WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stanley Black & Decker, Inc. v. Lee Topham, Transtools
Case No. D2014-1065
1. The Parties
The Complainant is Stanley Black & Decker, Inc. of New Britain, Connecticut, United States of America (“US”), represented by Darrin Shaya, United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent is Lee Topham, Transtools of North Yorkshire, UK, self-represented.
2. The Domain Names and Registrar
The disputed domain names <stanleyclothing.com> and <stanleyworkwear.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. Also on June 20, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on June 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2014. The Response was filed with the Center on July 16, 2014.
The Center appointed Nicholas Smith as the sole panelist in this matter on July 24, 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.
4. Factual Background
The Complainant is a diversified manufacturer of industrial tools and household hardware. From 2009 to 2012, the Complainant entered into an arrangement with a licensee known as Cosalt to use the Complainant’s STANELY Brand in respect of a range of clothing, footwear and headgear, known as Stanley Workwear.
The Complainant or its subsidiaries/predecessors in title is the owner of a number of figurative trademarks consisting of the word STANELY (the “STANLEY Mark”), for clothing and footwear in jurisdictions across the world, including the United States (since 1986) and the European Union (since 1998).
The Domain Name <stanleyclothing.com> was registered on November 13, 2008. The Domain Name <stanleyworkwear.com> was registered on June 2, 2008. Both Domain Names resolve to a website (the “Respondent’s Website”), at “www.stanleyworkwear.com” which advertises the sale of Stanley Workwear, including size guides and price. It seems, impossible to purchase any Stanley Workwear from the Respondent’s Website, and a click on the “where to buy” link on the Respondent’s website leads to a site associated with the Respondent at “www.transtools.co.uk” which sells a variety of power tools, hand tools, hardware and protective clothing unrelated to the Complainant. There is no clear disclaimer that the Respondent’s Website is not associated with the Complainant. The Complainant accepts that the Respondent had in the past purchased a large quantity of Stanley Workwear from Cosalt or another licensee and may be entitled to resell such products.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s STANLEY Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the STANLEY Mark. It owns trademark registrations for the STANLEY Mark in various jurisdictions around the world.
The Domain Names consist of the STANLEY Mark and the words “clothing” and “workwear” which are generic nouns that do not distinguish the Domain Names from the Complainant’s STANLEY Mark. Rather they are descriptive terms to describe the fact that the Respondent’s Website promotes the sale of Stanley Workwear. The Domain Names are confusingly similar to the STANLEY Mark as the dominant part of the Domain Names is the Complainant’s STANLEY Mark.
The Respondent has no rights or legitimate interests in the Domain Names. While the Respondent has purchased Stanley Workwear clothing from the Complainant’s licensee, the Respondent’s Website does not offer these clothes for sale. Rather the Respondent’s Website redirects to another website operated by the Respondent at “www.transtools.co.uk” which sells a variety of products, but not Stanley Workwear. As the Complainant has not authorized the Respondent to use and register any domain name incorporating the STANLEY Mark and the Respondent’s Website does not actually sell the Complainant’s products, its use is not bona fide.
The Domain Names were registered and are being used in bad faith. The Domain Names were registered for the purpose of selling the Domain Names to the Complainant. In response to a cease and desist letter from the Complainant on March 27, 2014, the Respondent offered to sell the Domain Names for an amount in excess of its documented out-of-pocket costs directly related to the Domain Names including the sale of the Respondent’s remaining stocks of Stanley Workwear to the Complainant. Furthermore the fact that the Respondent does not commercially use the Domain Names is a further evidence of bad faith.
The Domain Names were purchased in 2008 by the Respondent when it agreed to be the sole distributor in the UK for new Stanley Workwear range of clothing. The website was designed with the intention of adding each and every retailer who came on board to sell the Stanley range of clothing.
The Respondent did not intend to mislead customers, rather it was the sole intention to use the Domain Names to promote and introduce customers to the new range of Stanley Workwear clothing. The Respondent invested heavily in promoting Stanley Workwear, but because Stanley Workwear was never marketed and promoted by either Stanley or Cosalt International Ltd, he was left with an excessive amount of discontinued stock which currently amounts to GBP 4,000 worth of stock. As no ongoing support for this brand of clothing was given by either Stanley or Cosalt International Ltd, the Respondent’s Website was neglected and no further marketing was pursued by the Respondent.
The Respondent’s letter dated April 15, 2014 which included a settlement offer has been misinterpreted. The Respondent is prepared to transfer the Domain Names for the costs associated with the Domain Names. The offer made in previous correspondence did suggest that the Complainant would also purchase the excess Stanley Workwear stock but it was in no way conditional on such an offer being accepted.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the STANLEY Mark, having registrations for the STANLEY Mark as a trademark around the world and in particular the US and the European Union.
The Domain Names consist of the STANLEY Mark and the words “clothing” and “workwear”. The addition of a generic noun to a domain name that otherwise incorporates a mark in its entirety typically does not prevent a finding of confusing similarity. Furthermore the addition of “clothing” and “workwear”, which describes the products to which the STANLEY Mark has been applied to may have the effect of increasing the confusion, as a person viewing the mark may be confused into thinking the Domain Names referred to a site run by the Complainant for its STANLEY clothing or workwear. The Panel finds that the Domain Names are confusingly similar to the Complainant’s STANLEY Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” (Policy, paragraph 4(c)).
The Respondent is not affiliated with the Complainant. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the STANLEY Mark or a mark similar to the STANLEY Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name. Nor is the Respondent making a noncommercial use of the Domain Names.
Accepting the Respondent’s evidence at its highest, the Respondent entered into some sort of an agreement with Cosalt International Ltd to distribute Stanley Workwear and created a website at the Domain Names for that purpose (whether selling the Complainant’s goods was the sole purpose is in question as the Domain Names redirect to the Respondent’s other site selling competing goods and do not act as a platform where users can find Stanley Workwear retailers as the Respondent alleges was his intent). However there is no evidence that any such agreement with Cosalt International authorised the Respondent to register the Domain Names or any domain names that were similar to the STANLEY Mark, or even that Cosalt had the authority, to license out the Stanley Mark. In the absence of such evidence, which would otherwise be in the possession of the Respondent, the Panel finds that the Respondent was not authorised to register the Domain Names.
The question that needs to be decided is whether the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use.
The Respondent’s present use of the Domain Names would not in itself amount to a bona fide offering of goods and services. The Respondent’s Website does not sell the Complainant’s goods. Rather it redirects users to another website associated with the Respondent which sells goods that may compete with the Complainant’s products more generally and in particular with the Stanley Workwear. Furthermore there is no evidence that the Domain Names have ever been used to sell Stanley Workwear or that there is any evidence that the Domain Names would be used in the future for such a purpose – the Respondent admits that it is attempting to unload its stock.
Even if the Respondent’s Website actually offered the Stanley Workwear for sale, such offering would not be bona fide. The principles that govern whether a reseller of genuine goods engages in a bona fide offering of goods have been set out in a variety of UDRP Decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) summarizes the consensus views in response to the question about whether a reseller/distributor of trademarked goods or services has rights or legitimate interests in a domain name which contains such a trademark in the following manner:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant; in particular, that it is not the Complainant. Rather, its prominent display of the STANELY Mark and its lack of disclaimer give the impression that the Respondent’s Website is the official website of the Complainant, at least in relation to its Stanley Workwear, when it is clearly not. Members of the public who were interested in Stanley Workwear may have visited or could visit the Respondent’s Website on the assumption that the Respondent is the Complainant itself. This is not the case. In the event that the Respondent has resold Stanley Workwear products, its use without a prominent disclosure of its relationship with the Complainant does not amount to a bona fide offering of goods. Additionally, as noted above, the Respondent used the Domain Names to link to the Respondent’s online shop selling primarily third-party goods; this undermines any rights or legitimate interest the Respondent may have had even if there would have been a disclaimer on the Respondent’s Website.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names’ registration to the Complainant who is the owners of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) The Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the STANLEY Mark at the time the Domain Names were registered. The Respondent had some form of an agreement with a sub-licensee of the Complainant to sell a line of clothing known as STANLEY Workwear.
Contrary to the assertions of the Complainant, the Panel finds that the Respondent did not register the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names’ registration to the Complainant. The Domain Names were registered in 2008 allegedly for the purpose of selling Stanley Workwear and listing other Stanley Workwear retailers, and the Respondent created a site though ostensibly not solely for the claimed purpose. The fact that the Respondent made an offer in 2014 to sell the Domain Names, regardless of whether the offer was for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names does not on the evidence before the Panel seem to have been the Respondent’s primary purpose in registering the Domain Names.
However, the Respondent has registered and used the Domain Names in bad faith by intentionally attempting to attract, for commercial gain, Internet users to his 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 the Respondent’s Website. The Panel reaches this conclusion for the following reasons:
While the Respondent registered the Domain Names when it was authorised to distribute Stanley Workwear and as such was obviously aware of the Complainant, the limited record before the Panel reflects no evidence that the Respondent received any permission from the Complainant, or anyone authorized to act on behalf of the Complainant, to register a Domain Name that contained the STANLEY Mark. The Respondent’s conduct in registering the Domain Names when it was aware of the Complainant’s rights and lacked rights and legitimate interests of its own is indicative of registration in bad faith.
More to the point, the Respondent has created a website that did not accurately or prominently disclose the Respondent’s relationship with the Complainant (in particular, that it is not the Complainant), but rather, the Domain Names give the false impression that the Respondent’s Website is somehow the official website of or at least endorsed by the Complainant, at least in relation to its Stanley Workwear.
Finally it appears on the basis of the record before the Panel, that the Respondent has not sold Stanley Workwear through the Respondent’s Website. Rather, Internet users who visit the Respondent’s Website, hoping to purchase the Complainant’s clothing, are lead to another website associated with the Respondent, which sells other products, including protective clothing that competes directly with the Stanley Workwear. The Respondent can be presumed to gain a benefit out of re-directing consumers who visit the Domain Names to the Respondent’s other site. This amounts to use in bad faith.
In conclusion, even if the Respondent may, on different facts, had a colourable claim under the Oki Data principles, he used the Domain Names to attract Internet users on the back of the Complainant’s reputation only to then sell competing third-party goods through the Respondent’s other site (by way of redirection). Further, there is no evidence to support his claim that the Domain Names were to be used as a “portal” for other Stanley Workwear retailers. In the Panels view, this amounts to bad faith, which necessarily also means he lacks rights or legitimate interests.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <stanleyclothing.com> and <stanleyworkwear.com>, be transferred to the Complainant.
Date: July 29, 2014