WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Black & Decker Corporation v. Michael James
Case No. D2011-1688
1. The Parties
The Complainant is The Black & Decker Corporation of Berkshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Gowlings (UK) LLP, United Kingdom.
The Respondent is Michael James of Cheshire, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <dewaltaccessories.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2011. On October 6, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On October 6, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 7 and October 14, 2011, the Center transmitted to the Complainant a request for confirmation that in accordance with Paragraph 4 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), a copy of the Complaint, including any annexes, together with the cover sheet as prescribed by the Provider's Supplemental Rules, has been sent or transmitted to the Respondent (domain-name holder), in accordance with paragraph 2(b). The Center verified that the Complaint together with the confirmation from Complainant satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2011.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on November 17, 2011. 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
The Complainant, the Black and Decker Corporation, is an internationally well-known supplier of power tools, accessories and other tools and items. The Complainant is the owner of the “DEWALT” brand and has registered a number of trademarks for DEWALT.
Trademarks for DEWALT (in various typographical forms) registered in the United Kingdom by the Complainant include:
DEWALT, registered May 10, 1962, registration number 834389, class 7;
DEWALT and device, registered March 4, 1978, registration number 1091940, class 7;
DEWALT, registered March 19, 1980, registration number 1130633, class 6;
DEWALT, registered March 19, 1980, registration number 1130634, class 7;
DEWALT series, registered June 14, 1996, registration number 2001484, classes 6, 7, 8, 9, 11, 16, 20, 25, 37;
DEWALT series, registered March 21, 1997, registration number 2106876, class 37;
DEWALT, registered September 7, 2007, registration number 2426531, classes 3, 6, 7, 8, 9, 11, 14, 16, 18, 19, 20, 21, 25, 28, 35, 37, 41, 42;
DEWALT GUARANTEED TOUGH, registered September 7, 2007, registration number 2426543, classes 3, 6, 7, 8, 9, 11, 14, 16, 18, 19, 20, 21, 25, 28, 35, 37, 41, 42.
European Community trademarks for DEWALT registered by the Complainant include:
EXTREME DEWALT, registered June 25, 1999, registration number 683045, classes 7, 8, 9;
DEWALT RAPIC LOAD, registered December 17, 2002, registration number 1371806, classes 7, 8;
DEWALT GUARANTEED TOUGH, registered February 3, 2003, registration number 2145076, classes 3, 6, 7, 8, 9, 11, 14, 16, 18, 19, 20, 21, 25, 28, 37;
DEWALT, registered July 10, 2003, registration number 2585495, classes 8, 18, 20, 25;
DEWALT, registered July 10, 2003, registration number 2585495, classes 8, 18, 20, 25;
DEWALT, registered May 26, 2004, registration number 2838845, classes 9, 11, 12, 18, 21;
DEWALT, registered February 4, 2005, registration number 3278496, classes 9, 28;
DEWALT SERVICE and device, registered May 16, 2006, registration number 3301926, classes 3, 6, 7, 8, 9, 11, 14, 16, 18, 19, 20, 21, 25, 28, 35, 37, 41, 42;
DEWALT, registered January 16, 2006, registration number 3485893, classes 3, 6, 7, 8, 9, 11, 14, 16, 18, 19, 20, 21, 25, 28, 35, 37, 41, 42;
DEWALT SITELOCK, registered May 17, 2006, registration number 4338471, classes 3, 6, 7, 8, 9, 11, 14, 16, 18, 19, 20, 21, 25, 28, 35, 37, 41, 42, 45;
DEWALT EXTREME, registered March 1, 2007, registration number 4872248, classes 7, 8, 9;
DEWALT CENTER, registered January 14, 2009, registration number 5938253, classes 3, 6, 7, 8, 9, 16, 18, 19, 20, 21, 25, 35, 37, 39, 41, 42;
DEWALT CENTRE, registered January 20, 2009, registration number 5935473, classes 3, 6, 7, 8, 9, 16, 18, 19, 20, 21, 25, 35, 37, 39, 41, 42;
DEWALT device, registered January 20, 2009, registration number 6424097, classes 8, 9, 18, 21;
DEWALT, registered May 26, 2009, registration number 6424113, classes 8, 9, 18, 21.
No factual information is available about the Respondent except that provided to the registrar for the purpose of registration of the disputed domain name, which appears to have been registered on September 28, 2009.
5. Parties’ Contentions
The Complainant states that it is the owner of the registered trademarks listed in section 4 above and has provided supporting documentation in the form of prints of on-line search enquiries to the United Kingdom Intellectual Property Office and the European Office for Harmonization in the Internal Market.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant's trademarks. The added generic word “accessories” in the disputed domain name does not distinguish it from the Complainant's distinctive trademark DEWALT. The public would believe the disputed domain name to be in some way connected with the Complainant and its DEWALT products.
The Complainant further contends that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
The Respondent’s website, to which the disputed domain name resolves, claims to offer:
“probably the best deals and lowest prices across the United Kingdom and also across Europe, on new Dewalt products, used Dewalts and reconditioned/refurbished Dewalts, plus hundreds of Dewalt accessories and Dewalt spare parts.”
Furthermore the website offers links to online sellers including Screwfix, DIYTOOLS, Tooled-Up, and to eBay auctions.
The Respondent is not a member of the network of authorised distributors through which the Complainant’s products are legitimately sold and the Respondent has not been licensed or otherwise permitted to use the Complainant’s trademarks.
The Complainant says that the Respondent is not commonly known by the disputed domain name, and is making a commercial and not a legitimate non-commercial or fair use of it.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. Within the terms of paragraph 4(b)(iv) of the Policy the Respondent has intentionally intended to attract Internet users to the corresponding website for commercial gain by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website.
The Complainant says it is difficult to conceive of any use of the disputed domain name that would not amount to an infringement of the Complainant's rights in its trademark. The Respondent’s website uses the same distinctive DEWALT yellow and black livery and in its header displays a number of official-looking photographs of DEWALT products. In places the Complainant’s trademark is displayed in non-standard or generic format. The Respondent has made no attempt to distinguish himself from suppliers authorised by the Complainant.
It is contended that if the Respondent had any reason to use the Complainant’s trademark in business, it did not extend to the use of the trademark in the disputed domain name because technically the use of META-tags provides an alternative.
The Complainant wrote to the Respondent on August 4, 2011, stating its position. The letter has not been returned as undelivered but there has been no reply.
The Complainant has cited a number of previous decisions under the UDRP that it contends should be considered as persuasive by the Panel.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant, for as long as 49 years before the date of registration of the disputed domain name, has held rights in the trademark DEWALT. The disputed domain name is <dewaltaccessories.com>. The Complainant’s well-known trademark DEWALT is prominent in the disputed domain name and is followed by the word “accessories”. It is accepted that the Complainant’s trademark is widely associated in the minds of the public with power and other tools that by their nature are used in conjunction with accessories. The word “accessories” not only fails to achieve a distinction from the Complainant’s trademark but is found to increase confusing similarity. In the terms of paragraph 4(a)(i) of the Policy, the Panel finds confusing similarity between the disputed domain name and the Complainant’s trademark .
B. Rights or Legitimate Interests
The Complaint has asserted prima facie that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has addressed the non-exclusive clauses of paragraph 4(c) of the Policy under which a Respondent might proceed to assert a right or legitimate interest.
Evidence in the form of screen captures of the Respondent’s website reveals a comprehensive commercial operation directed ultimately if indirectly to the sale of DEWALT tools, accessories and work-related items such as work boots. Since the website is found and accessed by Internet users in part through their reliance upon the Complainant’s trademark, which the Respondent has not been granted authority to use, the usage cannot be regarded as bona fide within the meaning of paragraph 4(c)(i) of the Policy.
There is no realistic evidence that the Respondent is known personally or as a business by a name corresponding to the disputed domain name or similar in the terms of paragraph 4(c)(ii) of the Policy, and the Respondent has submitted no such claim.
The screen captures demonstrate that the use of the disputed domain name is not noncommercial or fair within the meaning of paragraph 4(c)(iii) of the Policy.
The Panel can conceive of no grounds whereby the Respondent could claim rights or legitimate interests in the disputed domain name, and the Respondent has not submitted any grounds. Accordingly the Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name by a Respondent in bad faith, namely:
“(i) circumstances indicating that you [the Respondent] 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 web site 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 web site or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are non-exclusive and bad faith registration and use may be found otherwise.
The website to which the disputed domain name resolves is extensive over a number of pages. It is professional in appearance and offers a comprehensive range of the Complainant’s products. Each product is accompanied by a logo representing a seller of such items. It may reasonably be inferred from the practice within the on-line shopping and associated advertising industries that a viewer who clicks on another seller’s logo beside an item will be transferred to another seller such as, in this case, Screwfix, DIYTOOLS or Tooled-Up. A number of generic links are also provided. It may also reasonably be concluded that the Respondent has set up this operation of advertising of DEWALT products and referral to suppliers in the conventional business model of receiving commission for each referral or sale.
The business model of advertising and referral in return for commission may potentially be legitimate and is widely in use. For the model to succeed, however, it is essential to attract Internet users. In this instance the Respondent has chosen to incorporate the Complainant’s well-known trademark of 49 years standing as a prominent attracting element of the disputed domain name. The Respondent has been given no licence or authority to do so by the Complainant, and the Respondent’s use of the disputed domain name in business therefore lacks legitimacy. Whether or not Internet viewers led inadvertently to the Respondent’s website may realise their confusion, is of no consequence, since the act of misleading the viewer by initial confusion would already have happened. Within the terms of paragraph 4(b)(iv) of the Policy the Respondent is found to have used the disputed domain name in bad faith for the attraction of Internet users for commercial gain by confusion and to have registered the disputed domain name for that purpose.
The Respondent’s bad faith registration and use of the disputed domain name are compounded by the failure to acknowledge the Complainant’s cease and desist letter dated August 4, 2011 (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <dewaltaccessories.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: November 29, 2011