of a domain name justifies a finding of confusing similarity.
(2) Rights or legitimate interests
Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name. Respondent, who is not affiliated or associated with or authorized by Complainant, registered the Domain Name many years after the Trademark was registered. Respondent is not licensed or authorized by Complainant to register or to use any domain names incorporating any trademark of Complainant.
Complainant contends that the Respondent, to Complainant’s knowledge, has neither used nor prepared to use the Domain Name in connection with a bona fide offering of goods or services before any notice to it of this dispute. Respondent was given notice of the dispute via a cease and desist notice on December 1, 2006. Neither prior to nor since notice of the dispute did Respondent use the Domain Name in connection with a bona fide offering of goods or services, or make demonstrable preparations to do so. The website that is associated with the Domain Name consists of a series of sponsored links to third party products and services. Some of the links lead to websites that sell products of Complainant’s competitors. This does not constitute bona fide use of the Domain Name, and Respondent therefore cannot claim any legitimate interest in the Domain Name under paragraph 4(c)(i) of the Policy.
Complainant contends that the Respondent has not been commonly known by the Domain Name, and therefore cannot claim any legitimate interest in the Domain Name under paragraph 4(c)(ii) of the Policy.
Complainant contends that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name, and therefore cannot claim any legitimate interest in the Domain Name under ICANN Policy 4(c)(iii). If Respondent somehow is making a “use” of the Domain Name, such use is not noncommercial, because the website to which the Domain Name resolves contains links to various commercial websites to which Internet users are diverted. Moreover, the Domain Name is identical or confusingly similar to Complainant’s Trademark, corporate name, and domain name, and creates a false impression that Respondent or Respondent’s “website” is somehow associated with, or endorsed by, Complainant, and therefore cannot constitute fair use.
Complainant contends that the Respondent has not come forward with concrete evidence in support of any assertions that Respondent has any right or legitimate interest in respect of the Domain Name.
(3) Registered and used in bad faith
Complainant contends that paragraph 4(b)(i) of the Policy states that bad faith exists when the domain name was registered primarily for the purpose of selling it to the complainant or a competitor for more than the documented out-of-pocket expenses related to the domain name. In the instant case, Respondent indicated in an email on March 2, 2007 that “when I mean make an offer I am not talking about the $9.99 fee I paid, it would have to be an offer worth my time. I have dealt with trademarks before…so I know the legal costs that Chicago Pneumatic will endure to pursue this, so in other words it would probably be in the best interest of your client to make me a generous offer instead of further legal fees”. Respondent’s offer or indication of its willingness to sell the domain name for a generous amount exceeding its $9.99 registration cost, and its statement that it would be cheaper for Complainant to pay such generous amount to Respondent rather than commencing legal action and incurring legal fees, evidences Respondent’s bad faith.
Complainant contends that paragraph 4(b)(ii) of the Policy states that bad faith exists when “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”. Respondent in the instant case has registered, in addition to the Domain Name, other domain names that incorporate third-party trademarks and/or corporate names. For example, Respondent has registered the domain names <kleintoolstore.com>; <vimhandtool.com>; and <vimhandtools.com>. (Klein and VIM are trademarks and/or corporate names of third party tool manufacturers.) Registration of three or more domain names incorporating third party trademarks is sufficient to constitute a pattern of bad faith conduct. Based on Respondent’s pattern of registering domain names containing trademarks and/or corporate names of others, it can, based on Section 4(b)(ii) of the Policy and relevant Panel decisions, be inferred that Respondent has registered the Domain Name in order to prevent Complainant from using its mark in corresponding domain names. Therefore, Respondent in the instant case has registered and is using the Domain Name in bad faith.
Complainant contends that paragraph 4(b)(iv) of the Policy states that bad faith exists when, “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”. In the instant case Respondent is in fact using the Domain Name by diverting Internet users to other on-line locations for commercial gain by creating a likelihood of confusion with the Complainant’s Trademark.
Complainant contends that the subparagraphs of paragraph 4(b) are not intended to be the exclusive criteria of bad faith use. The Domain Name is so obviously connected with Complainant that the use or registration by anyone other than Complainant suggests opportunistic bad faith. Respondent’s bad faith is also evidenced by the fact that Respondent had actual or constructive knowledge of the Trademark (and corporate name and domain names) at the time that Respondent registered the Domain Name. Even if Respondent did not have actual knowledge of Complainant’s Trademark, Respondent should have had constructive knowledge by virtue of Complainant’s Trademark being registered and appearing in easily searchable trademark databases (including the United States Patent & Trademark Office’s website). Therefore, Respondent has registered and is using the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Respondent has not objected to nor provided any evidence in opposition to Complainant’s assertion and evidence of its rights to the CHICAGO PNEUMATIC Trademark.
The Domain Name includes Complainant’s Chicago Pneumatic Trademark plus the word “tools”. The addition of the generic term “tools” to the trademark portion of the Domain Name does not preclude a finding of confusing similarity. See Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0041; Nikon Inc. and Nikon Corporation v. Photocom Korea, WIPO Case No. D2000-1330. See also Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (“Neither the addition of an ordinary descriptive word...nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, Paragraph 4(a)(i) is satisfied”).
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights, within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant states that it has not licensed or otherwise authorized Respondent to register any domain name incorporating the Trademark and that Respondent has no independent rights or interests with respect to the Domain Name. The Domain Name resolves to a commercial website with advertisements and sponsored links to other commercial websites selling tools, some in competition with Complainant. Such use of Complainant’s Trademark does not constitute a bona fide offering of goods or services within the meaning of Paragraph 4(c) (i) of the Policy. “Use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or service.” Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809.
Nor does such use constitute a “legitimate noncommercial or fair use under Paragraph 4(c)(iii) of the Policy. See LTD Commodities LLC v. Mahmoud Nadim, NAF FA0311000207281 (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy, paragraph 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy, paragraph 4(c)(iii), because it routes unsuspecting Internet users, who are seeking Complainant, to a website containing a series of links to commercial sites, presumably for referral fees”). The Panel in Unilever N.V. v. Kentech, Inc., WIPO Case No. D2005-1021 addressed this issue: “Based on the evidence presented, the Panel can only conclude that the disputed domain name has been and is being used for diverting Internet users to sponsored links. The purpose of using the Complainant’s broadly recognized UNILEVER trademark in the <unilevericecream.com> domain name has been and is to capture consumers who are seeking the Complainant’s products, or other information about the Complainant, and to redirect them to other websites. The Panel does not consider such use of a domain name to be either legitimate or in good faith”.
Respondent has not asserted any right or interest and has presented no evidence in opposition to Complainant’s assertions in this regard. “[W]here 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.” Diebold, Incorporated v. Paul Terwilliger, WIPO Case No. D2003-0416.
For the reasons discussed above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel finds that in this case Respondent’s offer to sell the Domain Name to the Complainant for a “generous amount” in order to avoid the costs of litigation is evidence of bad faith registration and use of the Domain Name under paragraph 4(b)(i) of the Policy.
In Hammond Suddards Edge v. Westwood Guardian Limited, WIPO Case No. D2000-1235, the Panel addressed a similar factual situation: “[The respondent’s] strategy is clear. He has pitched the buy-back price at lower than the likely costs of initiating litigation or UDRP proceedings, in the expectation that the Complainant would choose to pay him off rather than go to the extra effort and expense of filing a formal Complaint. To its credit, …the Complainant was not prepared to do so. The Panelist concludes that the domain name has been registered and is being used in bad faith and the requirements of Paragraph 4(a)(iii) of the Policy are met.” See also International Capital & Management Company, LLP, Cancer Treatment Centers of America, Inc. v. Key of Destiny, Inc., WIPO Case No. D2005-0303 (“Respondent’s immediate and consistent reply to Complainant’s objection to its use of the disputed domain name was to offer to sell it to Complainant, accompanied by explicit threats of protracted and expensive litigation as an alternative. In its e-mail replies to Complainant, Respondent made no effort to justify its use of the disputed domain name. This course of conduct strongly suggests that Respondent registered the disputed domain name with the intention to sell it to Complainant at the first opportunity for a price in excess of its out-of-pocket expenses…”).
The Panel does not find evidence of bad faith in this case pursuant to paragraph 4(b)(ii) of the Policy. The Complainant alleges that Respondent has engaged in a pattern of registering domain names incorporating trademarks of other tool companies, and provides evidence of Respondent’s registration of three other tool related domain names, but does not provide evidence with respect to any underlying trademarks. Also, in view of Complainant’s own prior existing domain names as alleged in the Complaint, Respondent’s registration of the Domain Name does not give rise to an inference that its registration was intended to prevent the Complainant from reflecting its trademark in a corresponding domain name as required by paragraph 4(b)(ii) of the Policy.
The Panel does find that Complainant has shown bad faith registration and use under paragraph 4(b)(iv) of the Policy. Respondent’s Domain Name leads to a website consisting of advertisements and sponsored links to various tool sellers, including competitors of Complainant. It thus appears that Respondent has used the Domain Name in order to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the products or services offered there. As stated in Joe David Graedon v. Modern Limited - Cayman Web Development, WIPO Case No. 2003-0640, “the Respondent’s domain name points to a website which is a mere collection of links to other websites…[T]his website is obviously merely a vehicle for generating advertising revenue. By using the domain name, the Respondent therefore has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademarks. Policy, paragraph 4 (b)(iv) is therefore satisfied”.
In Deutsche Telekom AG v. Spiral Matrix, WIPO Case No. D2005-1145, the panel agreed that such activity constitutes bad faith: “As regards Respondent’s use of the domain names, it appears that under the websites that are connected with the Respondent’s domain names there is a list of sponsored links, thereby allowing the Respondent to make commercial gain. As stressed in Deutsche Telekom AG v. WWW Enterprise Inc., WIPO Case No. D2004-1078, ‘it is now a well known practice to display on a web page or search engine various links to other commercial websites, every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections.’ Therefore…it seems evident that the Respondent has registered and used the domain names with the intent to attract to his websites internet users looking for the products and services of Complainant, thereby making commercial gain by the sponsored links.” Similarly, in Bilfinger Berger AG v eService Finance Dept., WIPO Case No. D2003-0827, the Panel noted that “it appears that the Respondent, by using the Domain Name…tried to attract consumers seeking the Complainant’s official website to a website that did not correspond to their expectations, and from which they could be diverted to on-line locations without any relation whatsoever with the Complainant. In other words, the Respondent attempted to misleadingly divert Internet traffic that was initially intended for the Complainant…The websites to which the links in the directory resolve are commercial sites”. Such use of a domain name evidences bad faith under paragraph 4(b)(iv) of the Policy.
In view of the findings of bad faith under paragraphs 4(b)(i) and 4(b)(iv) of the Policy, the Panel has not considered it necessary to determine the sufficiency of the Complainant’s other bad faith allegations not specifically provided for in paragraph 4(b) of the Policy.
In conclusion, the Panel finds that the Domain Name is confusingly similar to the Complainant’s Trademark, that the Respondent has not asserted or established any rights or interests in respect of the Domain Name, and that the Respondent has registered and used the Domain Name 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 <chicagopneumatictools.net> be transferred to the Complainant.
Dated: May 22, 2007