WIPO Arbitration and Mediation Center


Snap-on Incorporated v. Jeffrey Scotese

Case No. D2013-0577

1. The Parties

Complainant is Snap-on Incorporated of Kenosha, Wisconsin, United States of America (“Complainant”), represented by DLA Piper US LLP, United States of America.

Respondent is Jeffrey Scotese of Pleasant Prairie, Wisconsin, United States of America (“Respondent”), represented by Michael Scotese, United States of America.

2. The Domain Name and Registrar

The disputed domain name <snaponsocks.com> (the “Disputed Domain Name”) is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2013. On April 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 3, 3013, the Registrar transmitted by email to the Center its verification response confirming that Respondent was listed as the registrant and providing the contact details for the Disputed Domain Name.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 April 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2013. The Response was filed with the Center on April 20, 2013.

The Center appointed Michael A. Albert as the sole panelist in this matter on April 29, 2013. 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 is owner of the following trademark registration: SNAP-ON, US Reg. No. 788,618, filed July 9, 1964, and registered on July 23, 2002 (subsequently registered for additional products and in additional jurisdictions).

Respondent registered <snaponsocks.com> on January 2, 2013.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has done business for over 90 years under the mark and name SNAP-ON and alleges that the Disputed Domain Name is confusingly similar to that mark, that Respondent has no legitimate rights or interests in the Disputed Domain Name, and that Respondent registered and is using it in bad faith.

Specifically, Complainant alleges that Complainant is using the Disputed Domain Name to resell socks purchased through Complainant’s <snapon.com> site in contravention to the terms that one must agree to in order to purchase goods from that site.

Complainant argues that the Disputed Domain Name is confusingly similar to its SNAP-ON mark because “the term ‘SOCKS’ is descriptive within the context of Complainant’s offerings.”

Complainant argues that Respondent has no legitimate interests in the Disputed Domain Name because Respondent is not making a bona fide offering of goods through the <snaponsocks.com> site because it fails to disclose that it is not owned by or affiliated with Complainant.

Complainant further avers that Respondent’s use of the Disputed Domain Name “will deceive customers into believing that “snaponsocks.com” is Complainant’s official website or is otherwise sponsored or affiliated with Complainant.” Complainant also alleges that Respondent evidenced bad faith by offering to sell it the Disputed Domain Name for $195,000.

B. Respondent

Respondent argues that the Disputed Domain Name is not confusingly similar to Complainant’s SNAP-ON mark because the word “socks” is not associated with Complainant’s primary business of tool manufacturing and sales and because the phrase “snap on” is descriptive and therefore is entitled to limited protection. Respondent argues that while the addition of descriptive matter to a trademark does not generally distinguish the mark sufficiently to prevent the domain name from being confusingly similar to the mark, “socks” is not a descriptive term, it is a noun, and therefore adequately distinguishes the Disputed Domain Name from Complainant’s SNAP-ON mark to avoid confusing similarity.

Respondent also contends that he has purchased and is selling socks branded with Complainant’s mark lawfully and that neither his registration nor his use of the site has been in bad faith. Specifically, Respondent disputes that his use of a black and red color scheme on the web site to which the Disputed Domain Name resolves is evidence of bad faith because black and red is a common color combination to which the Complainant has no proprietary rights. Respondent also contends that his asking price for the Disputed Domain Name is not evidence of bad faith because he did not initiate negotiations regarding purchase of the site and because Complainant refused to specify an offer amount, effectively manipulating Respondent into naming an amount.

In addition, while Respondent does not specifically assert that he has legitimate rights or interests in the Disputed Domain Name, he does discuss the resale of socks branded with Complainant’s SNAP-ON mark by others on eBay. Giving Respondent the benefit of the doubt, the Panel will construe this discussion as contesting the issue of rights or legitimate interests.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires that complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:(i)the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; 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.

A. Identical or Confusingly Similar

Complainant has provided sufficient evidence that it is the owner of a valid United States Registration for, and makes substantial use of, the SNAP-ON trademark. The Disputed Domain Name, however, is not identical to the SNAP-ON mark. Therefore, the first issue is whether the Disputed Domain Name and the SNAP-ON mark are confusingly similar.

The Disputed Domain Name consists of three components: (1) the SNAP-ON mark with the hyphen (“-“) removed; (2) the word “socks” and the generic top-level domain suffix “. com.” The relevant comparison to be made is with the second-level portion of the domain name only (i. e., “snaponsocks”), as it is well established that a generic top-level domain name (i. e. “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561. The removal of a hyphen is irrelevant to the analysis, since punctuation marks serve neither to promote nor to reduce confusion. Wal-Mart Stores, Inc. v. Gerry Senker, WIPO Case No. D2006-0211 (“The omission of a hyphen from Complainant’s [WAL-MART] mark [in the <competewithwalmart.com> domain name] does not negate the confusing similarity of the disputed domain names to Complainant’s mark”); Nat’l Cable Satellite Corp. v. Black Sun Surf Co., NAF Claim No. 94738 (the disputed in the domain name <cspan. net> is confusingly similar to complainant’s C-SPAN mark despite the omission of a hyphen).

The addition of a term associated with Complainant’s business does not sufficiently distinguish an otherwise identical mark – in fact, the addition of such a term has been found to increase the likelihood of confusion. Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896 (“[I]f the addition is a term associated with the business of the Complainant...it can even add to the similarity between the domain name and the trademark in question.” Respondent attempts to distinguish Yahoo! v. Lam by arguing that the word “socks” is not descriptive matter. “Generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it” Blue Nile, Inc. v. Mrs. Jello, LLC, WIPO Case No. D2005-0639 (citing 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition, § 23:50 (4th ed. 1998)) (the addition of the word “diamonds” in the <bluenilediamonds. com> domain name did not adequately distinguish the BLUE NILE mark to avoid confusion).

Respondent argues that the SNAP-ON mark is primarily associated with tools, not clothing, such that the addition of the word “socks” adequately distinguishes the domain from the mark, so as to avoid confusing similarity. However, Complainant has produced sufficient evidence that it sells branded clothing, including socks, through its web site to rebut this argument.

The Panel therefore finds that the Disputed Domain Name is confusingly similar to the SNAP-ON mark.

B. Rights or Legitimate Interests

Under the Policy, paragraph 4(c), rights or legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.

A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a domain name, after which the burden of rebuttal passes to the respondent. See Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (citing Croatia Airlines d. d. v. Modern Empire Internet Ltd. , WIPO Case No. D2003‑0455). The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S. p. A. v. Marco Cialone, WIPO Case No. DTV2002-0005).

It is uncontested that the use of Complainant’s trademark in the Disputed Domain Name is unauthorized. Complainant has thus made a prima facie showing that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261.

In order to refute this prima facie case, Respondent must demonstrate that it is using the domain name in connection with a bona fide offering of goods or services.

Respondent contends that it is a reseller of socks that are legitimately purchased from Complainant and that his use of the Disputed Domain Name is similar to the descriptive use of Complainant’s mark that is typical of other resellers of Complainant’s products on eBay, further suggesting that such use of Complainant’s mark is necessary and appropriate to describe the goods being offered for sale.

In order to determine whether Respondent is a bona fide reseller of complainant’s trademarked goods, it is first necessary to decide whether to adopt the minority view that requires a contractual relationship between the parties or the more generous majority view that allows such use if all of the factors in a multi-part test are met, even without permission of the trademark holder. Marathon Enterprises, Inc. v. William I Bauer, WIPO Case No. D2007-1036 (citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2. 3). The Panel chooses to follow the majority view, which requires “at the minimum,” the following:

Respondent must actually be offering the goods or services at issue;

Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; [and] ...

Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. ”

Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (internal citations omitted; numbering and punctuation supplied).

It is undisputed that Respondent is actually offering Complainant’s goods and that Respondent sells only Complainant’s goods on the website to which the Disputed Domain Name resolves. Also, there is no allegation that Respondent has registered more than one domain name incorporating Complainant’s mark. Therefore, the analysis turns on whether the site accurately discloses Respondent’s relationship with Complainant. Since the site fails to include a disclaimer or explanation indicating that Respondent does not own and is not licensed to use Complainant’s mark, the Panel concludes that Respondent has not satisfied all four OKI Data criteria for purposes of using the Disputed Domain Name in connection with a bona fide offering of goods and services. It is therefore unnecessary for the Panel to address Complainant’s argument that Respondent is contractually prohibited from reselling goods purchased through Complainant’s website.

Accordingly, the Panel finds that Respondent lacks rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy paragraph 4(b)(iv), occurs when Respondent attempts to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark(s) as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service offered on the Respondent’s website.

Respondent has failed to refute Complainant’s evidence that Complainant has well-established rights in the SNAP-ON trademark, that the trademark is well known worldwide, or that the Disputed Domain Name was registered well after the Complainant’s trademark was in use. These facts support a conclusion that Respondent did not innocently register the Disputed Domain Name. See Société Air France v. R Blue, WIPO Case No. D2005-0290 (“Respondent must have been aware of the Complainant’s trademarks while registering the domain name in dispute. This finding leads to the conclusion that the domain name in dispute has been registered in bad faith.”)

However, Respondent points out that there are twenty resellers selling “Snap-On socks” on eBay, all of which identify the socks using the SNAP-ON mark. Respondent could have registered the Disputed Domain Name under the reasonable good faith belief that Complainant gave general tacit permission for this type of resale activity using its SNAP-ON mark.

Whether a registrant registered and used a disputed domain name in bad faith is a separate test than whether the registrant had any legitimate rights or interests in the domain name. It is therefore not enough for Complainant to show that Respondent used the domain name in violation of trademark laws, Complainant bears the burden of demonstrating that at the time of registration, Respondent’s state of mind involved an intent to violate Complainant’s intellectual property rights. See David Pearlstein a/k/a Show Business Inc. v. Soft Image Systems, NAF Claim No. 1053372 (“Whether or not the Respondent’s subsequent use of the disputed domain name violates U. S. trademark or unfair competition laws is, as noted above, a matter that is outside the scope of the Policy”); MatchMaker Int'l Dev. Corp. v. Kaiser Dev. Corp. , NAF Claim No.146933 (“If Respondent registered the domain name for legitimate purposes, or if it reasonably believed at the time of registration that those purposes were legitimate, then the registration was not in bad faith” (emphasis supplied)).

Complainant argues that Respondent’s use of a black and red color scheme on the site to which the Disputed Domain Name resolves is evidence of bad faith, as Complainant’s “www.snapon.com” website also uses the colors black and red. However, the look and feel of the two web sites differs substantially. Complainant’s “www.snapon.com” site uses, on various pages, either a red and black or a black logo, together with black text and occasional black vertical bars on the sides of the screen. See Complainant’s Exhibit D. In contrast, Respondent’s site features a heading consisting of white text – except for the active page identifier (e. g. “home”), which appears to be bluish-green – and red text in the main body of the page. See Respondent’s Exhibit N. Respondent’s site does not include anything that resembles Complainant’s logo. The only similarity between the sites’ use of color is that Respondent’s site features a black border around the white, central box in which the page’s main content appears. The vertical columns of black to the sides of this box are similar to the black columns that appear on the sides of some of the pages of Complainant’s site. However, this similarity is insufficient in the context of the overall look and feel of the sites to conclude that Respondent is attempting to mimic Complainant’s site. In fact, the amateurish look and feel of Respondent’s site, including its exclusive use of capital letters in its text, would be unlikely to be confused with the polished professional look and feel of Complainant’s site. Since Respondent could have imitated Complainant’s font and text color choices without substantial additional effort, it is not reasonable to conclude based on the color schemes or other aesthetics of the sites that Respondent intended to create confusion with Complainant’s site.

Complainant also argues that Respondent’s offer to sell the Disputed Domain Name for $195.000 is evidence of bad faith, citing Blue Sky Software Corp. v. Digital Sierra Inc. and Abdullah Khan, WIPO Case No. D2000-0165 for the proposition that $195,000 “exceeds the amount found to constitute bad faith.” However, this argument oversimplifies the facts of Blue Sky, which involved a respondent who rebuffed an initial offer for sale of the disputed domain name in order to check the complainant’s “company profile.” In other words, the respondent in Blue Sky appears to have been holding the domain name hostage not based on a calculation of its actual worth or on the basis of the respondent’s revenue from use of the domain name, but rather based on respondent’s perception of how much the complainant might be willing and able to pay. Id.

The facts here are very different. Complainant contacted Respondent seeking to purchase the Disputed Domain Name, but then refused to name a price, insisting that Respondent produce a number. It appears that Complainant may have manipulated Respondent into naming a high price for purposes of making Respondent appear to be unreasonable. Respondent’s detailed account of the negotiation is credible and the Panel therefore does not find Respondent’s asking price to constitute evidence of bad faith in the registration and use of the disputed domain name.

Respondent could also have reasonably believed that the Disputed Domain Name is not confusingly similar to Complainant’s SNAP-ON mark because that mark is primarily associated with tools, not clothing.

Taking all of the evidence into consideration, Respondent has sufficiently rebutted Complainant’s initial showing of bad faith that Complainant has failed it meet its burden to establish this element.

The Panel therefore finds that Complainant has failed to establish bad faith in Respondent’s registration and use of the Disputed Domain Name.

It should be noted that the questions of whether Respondent infringed Complainant’s SNAP-ON mark and whether Respondent violated the terms of a contract posted on “www.snapon.com” when purchasing socks from Complainant are both beyond the purview of this decision under the Policy and are matters for a court or other adjudicatory body of appropriate jurisdiction to decide.

7. Decision

For the foregoing reasons, the Complaint is denied.

Michael A. Albert
Sole Panelist
Date: May 9, 2013