WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bon Tool Co. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd
Case No. D2019-1056
1. The Parties
The Complainant is Bon Tool Co., United States of America (“United States”), represented by The Law Office of R. W. James, United States.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America / Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd, Panama.
2. The Domain Name and Registrar
The disputed domain name <bontools.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 May 7, 2019. On May 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 14, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 19, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on May 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2019.
The Center appointed Adam Taylor as the sole panelist in this matter on June 20, 2019. 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 tool manufacturer and distributor with manufacturing facilities located in Pittsburgh, Pennsylvania, United States. The Complainant has traded under the name “Bon Tool” since 1958. Currently it employs 70 people.
The Complainant owns the following United States trade marks, amongst others:
- No. 1,391,395 for BON TOOL CO, filed March 28, 1985, registered April 29, 1986, in international class 8; and
- No. 3,301,735 for BON, filed June 2, 2005, registered October 2, 2007, in international classes 8, 9, 18, and 37.
The Complainant has operated its main website at “www.bontool.com” since 1997.
The disputed domain name was registered on October 28, 2003.
The Respondent has used the disputed domain name for a website with pay-per-click (“PPC”) links, including those relating to “Hand Tools”, “Concrete Finishes”, and “Coated Garage Floor”. The PPC website also included a statement that the disputed domain name may be for sale and invited users to click for more details.
On an unspecified date, the Complainant sent a cease and desist letter to the Respondent. The
Respondent responded, stating that the disputed domain name “currently does not resolve to any infringing content” and that if the Complainant wished to resolve the dispute “you will have to file a UDRP to ICANN”.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions:
The disputed domain name incorporates the Respondent’s BON trade mark and is confusingly similar to its BON TOOL CO trade mark. The addition of “s” to the word “tool” is insufficient to differentiate the disputed domain name from the Complainant’s trade mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has never authorised the Respondent to use its trade marks.
The Respondent’s activities do not come within paragraph 4(c) of the Policy. On the contrary, the Respondent’s PPC page seeks to capitalise on the Complainant’s goodwill in its trade marks and to infringe the Complainant’s trade mark rights.
There is no indication that the Respondent has made a bona fide offering of goods or services in connection with the disputed domain name.
The disputed domain name was registered and is being used in bad faith.
The Respondent has intentionally used the Complainant’s mark to attract, mislead, and profit from Internet users who have mistyped the Complainant’s domain name <bontool.com>, by adding an “s” to that domain name. The Respondent redirects such users to its website with PPC links to the Complainant’s competitors.
The Respondent registered the disputed domain name through a privacy service, which it changed to an overseas service after receipt of the Complainant’s letter, highlighting the Respondent’s desire to remain anonymous and its intentional bad faith use of the disputed domain name.
The Respondent advertises its desire to sell the disputed domain name on every page of its website, indicating that that is its primary interest in the disputed domain name. The disputed domain name is offered for sale at USD 3,782, which is around the cost of preparing and filing this Complaint.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the marks BON and BOON TOOL CO by virtue of its registered trade marks for those terms.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s trade mark BON is readily recognisable within the disputed domain name and, accordingly, the addition of the descriptive term “tools” is insufficient to avert a finding of confusing similarity.
Furthermore, in accordance with section 1.7 (third paragraph) of the WIPO Overview 3.0, the Panel considers that a dominant feature of the Complainant’s trade mark BON TOOL CO, namely “Bon Tool” is also recognisable within the disputed domain name, which merely converts “tool” to the plural “tools”.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used for a parking page with links to goods which compete with those supplied by the Complainant. Such use of the disputed domain name could not of itself confer rights or legitimate interests. See section 2.9 of the WIPO Overview 3.0, which states that use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where, as here, such links compete with or capitalise on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In the Panel’s view, paragraph 4(b)(iv) of the Policy applies. By using the disputed domain name, which closely reflects the Complainant’s distinctive trade marks, in connection with a parking page with PPC links to products relating to the Complainant’s industry, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade marks.
Furthermore, the Panel notes that the underlying beneficial registrant of the disputed domain name has not been identified. Instead, there is a “Russian doll” scenario whereby the registrant “disclosed” by the Registrar following the filing of the Complaint turned out to be yet another privacy service. Section 4.4.6 of the WIPO Overview 3.0 notes that such “multi-layered obfuscation” may support an inference of bad faith, e.g., as an attempt to shield illegitimate conduct from a UDRP proceeding. In the Panel’s view, such an inference is appropriate in this case.
ThePanel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 disputed domain name <bontools.com> be transferred to the Complainant.
Date: July 3, 2019