WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Black & Decker Corporation v. Deckerandblack
Case No. D2007-1581
1. The Parties
Complainant is The Black & Decker Corporation (hereinafter “Black & Decker”), Towson, United States of America, represented by Speechly Bircham LLP, United Kingdom of Great Britain and Northern Ireland.
Respondent is Deckerandblack, Blackpool, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <deckerandblack.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2007. On October 26, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On October 26, 2007, Tucows transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint electronically on November 5, 2007. The amendment bore signature by Complainant’s attorney incorrectly dated October 25, the same date as the original Complaint filing. The Center verified that the Complaint, together with the amendment, 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 Respondent of the Complaint, and the proceedings commenced on November 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 27, 2007.
The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on November 30, 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.
The Panel has considered and accepted Complainant’s amendment received November 5, 2007, despite the incorrect dating of counsel’s signature.
4. Factual Background
Black & Decker relies on numerous trademarks and registrations worldwide. Based on the voluminous annexes to the Complaint in this summary proceeding, including trademark records from the UK Intellectual Property Office, it appears that Black and Decker is holder of these registrations. Among Complainant’s trademarks are the following registrations and applications for European Community Marks and Trademarks registered in the United Kingdom of Great Britain and Northern Ireland under a variety of classes:
E1239201 BLACK & DECKER WO 1307.1999 Registered;
E3321437 BLACK & DECKER WO 20.08.2003 Registered;
E4343083 BLACK & DECKER WO 16.03.2005 Registered;
E4343109 BLACK & DECKER DW 16.03.2005 Registered;
E4450367 BLACK & DECKER DW 13.05.2005 Registered;
E4453239 BLACK & DECKER WO 13.05.2005 Registered;
E4913547 BLACK & DECKER DW 16.02.2006 Registered;
E5670658 BLACK & DECKER WO 26.01.2007 Withdrawn;
E5673462 BLACK & DECKER DW 26.01.2007 New Application;
E5786355 BLACK & DECKER WO 15.03.2007 New Application;
795994 BLACK & DECKER WO 29.09.1959 Registered;
2001460 BLACK & DECKER WO 31.0.1994 Registered;
2105345 BLACK & DECKER DW 17.07.1996 Registered;
1483792 BLACK & DECKER AUTO FEED PLUS WO 26.11.1991 Registered;
1497492 BLACK & DECKER COMPACT WO 10.04.1992;
2015080 BLACK & DECKER COMPACT POWER WO 23.03.1995;
2224444 BLACK & DECKER HEDGE HOG WO 03.03.2000;
1542386 BLACK & DECKER HOVERMASTER WO 21.07.1993;
1471942 BLACK AND DECKER LAWNMASTER WO 30.07.1991;
E973701 BLACK & DECKER POWER COMBI WO 02.11.1998;
2180908 BLACK & DECKER POWER COMBI WO 30.10.1998,
E5116785 BLACK & DECKER POWERFUL SOLUTIONS WO 18.05.2006 New Application;
2380129 BLACK & DECKER POWERFUL SOLUTIONS XT DW 10.12.2004;
E764365 BLACK & DECKER QUA TTRO WO 06.03.1998;
1226462 BLACK & DECKER QUATTRO DW 14.09.1984;
2104069 BLACK & DECKER SMART STEAM WO 02.07.1996;
E1456805 BLACK & DECKER SUPERLOK WO 11.01.2000;
1400330 BLACK & DECKER TRlM’N’EDGE WO 03.10.1989;
2024555 BLACK & DECKER XR WO 21.06.1995 Registered;
Complainant states that Respondent registered the domain name <deckerandblack.com> on “22, August 2007”. It appears, however, from the registrar’s Whois database that the domain name was registered on August 23, 2005, and available archives show the website existence at least as early as June 2006.
There is also a disclaimer on the “deckerandblack.com” website, but Complainant did not raise or discuss its possible impact. Since the disclaimer is germane, it is reproduced here. Archived screens from the site to which the name <deckerandblack.com> resolved contain a disclaimer reading as follows:
“PLEASE NOTE THIS IS NOT THE OFFICAL BLACK & DECKER WEBSITE:
Deckerandblack is a contribute site [sic] to the Black & Decker company, we do not sell products or sevices of any kind. We built this website to help retailers of black and decker get recognised and found throughout the world wide web. We are lovers of the Brand & Tool and are here to help you find the right Black & Decker tools and the right prices.”
See, e.g., “http://web.archive.org/web/20060614200004/deckerandblack.com/about-us.htm”
(errors in archived original).
5. Parties’ Contentions
Complainant avers that Black & Decker is world renowned and that its brand name has been established for nearly 100 years. It points to the marketing of products in over 100 countries and the leading market share positions that its group companies enjoy as the world’s largest producer of power tools and accessories.
To establish the first element of its case, that <deckerandblack.com> is identical or, in the alternative, confusingly similar to its trademarks, Complainant states that there exist various trademarks and registrations for the words “Black & Decker”, and that the order of the words under UDRP decisions is irrelevant.
With respect to the second element, Black & Decker contends in summary fashion that Respondent lacks a legitimate interest in the domain name because Respondent has no trademark registrations, has not been commonly known by the domain name, and has acquired no permission to use related trademark or service marks.
To address the third element, whether Respondent has registered and used its domain name in bad faith, Black & Decker relies on several points.
Black & Decker notes the shared-revenue advertising that Respondent arranged with Google, which has resulted in posting of advertisements on the screens to which the domain name routes. Some of these advertisements promote products that are not Black & Decker’s. Complainant also suggests that communications by Respondent’s administrative contact listed in the Whois database evince bad faith use, along with the fact that Respondent’s business is not registered as a name or identifiable company. Complainant urges that the “carrying on of a business by such an entity can only be interpreted as an attempt to conceal its identity and avoid legal action”.
Before filing their Complaint, Complainant’s attorneys wrote to and emailed Respondent to place it on formal notice of trademark and copyright infringement and demanded that Respondent cease using the domain name and assign it to Black & Decker. The attorneys’ first email to Respondent – sent August 9, 2007 -- was returned with a ‘message undeliverable’ statement. On August 20, 2007, the postal copy of the letter was returned unopened, with a message that the addressee was unknown. Using the mobile telephone number from the Tucows Whois entry, Complainant’s legal firm then contacted the Administrative contact to obtain his email address. The letter of August 9 was resent electronically to the Administrative contact on August 23, 2007.
In his email replies of August 24 and September 28, the Administrative contact wrote that he did not have a Tucows account to register or transfer the domain name and that he had contacted Tucows to have his name removed as the administrative contact for the domain name. According to the Administrative contact, Tucows responded that it was unable to act on his request because he had no account. In his email of August 24, 2007, the Administrative contact offered that he “should be able to edit or remove content from the website”, (although in later correspondence he did not repeat this offer, citing Complainant’s threatening letters).
The Administrative contact further responded that an unknown third party must have used his details without his knowledge, which resulted in the Whois listing. Complainant points out that Deckerandblack’s address and the address of the Administrative contact are the same, and that the same individual is also listed at the same address on the UK electoral roll dated October 19, 2007. Complainant urges under these circumstances that “[i]t can only be concluded therefore that either [the Administrative contact] and the Respondent are connected, or that the Respondent is an unknown third party which has used [the Administrative contact’s] name, telephone number and address for the purposes of the Tucows WhoIs database. In either case, the Respondent’s attempts (whether the Respondent is in fact [the Administrative contact] or an unknown third party) to conceal its identity cannot be interpreted as anything other than acting in bad faith”.
Complainant avers that on August 23, 2007, the website was altered to route to a message reading that “this website has been removed due to legal purposes. Sorry for any inconvenience”. By scrolling down to the bottom of the page, sponsored links to third party websites and information on Black & Decker and other products were still visible, in the same type of content that appeared on the original website. Complainant contends that Respondent is concealing continuing activities from Complainant, misleading Internet users, and that this Panel is therefore compelled to find registration and use in bad faith.
On these grounds, Complainant requests transfer of the domain name.
Respondent did not submit a reply to the Complaint.
6. Discussion and Findings
A. Notification of Proceedings to Respondent
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement.
The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). The Center forwarded notification of the Complaint to Respondent “Deckerandblack”, to its administrative contact and to its technical contact via courier and email. The courier package sent to the technical contact was not deliverable, however, the other listed contacts for Respondent received the notifications. Moreover, the Administrative contact had also engaged in email correspondence with Black & Decker’s counsel in August and September. The Administrative contact offered to amend content on the website, and, following contact with Black & Decker’s counsel, the website appeared with the notice stating “this website has been removed due to legal purposes”. That notice was in place as recently as November 6, 2007, although currently the <deckerandblack.com> domain name resolves to an error message and does not effectively appear to route to a live site.
Based on the methods employed to provide Respondent with notice of the Complaint and the changes to the website content following discussions and correspondence with counsel for Black & Decker to the same email address just one month earlier, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings.
The Panel also finds that the failure of Respondent to furnish a reply is not due to any omission by the Center.
B. Substance of the Complaint and Applicable Standards
Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if the respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. The Panel may also, however, accept as true the factual allegations in the Complaint in the absence of a reply. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Several averments in the Complaint are devoid of specific factual support, and some others contradict the annexes submitted in support of the Complaint.
i. Identical or Confusingly Similar
Although the disputed domain name <deckerandblack.com> is not identical to Complainant’s trademarks, the Panel agrees with Complainant that Respondent’s domain name is confusingly similar.
To the extent that Complainant’s submissions included information related to designs and marks that combine the words “Black & Decker” with other words, the Panel finds these extraneous to the proceedings.
Panels disregard the “.com” suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-13l5. Respondent’s domain name simply changes the order of two words in Complainant’s trademark. The fact that Respondent reversed the order of the words “Black & Decker” in its registration does not prevent this Panel from finding that the marks are confusingly similar. ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425. The conclusion that the names are confusingly similar is especially apt where, as here, a search engine query including the terms “black” and “decker” would display Respondent’s domain name, regardless of the order in which the terms appear.
Archives of the screens to which the domain name routes contain a weak disclaimer stating that “THIS IS NOT THE OFFICIAL BLACK & DECKER WEBSITE”. This fact does not change the initial confusion that leads the public to Respondent’s site, nor the ruling that there exists confusing similarity. Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 (“by the time consumers get to read the disclaimers, the domain name has already diverted them from the Complainant”).
ii. Rights or Legitimate Interests
The Panel also finds that Respondent has no rights or legitimate interests in the domain name.
The Policy contains a non-exhaustive list of circumstances that a respondent can use to demonstrate rights or legitimate interests in the use of a domain name. The list of circumstances includes: the use of the “domain name in connection with a bona fide offering of goods and services”; an entity being commonly known by the domain name; or, the making of “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers . . .”. Policy paragraphs 4(c)(i) – (iii).
Complainant must show a prima facie case proving the negative that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. If there is a prima facie case and the respondent enters no reply, this second element under the Rules is established. Id. (noting that “a Complainant’s burden of proof on this element is light”, citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Although the burden on Complainant is light, Complainant does not discuss paragraphs 4(c)(i) – (iii) of the Policy at all, does not address whether Respondent made a bona fide offering, and provides scant support for its overall conclusion that Respondent lacks rights or legitimate interest.
Fortunately, the materials submitted with the Complaint and archives of the screens to which the domain name routed are sufficient to resolve the first element under paragraph 4(c)(i) of the Policy. Respondent’s disclaimer says that it does not sell products or services; the Panel therefore finds there is no bona fide offering.
Second, nothing in the record suggests that Respondent was commonly known by the domain name. Complainant avers that there is no registration of the “Deckerandblack” business name, that Respondent does not own any trademarks, and that Black & Decker did not grant any rights to use Complainant’s marks. The Panel accepts these undisputed facts as true.
Third, the record reveals that Respondent is not making a legitimate noncommercial or fair use of the domain name. Respondent has a revenue sharing arrangement with Google, which places ads on the site relating to Black & Decker and tool suppliers and Respondent presumably earned “click-through” revenues.
In the Drexel University v. David Brouda decision, the panel stated: “Rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with Complainant.” Drexel University v. David Brouda, WIPO Case No. D2001-0067 (citing The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050). Agreeing that this is precisely such a case, the Panel concludes that Respondent has no rights or legitimate interest in the disputed domain name.
iii. Registered and Used in Bad Faith
Black & Decker argues that several circumstances “compel ... a finding of registration and use of the Domain Name by Respondent in bad faith”. Both the elements of bad faith registration and bad faith use must be established. E.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Black & Decker’s attorneys misstate the date of registration and do not state when Complainant first became aware of the existence of the domain name. The Complaint omits any concrete facts surrounding registration. Instead, counsel’s argument appears to be that the disputed domain name is confusingly similar to Black & Decker’s marks and because the domain name was used in bad faith, it also must have been registered in bad faith.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy Paragraph 4(b)(iv). Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the complaint, concealment of identity, and a lack of conceivable good faith uses for the domain name. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Complainant has well-known marks, which were established and maintained even before the existence of the Internet (some of Black & Decker’s registrations date back to 1959). Although not addressed in the Complaint, Respondent’s disclaimer shows that Respondent knew of Black & Decker’s trademarks and sought to attract Internet traffic through the similarity of its domain name to Complainant’s well-known brands. As Complainant does point out, Respondent also had advertising for third parties on the site, to generate revenue from the traffic attracted to it, although it is unclear when the advertising arrangements began. Whatever the date of registration, the Panel is comfortable that Respondent was aware of the trademarks at the time of registration. The Panel therefore concludes that Respondent engaged in bad faith registration. See Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-13l5.
The Panel declines to find bad faith use simply on the basis that Respondent is allegedly doing business using an unregistered business name. There is, however, ample evidence of bad faith use of the domain name under Paragraph 4(b)(iv) of the Policy, in light of other circumstances, as discussed above.
Further evidence of bad faith use arises from Respondent’s efforts to conceal its identity and responsibility for the domain name and its decision to forego responding to the Complaint. Respondent was clearly aware of the dispute, as evidenced by the modifications to the routed site following communication with Black & Decker’s attorneys. The Panel refrains from finding that there was no conceivable good faith use of the domain name. In conclusion, however, the Panel finds that even if the Administrative contact and his address are erroneously listed as two contacts for Respondent in the Whois database, Respondent has used the disputed domain name in bad faith.
It is well established that the existence of a disclaimer cannot cure bad faith when bad faith has been shown by other factors. Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 (citing Gallo v. Hanna Law Firm, WIPO Case No. D2000-0615; DFO, Inc. v. Christian Williams, WIPO Case No. D2000-0181). While the original disclaimer stated that Respondent “do[es] not sell products or sevices [sic] of any kind”, the advertising on the site clearly demonstrates commercial motive to capitalize unfairly on Black & Decker’s marks.
The Panel concludes, therefore, that the domain name was registered and 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 <deckerandblack.com> be transferred to Complainant.
Jeffrey D. Steinhardt
Dated: December 11, 2007