Claim Number: FA0804001177177
Complainant is The Stanley Works (“Complainant”), represented by James
R. Davis, of Arent Fox, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <vidmarcabinets.com>, <vidmarcabinet.com>, <vidmarcabinets.net> and <vidmarcabinet.net>, registered with Network Solutions, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 11, 2008.
On April 10, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <vidmarcabinets.com>, <vidmarcabinet.com>, <vidmarcabinets.net> and <vidmarcabinet.net> domain names are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 April 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 5, 2008 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 email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on May 5, 2008.
A timely Additional Submission was received from the Complainant on May 12, 2008, in accordance with Supplemental Rule 7.
On May 12, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
On May 20, 2008, the Respondent submitted an Additional Submission.
Complainant requests that the domain names be transferred from Respondent to Complainant.
According to the Complainant, it owns registrations around the world for the VIDMAR mark for industrial storage equipment, cabinets, and related products. Since at least as early as 1958 it has been using its distinctive VIDMAR mark in connection with, among other things, a wide variety of cabinets and storage products. It uses that mark to advertise and promote its products on the Internet.
Further, says the Complainant,
since at least as early as 1958, it has developed substantial goodwill in its
VIDMAR name and mark. Each year a
significant number of customers throughout the
The Complainant alleges that the Respondent sells cabinets that compete directly with those offered under its VIDMAR brand. And that the Respondent registered the disputed domain names in 2004 and has used them in bad faith to capitalize on the famous VIDMAR name and mark, and profit from the international and domestic goodwill that the Complainant has created in its VIDMAR brand.
According to the Complainant, it discovered in November 2007 that the Respondent was promoting his business (DMARK Corporation) by purchasing the Complainant’s VIDMAR mark as a Google adword. The Complainant’s attorneys contacted the Respondent at that time and objected to its unauthorized use of the VIDMAR mark to advertise and promote competing products through Google’s search engine. During those discussions the Respondent conceded that he also owned the four domain names at issue in this dispute. The Complainant immediately requested the Respondent to transfer those domain names and refrain from all unauthorized uses of the VIDMAR mark. However, the Respondent has refused to transfer the domain names unless the Complainant pays the Respondent $5,135, an amount that clearly exceeds the Respondent’s actual out-of-pocket costs associated with the four domain names. The Respondent claims this payment will be a reimbursement of the costs he spent for advertisements on Google. However, it is obvious that any such advertising costs – if they exist – are completely unrelated to the transfer of the infringing domain names and the Respondent is, in fact, using the domain names as leverage to obtain substantial monetary payments from the Complainant. In the interim, the domain names continue to route to a commercial Web site that includes links to Web sites operated by the Complainant’s competitors. The Complainant, therefore, is being harmed, and consumers are likely to be confused, by Respondent’s registration and use of the disputed domain names.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names because it is not named VIDMAR, and the Complainant has not licensed or otherwise authorized the Respondent to use the VIDMAR mark in domain names.
According to the Complainant, the following is evidence of the Respondent’s bad faith registration and use of the infringing domains:
Respondent’s offer to sell the domain names to
the rightful trademark owner for a substantial profit constitutes a bad faith
use of the domain names in violation of
· Respondent’s bad faith use of the domain names is further demonstrated by the commercial Web sites that are being used in connection with the domain names. Specifically, the disputed domain names route to a commercial Google Web site that provides a search engine and links to cabinet and storage companies that compete with the Complainant’s VIDMAR products.
· The Respondent participates in the cabinet business and is familiar with the Complainant and its VIDMAR products. The Respondent cannot in good faith claim that he had no knowledge of the Complainant’s rights in its famous VIDMAR name and mark. Furthermore, the Respondent cannot claim in good faith that he made a legitimate noncommercial or fair use of the subject domains, or that he is commonly known as VIDMAR.
The Respondent alleges that he has been a reseller of the Complainant’s goods for well over 20 years and continues to be a reseller. The Complainant treats the Respondent as a dealer.
The Respondent alleges that the Complainant abandoned its VIDMAR mark in 1996. On November 12, 1996, the Respondent received a notice from the Complainant, who was then named Stanley Vidmar, Inc., announcing that it had changed its name to Stanley Storage Systems, Inc. The Respondent also learned, around that time, that the original European company using the original VIDMAR name (Vidmar AG) was purchased by Lista AG. The Respondent admits that it is a multi-line distributor of various types of cabinets and workbenches. Indeed, the Respondent has been a sales agent and distributor of Lista AG for more than 20 years and uses the domain name <listacabinets.com>. This, along with the Respondent’s subsequent non-use of the VIDMAR name, demonstrates the Respondent’s reasonable belief that the Complainant had abandoned the VIDMAR name.
At most, says the Respondent, the Complainant presents evidence of use of a different mark, STANLEY VIDMAR, in connection with its products.
And, says the Respondent, the Complainant only started to use the web site <stanleyvidmar.com> in 2007, when the Complainant announced its new brand identity by returning to the VIDMAR name.
Further, says the Respondent, end-users and professionals in the field were using the names LISTA and VIDMAR interchangeably. In addition to reselling the Complainant’s genuine goods, the Respondent also resold goods from a company that uses the name LISTA, and the Respondent owns the domain name <listacabinets.com>. With the interchangeable usage of the names in mind and after being notified of the Complainant’s abandonment of the name VIDMAR, the Respondent sought to register the disputed domain names with the intent only to resell, at the disputed domain names, genuine goods purchased from the Complainant. Thus, the Respondent had a legitimate interest in registering the disputed domain names. The Respondent cites various UDRP cases to support this position.
The Respondent denies that the VIDMAR name is famous. And he also denies that the Complainant has engaged in continuous and extensive use of the mark in interstate and international commerce in connection with advertising and sales of the Complainant’s goods and services, because the Complainant publicly announced its name change and subsequently failed to use the mark for years.
The Respondent alleges that he registered the disputed domain names in good faith because, at the time of registration, he had a reasonable belief that the Complainant had abandoned the VIDMAR name and he understood that the Complainant was making no use of the VIDMAR name to promote its products, online or otherwise.
In November 2007, the Respondent was contacted by the Complainant with respect to the Google keyword VIDMAR in connection with an unrelated website. Promptly after receiving said contact from the Complainant, the Respondent in good faith removed the keyword. Further, the Respondent readily volunteered the information that he had registered the four disputed domain names so as to avoid any impression of being deceptive.
In response to the Complainant’s demands that said domain names be transferred, the Respondent was more than willing to cooperate upon reasonable compensation of $5,135.00 to cover the cost of out-of-pocket costs of the original registrations, renewals, and accrued and anticipated attorney’s fees related to negotiation and settlement of the matter. The original registrations and subsequent renewals alone were just under $600.00. Since the Respondent had registered the disputed domain names with a good faith intent solely for sale of genuine goods, his initial request was only calculated to reimburse him for actual and reasonably anticipated costs associated with the domain names, and was not requested for profit. Indeed, the suggested compensation was never communicated as an absolute, but the Respondent repeatedly informed the Complainant that he was willing to negotiate the issue of reimbursement, even if he expected to take a slight loss.
According to the Respondent, he never actively used the disputed domain names. He has not used them route to commercial Web sites, as the Complainant alleges. Indeed, the evidence provided by the Complainant shows that Google has only provided links with respect to searches for generically named produces, such as Wood Cabinet Doors, Cabinet Knobs, Metal Cabinet, etc.
Further, the Respondent denies all other allegations made by the Complainant, stating that the Complainant failed to provide sufficient evidence to substantiate them.
C. Additional Submissions
In its Additional Submission, the Complainant alleges that it has never abandoned its VIDMAR mark. The Complainant has used that mark continuously and extensively for over 40 years. As an experienced cabinet seller, the Respondent certainly must know this.
According to the Complainant, the Respondent supports its unfounded claim with a single invoice, dated 1996, from the Complainant that references a change in the company’s name. Indeed, the Complainant changed the name of one of its wholly-owned subsidiaries from Stanley Vidmar, Inc. to Stanley Storages Systems, Inc. However, this corporate name change is irrelevant to this proceeding, which pertains solely to the VIDMAR trademark. The Complainant did not stop using its VIDMAR mark, nor did it do anything to mislead the Respondent or the public into believing that it had. The press release cited by the Respondent relates solely to the Complainant’s adoption in 2007 of a new VIDMAR logo, slogan, and brand identity and there is nothing in the press release that would indicate that the Complainant every stopped using the VIDMAR trademark.
The Complainant provides evidence indicating that it was using its VIDMAR trademark and the domain name <stanleyvidmar.com> at the time when the Respondent registered the disputed domain names, and for at least two years prior to that time.
The Respondent has admitted that he has been a reseller of the Complainant’s products for well over 20 years and that he is a multi-line distributor of various types of cabinets and workbenches. As somebody with extensive experience selling the Complainant’s VIDMAR cabinets, its is frankly unbelievable—says the Complainant—that the Respondent is now claiming that he did not know that the Complainant was still using the VIDMAR mark on the very cabinets he was selling.
The Respondent alleges that he “readily volunteered information that he had registered the four disputed domain names …”. But—says the Complainant—the Respondent did not readily identify all four disputed domain names. The Respondent identified only one of the four. The Complainant discovered the existence of the other three domain names through its own, independent investigation.
According to the Complainant, the UDRP cases cited by the Respondent are not relevant, because the registrants in those cases had not offered to sell the disputed domain names for well above out-of-pocket costs. Moreover, they used the disputed domain names solely to advertise and promote the trademark owner’s products, unlike the Respondent, who is using the disputed domain names with commercial Google Web pages in an obvious attempt to coerce the Complainant to pay for the transfer of the domain names.
In its Additional Submission, the Respondent alleges that the Complainant fails to account for its notorious public conduct that induced the cabinet industry, including the Respondent, to reasonably believe that the Complainant had abandoned the VIDMAR trademark.
According to the Respondent, the
Complainant took pains to remove itself from the VIDMAR name and instead focus
Further, says the Respondent, while the Complainant has submitted what it purports to be evidence of its use of the VIDMAR mark on a website in 2003, its contrary actions gave the Respondent no reason to believe that the VIDMAR name was still in use and, accordingly, he had no knowledge of the <stanleyvidmar.com> website until last year.
The Respondent further elaborates on this point. For the reasons set forth below, the Panel will not summarize those arguments in any detail.
Further, says the Respondent, the Complainant does not contest that the Respondent is and has been a legitimate dealer and reseller of its products for many years. Because the Respondent was a reseller of the Complainant’s products, he only sought to sell legitimate goods on the disputed domain names. Accordingly, the Respondent had, and still has, a legitimate interest in the disputed domain names and the Complainant has failed to show otherwise.
The Respondent reiterates that he had a good faith intent when registering the domain names, that he has a legitimate interest in the disputed domain names, and that he only requested reimbursement for costs directly related to the domain names (i.e., registration and renewal feels, and attorney's fees) solely to break even.
Complainant is a well-know manufacturer of cabinets and related products. It owns the registered VIDMAR mark and had used that mark continuously since at least 1958 to promote and sell cabinets.
Respondent has been a reseller of Complainant’s products for at least 20 years and also distributes competing products.
Respondent used the disputed domain names to point to commercial web sites offering links to competitors of Complainant.
Respondent requested compensation in excess of out-of-pocket costs in order to transfer the disputed domain names.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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.
The Respondent does not dispute that the contested domain names are confusingly similar to the VIDMAR mark. He alleges that the Complainant has abandoned that mark. But the Complainant provides convincing evidence to the contrary, and provides evidence showing that it has registered rights in the VIDMAR mark.
Thus, the Panel finds that the Complainant has satisfied its burden of proving that the contested domain names are confusingly similar to its VIDMAR mark.
The Respondent alleges that he has legitimate interests in the disputed domain names because he is a reseller of cabinets, he believed in good faith that the Complainant had abandoned the VIDMAR mark, and he “sought to register the disputed domain names with the intent to resell at the disputed domain name genuine goods purchased from the Complainant.”
As the Complainant correctly points out, it is hard to believe that the Respondent, who has been a reseller of the Complainant’s products for over 20 years, and is an experienced distributor for various brands of cabinets, would not have known that the Complainant had not abandoned its VIDMAR mark. On the basis of the evidence submitted by the parties, the Panel simply cannot believe the Respondent’s assertion that it was reasonable for him to believe that the Complainant had abandoned the VIDMAR mark, nor can it believe his assertion that he had no knowledge until recently of the website <stanleyvidmar.com>.
Indeed, the Respondent’s explanation is self-contradictory. If his purpose was to use the disputed domain name “with the intent to resell genuine goods purchased from the Complainant,” then he must have known that the Complainant marketed products under the VIDMAR mark. And he must have known that the VIDMAR mark, even if not famous, is well-known amongst resellers and buyers of cabinets. The Respondent reiterates this contradiction in his Additional Submission, where he states that “Because the Respondent was a reseller of the Complainant’s products, he only sought to sell legitimate goods on the disputed domain names. Accordingly, Respondent had, and still has, a legitimate interest in the disputed domain names.” Since the disputed domain names include the VIDMAR mark, the Respondent must have intended to sell products from the Complainant that are labeled VIDMAR. Thus, he must have known that this mark was being used by the Complainant.
The Respondent makes much, in his Additional Submission, of the fact that he is a legitimate dealer and reseller of the Complainant.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions can be found at <wipo.int/amc/en/domains/search/overview/index.html>. With respect to the question “Can a reseller have a right or a legitimate interest in the disputed domain name?” the Overview states the following:
Majority view: A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.
Those requirements are not fulfilled here. The Respondent used the disputed domain name to point to a Google advertisement page that offered links to competitors of the Complainant. The site did not state that the Respondent was a reseller of the Complainant. And the Respondent registered multiple domain names incorporating the Complainant’s trademark.
Thus, the Panel holds that the Respondent has not provided any convincing explanation to support his allegation that he has rights or legitimate interests in the disputed domain name.
The Complainant alleges, and provides evidence to show, that the Respondent used the disputed domain names to resolve to commercial websites which feature a search engine and links to the websites of the Complainant’s competitors. The Panel finds such use to be neither a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Thus, the Panel holds that the Respondent does not have rights or legitimate interests in the disputed domain names.
As noted above, the Respondent registered and used the disputed domain names to resolve to commercial websites featuring a search engine and links to the websites of the Complainant’s competitors. The Panel finds that such use constitutes a disruption of the Complainant’s business and is therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Further, the Panel infers that the Respondent profited from such use through the collection of referral fees for each redirected Internet user. The Panel finds that the Respondent’s use was likely to have lead to confusion among Internet users as to the Complainant’s sponsorship of or affiliation with the resulting websites. Such is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
The Respondent admits to offering to transfer one of the disputed domain names for an amount well above out-of-pocket costs. The Panel finds that this offer provides further evidence of the Respondent’s bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Dollar Rent A Car Sys., Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the respondent demonstrated bad faith by registering the domain name with the intent to transfer it to the complainant for $3,000, an amount in excess of its out of pocket costs); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Further, the Panel finds that the Respondent’s allegation that the Complainant had abandoned its VIDMAR mark was a deliberate and malicious attempt to mislead the Panel, since, as noted above, the Respondent must have known that the mark had not been abandoned and indeed stated that he planned to use the disputed domain names precisely to resell the Complainant’s genuine products. Attempts to mislead the Panel may, in and of themselves, be indications of bad faith registration and use. See Morgan Stanley v. Meow, FA 671304 (Nat. Arb. Forum May 15, 2006).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vidmarcabinets.com>, <vidmarcabinet.com>, <vidmarcabinets.net> and <vidmarcabinet.net> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 21, 2008
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