Milwaukee Electric Tool Corporation v. yang ming
Claim Number: FA2012001925935
Complainant is Milwaukee Electric Tool Corporation (“Complainant”), represented by Thomas A. Agnello of Michael Best & Friedrich LLP, Wisconsin, USA. Respondent is yang ming (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <miltools.shop>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 21, 2020; the Forum received payment on December 21, 2020.
On December 22, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <miltools.shop> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@miltools.shop. Also on December 28, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the Parties a Notification of Respondent Default.
On January 21, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims its rights in the MILWAUKEE trademark which it has established through its ownership of its portfolio of trade mark registrations described below, details of which have been provided in an annex to the Complaint; together with the goodwill that has been established by Complainant’s extensive and continuous use of the mark on its goods and related services since it was established in 1924, including on its websites. Complainant adds that it is frequently referred to as “Milwaukee Tool”.
Complainant submits that the disputed domain name <miltools.shop> is confusingly similar to Complainant’s MILWAUKEE mark as it consists of the element “mil,” which is an abbreviation of Complainant’s mark, the generic term “tools”, which is also a plural form of the word “tool” used in Complainant’s “Milwaukee Tool” name, and “.shop,” which is the generic Top Level Domain (“gTLD”) extension for the subject domain name.
Complainant submits that the term “mil” is a well-known abbreviation for the city of Milwaukee, Wisconsin, consisting of the first syllable of the word and as evidence of this assertion has provided screenshots from Wikipedia noting that “The Mil” and “Miltown” are abbreviations and nicknames for Milwaukee, available at https://en.wikipedia.org/wiki/Milwaukee (visited Dec. 19, 2020).
Complainant submits that panels established under the Policy have consistently found that incorporating an abbreviation of a trademark within a domain name creates a confusing similarity. See Chevron Intellectual Property LLC v. Linda Hearn, No. FA1109001409285 (Forum Nov. 15, 2011) (finding domain name CHEVOIL.COM confusingly similar to Complainant’s mark used for a wide range of products including
oil and gasoline).
Complainant adds that Respondent’s addition of the generic term “tools” does not serve to distinguish the disputed domain name from Complainant’s mark but rather increases the likelihood of confusion, since the public associates Complainant and its MILWAUKEE marks with goods including tools. Chevron Intellectual Property, No. FA1109001409285 (noting that inclusion of the term OIL as an element of the CHEVOIL.COM domain “is generic and does not serve to distinguish Respondent’s domain name from Complainant’s [CHEVRON] mark”).
Complainant adds that Respondent’s use of the generic top-level domain “.shop” is also irrelevant under the Policy. Allen Edmonds, LLC v. fdgjh/qing qiu, FA2006001899187 (Forum July 7, 2020) (“The gTLD .shop does not serve to prevent confusing similarity between the Domain Name and Complainant’s mark”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that there is no evidence that Respondent is commonly known as, or operates a business or other organization under the disputed domain name. To the contrary, the WhoIs record shows that Respondent’s name is Yang Ming. Experian Limited, Experian Information Solutions Inc. v. Brenda Needham, Case No. D2011-1162 (WIPO Aug. 18, 2011) (concluding that Respondent had “no rights or legitimate interests in the disputed domain name” because no evidence showed that Respondent was commonly known as, identified by, or operated a business or other organization under the disputed domain name).
Referring to screenshots of the website to which the disputed domain name resolves which are adduced in evidence in an annex to the Complaint, it is contended that Respondent is attempting to pass itself off as Complainant by prominently displaying Complainant’s trademarks and copyright-protected advertising material in connection with the purported offering for sale of Complainant’s own goods. Again, Complainant believes that Respondent does not actually sell products through its website, but rather created a fraudulent website for the sole purpose of misleading consumers into providing credit card and personal information.
Complainant argues that these screenshots illustrate that Respondent is using the disputed domain name to maintain an imposter website, which replicates the overall look and feel of Complainant’s website, which is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed the meaning. Dell Inc. v. Dell Tech Support / Dell Tech Support Phone Number / SNAB Corporation, FA1903001832968 (Forum Mar. 31, 2019) (“The website poses to appear as if it were sponsored by Complainant via its confusingly similar domain name address and additionally by the website’s misappropriation of the look and feel of Complainant’s official website. Respondent’s ruse goes so far as to even use Complainant’s logo for the imposter website’s favicon. Through such deception, Respondent attempts to pass itself off as Complainant presumably for commercial gain. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant submits that Respondent obviously registered and is using the disputed domain name in bad faith arguing that it owned 25 United States federal trademark registrations for its MILWAUKEE marks before Respondent registered the disputed domain name which evidences Respondent’s actual knowledge of Complainant’s MILWAUKEE mark when the disputed domain name was registered.
Complainant again refers to the screenshots of website to which the disputed domain name resolves as well as screenshots of Complainant’s own website, and alleges that a comparison of both illustrates that Respondent is using copyright-protected content copied from Complainant’s website, while prominently displaying Complainant’s federally registered trademark and logo, and replicating he overall look and feel of Complainant’s <milwaukeetool.com website>. JUUL Labs, Inc. v. T K, FA1906001847855 (Forum July 11, 2019) (“Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and logo” and “displays material copied from Complainant’s website.”).
Additionally it is stated that the disputed domain name’s resolving website attempts pass itself off as having an association with Complainant in order to collect users’ name, email address, city, and other information, which Complainant alleges is evidence of phishing behavior, demonstrative of bad faith under Policy ¶ 4(a)(iii). Pantera Advisors LLC v. Luggard Aus / Xiaomi company, FA1909001860639 (Forum Oct. 3, 2019) (“Complainant's evidence suggests that Respondent uses the <panteracapitals.com> domain name to pass off as Complainant in furtherance of a phishing scheme. In particular, Complainant has produced evidence which shows that the disputed domain name resolves to an ‘Imposter’ website that contains nearly identical links, pages and content to Complainant’s official website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer of power tools, hand tools, and related goods and services that it markets using the MILWAUKEE trademark for which it owns a large portfolio of United States federal registrations including:
· United States registered trademark MILWAUKEE, registration number 2624843, registered on the Principal Register on September 24, 2002 for goods in international class 7, claiming first use in commerce in 1924.
· MILWAUKEE and Design registration number 4534864, registered on the Principal Register on May 20, 2014 in international class 7, claiming first use in commerce on June 1, 1938;
· United States registered trademark MILWAUKEE, registration number 5203630, registered on the Principal Register on May 16, 2017 for goods in international class 9 claiming first use in commerce on May 1, 1963;
· United States registered trademark MILWAUKEE, registration number 5894915, registered on October 29, 2019 in international class 11, claiming first use in commerce on November. 4, 2010.
Complainant has an established Internet presence and maintains websites to which its domain names <milwaukeetool.com>, <milwaukeetool.ca>, <milwaukeetool.mx>, <milwaukeetool.eu> and
<milwaukeetool.com.au> resolve, providing information about Complainant, its MILWAUKEE brand goods and related services.
The disputed domain name was registered on December 1, 2020 and resolves to a website that prominently displays Complainant’s design trademark mark and offers power tools and accessories for sale.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this proceeding. The identity of Respondent, who is the registrant of the disputed domain name, was concealed on the published WhoIs by use of a privacy service and disclosed by the Registrar in its response to the Forum’s verification request.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has made out an uncontested case, supported by convincing evidence, that it has rights in the MILWAUKEE trademark established through its ownership of its portfolio of trade mark registrations described above and its long and continuous use of the mark on its goods since it was established in 1924, including on its websites.
The disputed domain name consists of element “mil,” which is an abbreviation of Complainant’s mark, in combination with the generic term “tools” and the gTLD extension <.shop>.
While the word “mil”, taken on its own, may not immediately be indicative of mark MILWAUKEE mark, in the context of the disputed domain name it creates a confusing similarity and the impression that it is an abbreviation of Complainant’s mark.
In the context of the present Complaint the gTLD <.shop>, may be ignored purposes of comparison as it would be perceived as required technical element of a domain name.
As Complainant has proven that the disputed domain name is confusingly similar to the MILWAUKEE mark in which Complainant has rights, the first element of the test in Policy ¶ 4(a)(i) has been satisfied.
Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that
· there is no evidence that Respondent is commonly known as, or operates a business or other organization under the disputed domain name but to the contrary, the WhoIs data shows that Respondent’s name is Yang Ming;
· the screenshots of the website to which the disputed domain name resolves illustrates that Respondent is attempting to pass itself off as Complainant by prominently displaying Complainant’s trademarks and copyright-protected advertising material in connection with the purported offering for sale of Complainant’s own goods;
· Complainant believes that Respondent does not actually sell products through its website, but rather, has created a fraudulent website for the sole purposes phishing for consumers credit card and personal information;
· Respondent is passing itself off as Complainant; and
· such use is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name at issue, the burden of production shifts to that respondent to show that he/she or it has such rights. Respondent has failed to discharge the burden of production and therefore this Panel must hold that, as Complainant has alleged, Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore satisfied the second element of the test in Policy ¶ 4(a)(ii)
Complainant has shown that it has long and extensively used its MILWAUKEE mark in the sale of and related products and services including on the Internet.
Additionally, Complainant owns a large portfolio of registrations for its MILWAUKEE mark. Given that the disputed domain name consists of a combination of an abbreviation of Complainant’s mark and the word “tools”, on the balance of probabilities it was selected and registered in order to target and take predatory advantage of Complainant, its name, reputation and goodwill in the mark. This finding is supported by the manner in which the disputed domain name is being used to resolve to a website on which Complainant’s mark and images taken from Complainant’s on website are prominently displayed.
The website to which the disputed domain name resolves prominently displays Complainant’s design mark and logo. There is no impression created that it is maintained by anyone other than Complainant. Such unauthorized and misleading use by Respondent of Complainant’s mark is sufficient to require this Panel to make a finding of bad faith use of the disputed domain name for the purposes of the Policy.
While Complainant has shown that the images displayed on Respondent’s have been taken from its own website, it is notable that an examination of these images of power tools and similar items, shows that they have been altered to remove Complainant’s trademark from the products displayed in the images, while having Complainant’s mark and logo prominently displayed on the webpage.
In these circumstances Complainant’s uncontested allegation that Respondent is using the disputed domain name in bad faith for the purposes of phishing, is entirely credible but it is not necessary to make this finding for the Complaint to succeed.
As this Panel finds that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <miltools.shop> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: January 22, 2021
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