WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stanley Black & Decker, Inc. v. Domain Hostmaster, Customer ID: 00313965223691, Whois Privacy Services Pty Ltd. / Domain Administrator
Case No. D2017-1708
1. The Parties
Complainant is Stanley Black & Decker, Inc. of New Britain, Connecticut, United States of America ("United States"), internally represented.
Respondent is Domain Hostmaster, Customer ID: 00313965223691, Whois Privacy Services Pty Ltd. of Fortitude Valley, Queensland, Australia / Domain Administrator of Wilmington, Delaware, United States.
2. The Domain Name and Registrar
The disputed domain name <dewalttools.com> (the "Domain Name") is registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 5, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 7, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 8, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 11, 2017.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 3, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 6, 2017. 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 the product of a merger in 2010 of two major manufacturers, each over 100 years old at the time of the merger: the Stanley Works Inc. (founded in 1843) and Black & Decker Inc. (founded in 1910). Complainant's two constituent companies were major manufacturers of power tools and hardware products. Today, according to the Complaint, Complainant is "the world's largest tool manufacturer and security company." It operates in more than 175 countries and employs more than 50,000 people.
Complainant holds numerous trademark registrations throughout the world. For example, Complainant has rights in United States Patent and Trademark Office Registration No. 2,605,311 for the word mark DEWALT in connection with air compressors. This mark was registered in August 2002 and reflects a date of first use in commerce of December 31, 2000. By way of further example, Complainant holds an Australian Registration No. A575069 for the mark DEWALT in connection with "batterys, battery chargers and charging devices." This registration was granted on March 24, 1992.
The Domain Name was registered on April 28, 2003. The Domain Name redirects to a website at "www.webconsultant.com", which merely contains the logo for Web Consultant and offers a search option.
On July 25, 2017, Complainant sent a cease-and-desist email to the privacy services of which Respondent was availing itself. Complainant received no response to this email, and thereafter initiated this proceeding.
5. Parties' Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
The Panel concludes that Complainant has rights in the mark DEWALT through registration and use. The Domain Name is confusingly similar to Complainant's mark, since it incorporates the mark DEWALT in its entirety. The addition of the term "tools" is probably the most descriptive term that could conceivably apply to Complainant's products.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Complainant has made out a prima facie case under paragraph 4(a)(ii). There is no relationship whatsoever between the Parties, and the Domain Name is not in use. Respondent has not come forward to explain its bona fides, if any, with respect to the Domain Name. The Domain Name resolves to an essentially blank website. These circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the DEWALT mark had been widely used and registered at the time of this Domain Name registration, and because the Domain Name includes the mark and the highly descriptive term "tools", it would be a coincidence of millennial proportions if Respondent had registered this Domain Name in ignorance of the DEWALT mark.
With respect to bad faith use of the Domain Name, the Panel concludes that the principles of the case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (the "Telstra decision") are applicable. Here, Respondent registered a Domain Name containing a distinctive trademark – DEWALT – which as a word has no apparent common meaning, and appends to that mark the word most likely to be used to describe the goods sold under the DEWALT mark. Respondent has offered no justification for registering this Domain Name, nor for redirecting it to what is essentially an inactive website. Respondent used a privacy shield to obscure its identity, and did not respond to Complainant's pre-Complaint correspondence. Under these circumstances, and under the "passive use" approach first articulated in the Telstra decision, the Panel can conceive of no good-faith basis for Respondent's conduct vis-à-vis this Domain Name.
Complainant has established Policy paragraph 4(a)(iii).
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 <dewalttools.com> be transferred to Complainant.
Robert A. Badgley
Date: October 17, 2017