Stanley Black & Decker, Inc. v. Anonymize Inc / Privacy Administrator
Claim Number: FA2206002001614
Complainant is Stanley Black & Decker, Inc. (“Complainant”), represented by D Shaya of SBD ipadmin, Stanley Black & Decker, United Kingdom. Respondent is Anonymize Inc / Privacy Administrator (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackanddecker.us>, which is registered with NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2022; the Forum received payment on June 23, 2022.
On June 24, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <blackanddecker.us> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 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@blackanddecker.us. Also on June 24, 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 20, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a US-based Fortune 500 company and is a diversified global provider of hand tools, power tools and related products and services.
Complainant holds a registration for the BLACK & DECKER trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 7,471,179 registered on March 26, 1963, renewed most recently as of March 26, 2013.
Respondent registered the domain name <blackanddecker.us> on September 2, 2021.
The domain name is virtually identical and confusingly similar to Complainant’s BLACK & DECKER mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the BLACK & DECKER mark.
Respondent does not use the disputed domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, the disputed domain name resolves to a webpage offering goods and services sold in competition with the business of Complainant.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business and divert Complainant’s customers for Respondent’s commercial gain.
Respondent registered the domain name with knowledge of Complainant’s rights in the BLACK & DECKER mark.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is both substantively identical and confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is now being used by Respondent in bad faith.
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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used by Respondent in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP decisions as applicable in rendering its decision.
By virtue of its registration of the BLACK & DECKER trademark with a national trademark authority, the USPTO, Complainant has rights in the mark sufficient for purposes of establishing that it has standing to prosecute its Complaint against Respondent under the usTLD Policy. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark] … demonstrate[s] its rights in such mark for the purposes of Policy ¶4(a)(i).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <blackanddecker.us> domain name is both substantively identical and confusingly similar to Complainant’s BLACK & DECKER trademark. The domain name incorporates the mark in its entirety, with only the deletion of the spaces between its terms and the substitution of an ampersand (&) for the word “and” plus the addition of the country code Top Level Domain (“ccTLD”) “.us.” These alterations of the mark, made in forming the domain name, do not save it from the realm of identity or confusing similarity under the standards of the Policy. See, for example, Blue Cross and Blue Shield Assoc. v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018):
A TLD (whether a g[for generic]TLD, … or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.
See also: Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015):
The ccTLD “.us” designation is inconsequential to a Policy ¶ 4(a)(i) analysis.
Moreover, Respondent’s substitution of an ampersand (&) for the word “and” does nothing to change either the phonetic character or the meaning of the result, so it is likewise disregarded in our analysis of the question of identity or confusing similarity. See, for example, Russell & Bromley Ltd. v. KIM H. SUK, FA 1729773 (Forum June 12, 2017), finding a UDRP respondent’s <russellandbromley.com> domain name identical to a complainant’s RUSSEL & BROMLEY mark, because “[t]he ampersand is a prohibited character in a domain name so there is no difference between the ampersand (in the mark) and the word ‘and’ (in the domain name)”).
Finally, under this head of the Policy, Respondent’s deletion of the spaces between the terms of Complainant’s mark in creating the domain name is of no consequence to our analysis because spaces are not a permitted part of domain name syntax.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <blackanddecker.us> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c)(i)-(iv), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the domain name that are cognizable under the Policy.
We begin by noting that there is nothing in the record before us suggesting that Respondent is the owner or beneficiary of a trademark or service mark that is identical to the <blackanddecker.us> domain name. We conclude, therefore, that Respondent has no claim of rights to or legitimate interests in the domain name under Policy ¶ 4(c)(i). See, for example, Pepsico, Inc. v. Becky, FA 117014 (Forum September 3, 2002), finding that, because there was no evidence showing that a respondent owned a trademark or service mark reflecting a specific domain name, it could not lay claim to rights to or legitimate interests in that domain name under Policy ¶ 4(c)(i).
We next observe that Complainant asserts, without objection from Respondent, that the <blackanddecker.us> domain name resolves to a webpage offering goods and services sold in competition with the business of Complainant. This employment of the domain name is not a bona fide offering of goods or services such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in Policy ¶ 4(c)(ii). See, for example, Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that a Respondent’s employment of a domain name that was confusingly similar to the mark of a UDRP Complainant to market business services similar to those offered by that Complainant, and in competition with it, was not a bona fide offering of goods or services within the contemplation of Policy ¶ 4(c)(ii).
Complainant further contends, again without objection from Respondent, that Respondent has not been commonly known by the <blackanddecker.us> domain name and that Complainant has not licensed or otherwise authorized Respondent to use the BLACK & DECKER mark. In this connection, we note that the pertinent WHOIS information reflects that Respondent is identified only as “Anonymize Inc / Privacy Administrator,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name within the meaning of Policy ¶ 4(c)(iii). See, for example, Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent had no rights to or legitimate interests in a disputed domain name where a UDRP complainant asserted that it did not authorize a respondent to use it mark and the relevant WHOIS information indicated that that respondent was not commonly known by the domain name). See also PTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum November 13, 2018) (finding no rights to or legitimate interests in the <sothebys.email> domain name where the pertinent WHOIS record identified a respondent only as “Tony Yeh shiun.”
Complainant’s last contention under this heading is that Respondent’s use of the <blackanddecker.us> domain name, as described above, was undertaken for Respondent’s commercial gain. As with all other allegations of the Complaint, Respondent does not contest this. We therefore conclude that Respondent cannot find shelter under Policy ¶ 4(c)(iv), which accepts that rights to or legitimate interests in a domain name might be demonstrated by a showing that Respondent is making a legitimate noncommercial or fair use of its domain name, without intent to acquire commercial gain.
For all of these reasons, the panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(iii).
We have found that Respondent’s challenged <blackanddecker.us> domain name resolves to a webpage offering goods and services sold in competition with the business of Complainant and for Respondent’s financial gain. By so conducting itself, Respondent has taken on the mantle of Complainant’s illicit commercial competitor. Respondent must thus be found to be disrupting Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (finding that a respondent’s use of a disputed domain name to offer competing loan services disrupted a UDRP complainant’s business and therefore constituted bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iii)).
It is also obvious from the record that Respondent knew of Complainant and its rights in the BLACK & DECKER mark when Respondent registered the virtually identical and confusingly similar <blackanddecker.us> domain name. This further illustrates Respondent’s bad faith in registering it. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [of a UDRP complainant’s rights in a mark, and, therefore, a respondent’s bad faith in registering a confusingly similar domain name] through the name used for the domain and the use made of it.
See also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO December 18, 2000) (finding that a respondent knew of a UDRP complainant’s mark when it registered a confusingly similar domain name, and so further found that that respondent registered the domain name in bad faith).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <blackanddecker.us> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 25, 2022
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