Apex Brands, Inc. v. Chen xiansheng / chenxiansheng
Claim Number: FA2206002001175
Complainant is Apex Brands, Inc. (“Complainant”), represented by Jennifer A, Van Kirk of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is Chen xiansheng / chenxiansheng (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gear-wrench.com>, registered with Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 21, 2022. The Forum received payment on June 21, 2022.
On June 30, 2022, Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji confirmed by e-mail to the Forum that the <gear-wrench.com> domain name is registered with Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji and that Respondent is the current registrant of the name. Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji has verified that Respondent is bound by the Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji 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 July 1, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 2022 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@gear-wrench.com. Also on July 1, 2022, 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 July 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Apex Brands, Inc., together with its parent company Apex Tool Group, is one of the largest manufacturers of professional hand and power tools in the world, serving the industrial, vehicle service and assembly, aerospace, electronics, construction, and serious DIY markets. Complainant employs over 8,000 people with operations in over 30 countries around the world and has annual revenues of approximately USD $1.4 billion.
Complainant has rights in the GEARWRENCH mark through registration of the mark with multiple trademark authorities, including the United States Patent and Trademark Office (“USPTO”). Respondent’s <gear-wrench.com> domain name is virtually identical and confusingly similar to Complainant’s mark. Confusion is exacerbated by the fact that Complainant sells its products through its own website at “www.gearwrench.com”, which is identical to the domain name except for the addition of the hyphen in the domain name.
Respondent has no legitimate interests in the <gear-wrench.com> domain name. Respondent is not commonly known by the domain name and Complainant has not authorized or licensed to Respondent any rights in the GEARWRENCH mark, which is very well-known. Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the domain name resolves to an inactive webpage.
Respondent, using a privacy service, registered the typosquatted <gear-wrench.com> domain name in bad faith with actual knowledge of Complainant’s rights in the GEARWRENCH mark and is using it in bad faith in order to divert customers for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the GEARWRENCH mark through registration of the mark with multiple trademark authorities, including the USPTO (e.g., Reg. No. 2,928,469, registered March 1, 2005). The Panel finds Respondent’s <gear-wrench.com> domain name to be virtually identical and confusingly similar to Complainant’s mark because it incorporates the GEARWRENCH mark in its entirety and merely adds a hyphen, which does nothing to distinguish the domain name from the mark, and the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <gear-wrench.com> domain name was registered on May 5, 2022, many years after Complainant has shown that its GEARWRENCH mark had become very well-known in relation to power tools. It resolves to an inactive webpage.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <gear-wrench.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Section 3.3 of the WIPO Jurisprudential Overview 3.0 provides:
“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case Complainant has shown that its GEARWRENCH mark is distinctive and very well-known in relation to power tools. The typosquatted nature of the domain name (itself evidence of bad faith) satisfies the Panel that Respondent was likely to have been aware of Complainant’s well-known GEARWRENCH mark and its “www.gearwrench.com” website when Respondent registered the <gear-wrench.com> domain name and that Respondent did so in order to take advantage of the goodwill and reputation of Complainant’s GEARWRENCH mark. Further, Respondent has failed to contest any of Complainant’s assertions and has not provided any evidence of actual or contemplated good-faith use. Respondent concealed its identity when registering the domain name. Finally, although the GEARWRENCH mark is a combination of two dictionary words, the combination itself is one-of-a-kind and there is accordingly no plausible good faith use to which the domain name may be put.
Under these circumstances the Panel finds Respondent registered and is using the domain name in bad faith.
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gear-wrench.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: August 1, 2022
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