WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

All-Clad Metalcrafters LLC v. Eugene Preston

Case No. D2021-0799

1. The Parties

Complainant is All-Clad Metalcrafters LLC, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.

Respondent is Eugene Preston, United States.

2. The Domain Name(s) and Registrar(s)

The disputed domain names <all-clad.club>, <allclad.online>, <all-clad.store>, <all-cladstore.online> and <all-cladus.online> (the “Domain Names”) are registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2021. On March 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 23, 2021 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 March 23, 2021.

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 April 1, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was April 21, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 22, 2021.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on April 27, 2021. 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 helps chefs and cooks cook through its range of handcrafted cookware products, with everything from frying pans and sauciers to Dutch ovens and specialty cookware. Complainant was founded in 1971 in Pennsylvania by John Ulam, a renowned metallurgist. By applying his patented metal crafting methods, Ulam bonded layers of stainless steel and aluminum and shaped them into pans, thereby developing improved cookware. Originally designed to meet the requirements of professional chefs, Complainant’s cookware products are popular in culinary circles and kitchens throughout the world. Today, the All-Clad brand is a preferred cookware choice for both professional chefs and home cooking enthusiasts.

Complainant is the owner of multiple trademark registrations for its ALL-CLAD trademark across various jurisdictions, through its subsidiary, Clad Holdings Corp. Complainant has submitted evidence of its registrations with the United States Patent and Trademark Office (the “USPTO”) and the Canadian Intellectual Property Office (the “CIPO”), for instance, United States trademark registration No. 2223859 dated February 16, 1999. Complainant maintains an Internet presence through its domain name, <all-clad.com>, registered on July 16, 1998 and managed by Complainant’s parent company, Groupe SEB. Through this site, Complainant sells its range of products. Additionally, Complainant uses social media to communicate with its clients and promote its products. Complainant’s Facebook page has 74,742 likes and 75,515 followers, whilst its Instagram profile has 67,600 followers.

The Domain Names <all-clad.store> and <all-cladstore.online> were registered on January 21, 2021, and the Domain Names <all-clad.club>, <allclad.online> and <all-cladus.online> were registered on February 3, 2021. All of the Domain Names, with the exception of the Domain Name <all-cladstore.online> (which resolves to a blank page), link to websites that either seek to impersonate Complainant, or otherwise offer Complainant’s goods, or counterfeit or competitor goods, without Complainant’s authorization.

5. Parties’ Contentions

A. Complainant

(i) Identical or confusingly similar

Complainant states that by virtue of its trademark and service mark registrations, it is the owner of the ALL-CLAD trademark. The granting of registrations by the USPTO and CIPO to Complainant for the ALL-CLAD trademark is prima facie evidence of the validity of the term ALL-CLAD as a mark, of Complainant’s ownership of this mark, and of Complainant’s exclusive right to use the mark in commerce on or in connection with the goods and/or services specified in the registration certificates. Complainant claims these registrations also demonstrate that it has spent a considerable amount of time and money protecting its intellectual property rights.

Complainant further states that it is standard practice, when comparing a domain name to a complainant’s trademark, not to take into account the Top-Level Domain (the “TLD”). Nonetheless, Complainant asserts that the TLD “.store”, used in the Domain Name <all-clad.store>, augments the likelihood of confusion given that Complainant offers for sale cookware and utensils through its website.

Complainant further submits that the second level of the Domain Names <all-clad.store>, <all-clad.club> and <allclad.online> consists solely of Complainant’s ALL-CLAD trademark, resulting in Domain Names that are identical to Complainant’s ALL-CLAD mark and thus meeting the requirements under paragraph 4(a)(i) of the Policy. Further, in creating the Domain Names <all-cladus.online> and <all-cladstore.online>, Respondent has added the geographic term “US” and the generic term “store” to Complainant’s ALL-CLAD mark, respectively, thereby making these Domain Names confusingly similar to Complainant’s mark. The fact that these terms are closely associated with Complainant’s brand and mark increases the confusing similarity between these Domain Names and Complainant’s trademark. In particular, Complainant is a leading cookware manufacturer founded and based in the United States, and Complainant provides cookware, kitchen electrics and other tools and accessories for sale through its primary website at <all-clad.com>.

Complainant contends that Respondent’s omission of the hyphen in the Domain Name <allclad.online> does nothing to distinguish this Domain Name from Complainant’s ALL-CLAD mark. The omission of this hyphen does not diminish the confusing similarity between the Domain Name and Complainant’s trademarks.

Additionally, Complainant asserts that Respondent’s use of the Domain Names contributes to the confusion. Respondent is using the website at <all-clad.store> to impersonate Complainant, and the Domain Names <all-clad.club>, <allclad.online> and <all-cladus.online> to host sites highlighting the merits of products that compete with Complainant’s own offerings. This suggests that Respondent intended the Domain Names to be confusingly similar to Complainant’s trademark as a means of furthering consumer confusion. As a result, Respondent’s use of these Domain Names to resolve to websites where Respondent seeks to impersonate Complainant and/or sell competing goods is further evidence that the Domain Names are confusingly similar to Complainant’s trademark.

(ii) Rights or legitimate interests

Complainant maintains that Respondent has no rights or legitimate interests in the Domain Names. Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in the Domain Names. Respondent is not commonly known by the Domain Names, which evinces a lack of rights or legitimate interests. Furthermore, Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s trademark. In the absence of any license or permission from Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Domain Names can reasonably be claimed.

Complainant states that the WhoIs information identifies Respondent as an individual whose name does not resemble the Domain Names in any manner – thus, where no evidence suggests that Respondent is commonly known by the Domain Names, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the Domain Names within the meaning of paragraph 4(c)(ii) of the Policy. Furthermore, Complainant claims that at the time of filing the Complaint, Respondent was using a privacy service, which past UDRP panels have found to equate to a lack of legitimate interest.

Complainant states that the Domain Name <all-clad.store> redirects Internet users to a website that copies and attempts to duplicate Complainant’s official website by displaying Complainant’s logo across the site and its favicon, as well as copying pictures of Complainant’s cookware products and the general aesthetic of Complainant’s site. Complainant contends that this website has been designed to serve as a replica of Complainant’s site, as a means of deceiving Internet users into believing that the Domain Name and its website are associated with Complainant. Respondent’s attempt to pass off the Domain Name as being affiliated with Complainant, and in fact as being Complainant, is itself evidence that Respondent does not have rights and legitimate interests in the Domain Names pursuant to paragraph 4(a)(ii) of the Policy.

Complainant submits that Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the Domain Names <all-clad.club>, <allclad.online> and <all-cladus.online>. On the websites linked to these Domain Names, Respondent offers and attempts to sell cookware products that directly compete with Complainant’s own offerings. Complainant claims that UDRP panels have consistently held that selling competing goods, coupled with the unauthorized use of a complainant’s trademarks in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services under the Policy, paragraph 4(c)(iii).

Complainant states that Respondent is using the Domain Name <all-cladstore.online> to redirect Internet users to a website that resolves to a blank page and lacks content. Respondent has failed to make use of this Domain Name’s site and has not demonstrated any attempt to make legitimate use of the Domain Name and the site, which evinces a lack of rights or legitimate interests in the Domain Name.

Lastly, Respondent registered the Domain Names between January 21 and February 3, 2021, which is significantly after Complainant filed for registration of its ALL-CLAD trademarks with the USPTO and CIPO, and also significantly after Complainant’s first use in commerce of its trademark in 1971. The Domain Names’ registration dates are also significantly after Complainant’s registration of its <all-clad.com> domain name in July 1998.

(iii) Registered and used in bad faith

Complainant states that it and its ALL-CLAD trademarks are known internationally, with trademark registrations across numerous countries. Complainant has marketed and sold its goods and services using this mark since 1971, which is well before Respondent’s registration of the Domain Names between January 21 and February 3, 2021. Complainant contends that at the time of registration of the Domain Names, Respondent knew, or at least should have known, of the existence of Complainant’s trademarks and that registration of the Domain Names containing well-known trademarks constitutes bad faith per se. In addition to the numerous trademarks filed in connection with Complainant’s business prior to Respondent’s registration of the Domain Names, Complainant has been operating for 50 years as a leading cookware manufacturer, whose innovations have revolutionized cooking and are the preferred products for professional chefs and Michelin restaurants, which demonstrates Complainant’s fame. Further, performing Google searches for “all-clad”, “all clad”, “all-clad us” and “all-clad store” returns multiple links referencing Complainant and its business.

Complainant submits that by registering Domain Names that incorporate Complainant’s ALL-CLAD trademark in its entirety, Respondent has created Domain Names that are confusingly similar to Complainant’s mark, as well as to its <all-clad.com> domain name. As such, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. Additionally, Respondent has used the website at the Domain Name <all-clad.store> to impersonate Complainant and those at the Domain Names <all-clad.club>, <all-cladus.online> and <allclad.online> to feature products that compete with Complainant’s own offerings. In light of these facts, Complainant contends it is not possible to conceive of a plausible situation in which Respondent would have been unaware of Complainant’s brands at the time the Domain Names were registered. Stated differently, the ALL-CLAD mark is so closely associated with Complainant that Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith.

Complainant asserts that in the Domain Name <all-clad.store> Respondent has created a likelihood of confusion with Complainant and its trademarks by attempting to impersonate Complainant, by displaying Complainant’s logo across its website and favicon and copying pictures of Complainant’s products and the general aesthetic of Complainant’s website. Respondent then attempts to profit from such confusion by offering Complainant’s products (or counterfeits) for sale at a heavily discounted price. As such, Respondent is attempting to cause consumer confusion in a nefarious attempt to profit from such confusion. The impression given by this Domain Name and its website would cause consumers to believe that Respondent is somehow associated with Complainant when, in fact, it is not. Respondent’s actions create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of this Domain Name, and Respondent is thus using the fame of Complainant’s trademarks to improperly increase traffic to the website linked to this Domain Name for Respondent’s own commercial gain. It is well established that such conduct constitutes bad faith.

Complainant states that Respondent’s use of the Domain Names <all-clad.club>, <allclad.online> and <all-cladus.online> constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy, paragraph 4(b)(iii), because the Domain Names are confusingly similar to Complainant’s trademarks and the websites at the Domain Names are being used to offer counterfeit or competing goods. Complainant submits that past UDRP panels have confirmed that such use is evidence of bad faith registration and use.

Complainant states that the Domain Name <allcladstore.online> currently resolves to an inactive site and is not being used, though prior UDRP panels have noted that bad faith use in the context of the Policy, paragraph 4(a)(iii), does not require a positive act on the part of the respondent. Instead, passively holding a domain name can constitute a factor in finding bad faith registration and use.

Complainant further submits that previous UDRP panels have concluded that evidence of prior panel decisions in which domain names have been transferred away from a respondent to the complaining parties supports a finding that the respondent has engaged in a bad faith pattern of cybersquatting. Respondent here has previously been involved in such as case, which Complainant asserts provides evidence of the pattern of cybersquatting in which Respondent is engaging. See Wahl Clipper Corporation v. Eugene Preston, FA 1932886 (FORUM, Mar. 19, 2021). Respondent has registered five Domain Names that each infringe upon Complainant’s ALL-CLAD trademark. This demonstrates that Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Names registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) Respondent has registered and is using the Domain Names in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated that it has well-established rights in its ALL-CLAD trademarks, both through registration and widespread use. The Panel finds that the Domain Names incorporate the ALL-CLAD mark in its entirety, while one of the Domain Names adds the geographic abbreviation “US” and another adds the term “store”. This use of Complainant’s ALL-CLAD mark in the Domain Names creates either identity or confusing similarity with Complainant’s mark. Regarding the two Domain Names with additional terms, numerous UDRP decisions have found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Further, the omission of the hyphen in one of the Domain Names does not diminish the confusing similarity between that Domain Name and Complainant’s ALL-CLAD mark. See Chernow Communications, Inc. v. Kimball, WIPO Case No. D2000-0119 (finding that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark).

Accordingly, the Panel finds that the Domain Names are identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Regarding the second element of the Policy, section 2.1 of the WIPO Overview 3.0, states, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to respond to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use Complainant’s ALL-CLAD trademarks; that Respondent is not commonly known by the Domain Names; that Respondent has not used the Domain Names for a legitimate noncommercial or fair use, nor used them in connection with a bona fide offering of goods or services. Instead, the Domain Names effectively impersonate or suggest sponsorship or endorsement by Complainant, by including the entirety of Complainant’s ALL-CLAD trademark as the dominant (or only) element, along with the abbreviation “US” in one of the Domain Names and the term “store” in another.

Further, Respondent has not tried to justify why the Domain Names were registered. The evidence submitted by Complainant indicates the Domain Names are being used to impersonate Complainant and/or pass off on Complainant’s ALL-CLAD marks. In cases such as this, where Respondent attempts to impersonate Complainant and the relationship with Complainant is not properly disclosed, this is not a fair or bona fide use and does not give rise to any rights or legitimate interests. See Educational Testing Service v. Ali Mohammed Ahmed, Afakcenter, WIPO Case No. D2017-1600 (where the website associated with the disputed domain name was almost identical in appearance to the complainant’s website, this was not a bona fide use of the domain name). Further, selling competing or counterfeit goods, or attempting to do so, coupled with the unauthorized use of Complainant’s marks in the confusingly similar Domain Names, does not qualify as a bona fide offering of goods or services. Lastly, one of the Domain Names, <all-cladstore.online>, redirects Internet users to a site that resolves to a blank page. Respondent has failed to make use of this Domain Name and has not demonstrated any attempt to do so, which shows a lack of rights or legitimate interests in it.

Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Names, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.

Here, the Panel determines that the Domain Names were registered and are being used in bad faith. There is little doubt that Respondent, when registering the Domain Names, was aware of Complainant and its ALL-CLAD marks, and intentionally targeted them, when registering the Domain Names. Complainant’s trademark registrations and use of its marks predate registration of the Domain Names by many years. Some of the Domain Names, aside from the TLDs, are identical to Complainant’s ALL-CLAD marks. Moreover, Respondent’s addition of the geographic abbreviation “US” in one of the Domain Names and the term “store” in another does not avoid potential confusion among Internet users. Respondent has registered five Domain Names that are either identical or confusingly similar to Complainant’s ALL-CLAD trademarks. Moreover, Respondent has used the Domain Names either to impersonate Complainant and its website or to pass off on Complainant’s marks by offering to selling competing or counterfeit goods. Given these facts, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its marks when registering the Domain Names. See Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226 (where a domain name is “so obviously connected with such a well-known name and products, its very use by someone with no connection with the products suggests opportunistic bad faith”).

This point is further confirmed by Respondent’s use of the Domain Names. The evidence indicates that Respondent has used the Domain Name <all-clad.store> in an attempt to impersonate Complainant, by displaying Complainant’s logo and copying pictures of Complainant’s products on Respondent’s site, and then attempting to profit from the confusion by offering Complainant’s products (or counterfeits) for sale at a discounted price. Respondent’s actions create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of this Domain Name, and Respondent is using the fame of Complainant’s ALL-CLAD mark to improperly increase traffic to the site linked to this Domain Name for Respondent’s own commercial gain. Further, Respondent’s use of the Domain Names <all-clad.club>, <allclad.online> and <all-cladus.online> disrupts Complainant’s business because they are confusingly similar to Complainant’s ALL-CLAD mark and the websites linked to them are being used to offer either competing or counterfeit goods. The Panel finds that Respondent, through this scheme, has intentionally attempted to attract for commercial gain Internet users to Respondent’s online location by creating a likelihood of confusion with Complainant’s ALL-CLAD marks as to the source, sponsorship, affiliation, and endorsement of Respondent’s scheme.

In addition, by registering the five Domain Names that are either identical or confusingly similar to Complainant’s ALL-CLAD trademarks, the Panel finds that Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use. See Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602 (respondent’s registration of three domain names incorporating the complainant’s trademark constituted a pattern of intentionally obstructive behavior). Finally, the Domain Name <allcladstore.online> resolves to an inactive site. However, in the context of this case, where all of the other Domain Names have been registered and are being used in bad faith, and where Respondent has not attempted to justify the registration and use of any of the Domain Names, the Panel determines that this passive holding constitutes bad faith registration and use pursuant to Policy. See Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260 (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose).

In conclusion, the Panel determines that, for all of the above reasons, the Domain Names were registered and are being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy.

7. Decision

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, <all-clad.club>, <allclad.online>, <all-clad.store>, <all-cladstore.online> and <all-cladus.online>, be transferred to Complainant.

Christopher S. Gibson
Sole Panelist
Date: May 7, 2021