McCally Tool & Supply Co. v. Arborlink, Inc.
Claim Number: FA0110000100650
Complainant is McCally Tool & Supply Co., Livonia, MI (“Complainant”) represented by Sandra Franklin, of Sills, Law, Essad, Fiedler & Charboneau. Respondent is Tony Keene Arborlink, Ann Arbor, MI.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mccallytool.com>, registered with eNom.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 16, 2001; the Forum received a hard copy of the Complaint on October 19, 2001.
On October 19, 2001, eNom confirmed by e-mail to the Forum that the domain name <mccallytool.com> is registered with eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 12, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On November 30, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.” 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 the Respondent to the Complainant.
Respondent’s <mccallytool.com> domain name is confusingly similar to Complainant’s pending MCCALLY TOOL & SUPPLY registered servicemark.
Respondent does not have any rights or legitimate interests in the <mccallytool.com> domain name.
Respondent registered and used the <mccallytool.com> domain name in bad faith.
No Response was received.
Complainant’s long-standing business has used the MCALLY TOOL & SUPPLY mark, and has a pending registration in the MCCALLY TOOL & SUPPLY servicemark.
Complainant hired Respondent January 7, 1999 to obtain the domain name for Complainant as part of Respondent’s web design services. Complainant paid Respondent for its services, and Respondent subsequently refused Complainant its own domain name.
Respondent deceitfully promised Complainant’s counsel that it would give Complainant the website so as not to disrupt its business and then failed to do so. Although Respondent has accepted Complainant’s payments for the domain name, Respondent refuses to respond to Complainant’s inquiries about the transfer of the domain name.
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.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
Respondent’s well-established business under its MCCALLY TOOL & SUPPLY is sufficient to provide Complainant with common law rights in the service mark. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [“keppelbank.com”] in connection with its banking business, it has acquired rights under the common law); see also Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) (finding that Complainant established sufficient rights by virtue of its distribution and advertising to enable it, at common law, to prevent another magazine by the same name from being passed off as that of Complainant. Thus Complainant established that it ‘has rights’ under the ICANN Policy).
Respondent’s <mccallytool.com> domain name is confusingly similar to Complainant’s common law service mark. The deletion of “& Supply” in the domain name is not sufficient to defeat a determination that the domain name is confusingly similar to the mark. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the Complainant’s “Asprey & Garrard”); see also PG&E Corp. v. Anderson & PGE in the year 2000, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at “www.pge.com” because the ampersand symbol is not reproducible in a domain name).
The Panel finds that policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
There is no evidence that Respondent has rights or legitimate interests in the domain name because Respondent’s failure to provide any evidence of its legitimate interests creates a presumption that it has no rights or legitimate interests in the domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).
In the absence of evidence from the Respondent the Panel may find that the Respondent has not made a bona fide offering of goods pursuant to ¶4 (c)(i). See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services).
Because Respondent is not commonly known by the domain name, has not been given permission to use Complainant’s mark, and has not provided any other facts to support legitimate interests Respondent is presumed not to have rights or legitimate interests in the domain names at issue pursuant to policy ¶ 4(c)(ii). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”).
As an employee of Complainant, Respondent’s awareness of Complainant’s rights and legitimate interests in the mark infers Respondent’s use of the confusingly similar domain name is an unfair use pursuant to policy ¶ 4 (c) (iii). See Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000) (finding that as a former employee, Respondent knew or should have known Complainant’s mark was in use as an integral part of the corporate name and as a trademark…the Respondent understood the legitimate interests and rights of Complainant and, by contrast, its own lack of interest or right…this is sufficient for Complainant to establish that Respondent had no rights or interest in the domain name).
The Panel finds that policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the domain name that it contracted to obtain for Complainant indicates a bad faith intent to disrupt Complainant’s business pursuant to ¶ 4 (b)(iii). While Respondent is holding Complainant’s domain name “for ransom” Complainant cannot use it to conduct its business. See SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting the complainant's business when Complainant's website cannot be accessed as a direct result of the disputed domain names).
Respondent’s incontestable awareness of Complainant’s mark, due to his status as an employee hired to obtain the domain name for Complainant, is evidence of Respondent’s bad faith use of the domain name. See Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and use where Respondent was employed by Complainant’s business, was fully aware of the name of her employer, and made no use of the infringing domain name); see also Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding "Respondent's registration of the company name of his former employer as a domain name is an act of bad faith").
The Panel finds that policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <mccallytool.com> be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 3, 2001
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