WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Acument Intellectual Properties LLC v. Diego Miranda, Lamason
Case No. D2014-0633
1. The Parties
The Complainant is Acument Intellectual Properties LLC of Sterling Heights, Michigan, United States of America ("USA"), represented by Clark Hill PLC, USA.
The Respondent is Diego Miranda, Lamason of Buenos Aires, Argentina.
2. The Domain Name and Registrar
The disputed domain name <torx-bit.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 15, 2014. On April 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced on May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. On May 9 and 23, 2014 the Center received informal communications from the Respondent, as a result of which on May 26, 2014 the Center invited the Complainant to advise whether it wished the proceeding to be suspended to explore a possible settlement between the parties. The Complainant did not submit any comments regarding a potential suspension of the proceedings. The Respondent did not submit any formal Response to the Complaint by the due date. Accordingly, the Center notified to the parties the commencement of the Panel appointment process on May 30, 2014.
The Center appointed David J.A. Cairns as the sole panelist in this matter on June 3, 2014. 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.
On June 3, 2014 the Respondent sent a further communication to the Center with copy to the Panel.
4. Factual Background
The Complainant is a limited liability company organized under the laws of Delaware, USA, which operates in the business of screws and components for power tools.
The Complainant is the registered owner of the following Argentinian Trademark Registrations for the word mark TORX: (i) No. 1,920,008 in International class 6, most recently renewed in 2013; (ii) No. 1,971,259 in International Class 7 (for goods including drive components for power tools), most recently renewed in February 2014; (iii) No. 2,019,453 in International Class 8, with expiry date of April 5, 2015
The disputed domain name was registered on December 26, 2012. The Panel viewed from Spain the website hosted at the disputed domain name on June 10 and 14, 2014. On these dates the disputed domain name hosted a webpage containing advertisements (for example, for RyanAir) as well as "related links" that included links incorporating the TORX trademark. For example, there were links to "Torx Security Screwdriver", "Torx bit", and "Torx screws". The "Torx Security Screwdriver" link led to a page where screwdrivers (including TORX screwdrivers) could be purchased on Amazon and Ebay, and also to a link entitled "madeinchina.com/screwdriver" offering for sale screwdrivers made by various Chinese manufacturers.
5. Parties' Contentions
The Complainant states that it has used its TORX trademark in connection with bits for nearly five decades in commerce, and has extensively promoted the TORX trademark in connection with its own bits to the extent that the public associates the Complainant's trademark with bits made by Complainant.
The Complainant states that it uses the TORX trademark in relation to several websites including its official website at "www.acument.com/products/torx-and-torx-plus", as well as "www.torx.com"; "www.torx.org" and "www.torxbit.info".
The Complainant submits that the disputed domain name is identical or confusingly similar to its TORX trademark because the Respondent's use of the TORX trademark is identical to the Complainant's trademark and the remainder of the disputed domain name consists of descriptive language describing the Complainant's goods and services. Under these circumstances, previous UDRP panels have found disputed domain names to be confusingly similar to the registered trademark. The Complainant further alleges that the inclusion of a trademark in its entirety in a domain name has been found sufficient to render the domain name confusingly similar to the complainant's trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant alleges there is no evidence of Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with bona fide offering of goods and services. The Complainant states that the Respondent's website purports to offer the Complainant's products for sale, which it is not authorized to do pursuant to any distributorship or other agreement with the Complainant. In addition, the Respondent's website also purports to offer for sale products that are not part of the TORX product line and which are not manufactured by the Complainant, and the Respondent offers both types of products in connection with a company called "Torx Bit" or "Torx-Bit". The Complainant alleges that it has found no evidence that a company named "Torx-Bit", with or without hyphen, exists or does business in Argentina or anywhere else. Moreover, the Complainant submits, the website does not actually contain any mechanism by which to purchase products described and advertised on the website. The Complainant also alleges that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name as the Respondent's aim is clearly commercial given that the disputed domain name lists and describes a variety of the Complainant's TORX branded products, along with a number of other products not associated or produced by the Complainant, and purports to offer them for sale.
Finally, the Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant alleges that the use of the Complainant's TORX trademark in connection with products for which the Complainant is known is extremely likely to cause confusion as to the source of the Respondent's website and its sponsorship, affiliation, or endorsement by the Complainant. The Complainant further states that the Respondent's website does not actually sell the products it claims to offer for sale, and makes no effort to distinguish itself from the Complainant or direct visitors to the disputed domain to a website at which the Complainant's products are available for purchase, disrupting the Complainant's business.
The Complainant requests that the Administrative Panel transfer the disputed domain name to the Complainant.
The Respondent did not submit any Response in accordance with the Rules.
The Respondent has nevertheless submitted three informal responses to the Center. In the first email of May 9, 2014 the Respondent advised that it had contacted the representative of the Complainant in these proceedings, Mr. Foley, and was awaiting the Complainant's response.
In the second email of May 23, 2014 the Respondent wrote to the Center and the Complainant as follows:
"My name is Diego Miranda, I want to transfer the domain torx-bit.com to Network Solutions.
Please tell me what to do.
Finally, in its email of June 3, 2014 to the Center, with copy to the Panel and the Complainant, the Respondent stated:
I dont understand why u continue with this.
I dont have interest in that domain, I told WIPO this and I told my client
But I can´t tranfer it because is block.
Tell me what to do and I will be glad to finish it
6. Discussion and Findings
The Panel is required to decide the 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 (paragraph 15(a) of the Rules).
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel notes that the content of the Respondent's website and links described in the Complaint is quite different from the content of the website found by the Panel during its own review of the website. This may be a result of conscious changes by the Respondent since the submission of the Complaint, or the different locations from which the Complainant and the Panel entered the website hosted at the disputed domain name. In any event, for the purposes of bad faith use under the third element of the Policy it is sufficient if the bad faith exists at any time or place before the decision of the Panel.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the TORX registered trademarks in Argentina referred to above.
The disputed domain name is not identical with the Complainant's TORX trademark. The disputed domain name incorporates the Complainant's trademark entirely adding a hyphen and the descriptive term "bit".
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 states that "The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms .... typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name."
In the present case, the Panel considers that on a straightforward visual comparison the disputed domain name is confusingly similar to the TORX trademark for the following reasons: (i) the disputed domain name incorporates in its entirety the trademark TORX; (ii) "torx" is an invented word and is highly distinctive; (iii) "bit" is a descriptive term which is insufficient to distinguish the disputed domain name from the Complainant's trademark; (iv) the addition of the descriptive term "bit" emphasizes rather than neutralizes the trademark function of TORX because it makes reference to a core product offered by the Complainant and specifically promoted by Complainant under the TORX trademark.
Therefore the addition of the hyphen and the term "bit" does not avoid a confusing similarity between the TORX trademark and the disputed domain name, and so the first element required by the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or unregistered trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the TORX trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; (iv) the Respondent has expressly recognized it has no interest in the disputed domain name as well as its willingness to transfer the disputed domain name in its informal communications of May 23 and June 3, 2014.
In these circumstances, and particularly given the Respondent's express recognition that it has no interest in the disputed domain name, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the disputed domain name was registered in bad faith and also "is being used" in bad faith. Paragraph 4(b) sets out the four circumstances without limitation which if found by a Panel to be present shall be evidence of the registration and use of a domain name in bad faith. However, bad faith may be established on grounds other than those set out in paragraph 4(b), as the circumstances in paragraph 4(b) are expressed to be "in particular but without limitation".
The Panel finds that bad faith is established in the present case for the following reasons: (i) TORX is a well-known trademark in the market of components for power tools; (ii) the Panel finds from the evidence that the Respondent's linkage of the words ''torx'' and ''bit'' in a domain name was not coincidental but deliberate and in full knowledge of the Complainant's TORX trademark; (iii) the Panel finds that the Respondent intended to deceive and take advantage of Internet users who would expect to find a website that is affiliated to or sponsored by the Complainant at a domain name incorporating the TORX trademark.
The Panel's own examination of the website hosted at the disputed domain name found clear evidence of commercial use through advertisements and links to websites selling screwdrivers, bits and related products. These links included links to products by manufacturers other than the Complainant. This is a deceptive use of the Complainant's TORX trademark in that Internet users are attracted to the disputed domain name by the TORX trademark and are then directed to products of other manufacturers. There is therefore bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy in that the Respondent has intentionally attempted to attract, for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation and endorsement of its website.
For these reasons, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <torx-bit.com> be transferred to the Complainant.
David J. A. Cairns
Date: June 17, 2014