The Stanley Works v. Domain Discreet d/b/a ATTN: sidchrome.com
Claim Number: FA0807001214400
Complainant is The Stanley Works (“Complainant”), represented by James
R. Davis, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sidchrome.com>, registered with Register.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 9, 2008.
On July 9, 2008, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sidchrome.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 July 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 31, 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 postmaster@sidchrome.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 6, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <sidchrome.com> domain name is identical to Complainant’s SIDCHROME mark.
2. Respondent does not have any rights or legitimate interests in the <sidchrome.com> domain name.
3. Respondent registered and used the <sidchrome.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns registrations of the SIDCHROME mark in connection with a variety of hand tools and related products. The registrations are held with numerous jurisdictions across the world, including with the Australian trademark authority (Reg. No. 268,525 issued May 18, 1973), the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 933,328 issued November 4, 1968) and Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 223,451 issued April 8, 1976).
Respondent’s <sidchrome.com> domain name was registered on November 9, 2006. It resolves to a commercial website offering goods in competition with Complainant’s products and references many of those products sold under the SIDCHROME mark.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has registered the SIDCHROME mark in numerous
jurisdictions across the world, including the Australian trademark authority,
the UKIPO, and the CIPO. The Panel finds
this to be sufficient to establish Complainant’s rights in the SIDCHROME mark
for the purposes of Policy ¶ 4(a)(i). See Renaissance Hotel Holdings, Inc. v.
Renaissance
The <sidchrome.com> domain name would be identical to Complainant’s SIDCHROME mark but for the additional of the generic top-level domain (“gTLD”) “.com.” However, the inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. Accordingly, the Panel finds that the disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Reichert, Inc. v. Leonard, FA 672010 (Nat. Arb. Forum May 24, 2006) (“The disputed domain names are identical to Complainant’s mark, but for the addition of a generic top-level domain suffix (“.com” or “.net”)…”); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
In consideration of Policy ¶ 4(a)(ii), the Panel first
examines whether or not Complainant has met its burden of establishing a prima facie case against
Respondent. The Panel finds that
Complainant has met this threshold, and that it is thus incumbent upon
Respondent to demonstrate affirmatively that it has rights or legitimate in the
disputed domain name. See Towmaster,
Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant
must first make a prima facie case that Respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and
then the burden shifts to Respondent to show it does have rights or legitimate
interests.”); see also F. Hoffmann-La Roche AG v. Di Salvatore,
D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of
paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts
from the Complainant to the Respondent once the Complainant has made out a
prima facie case that the Respondent has no rights or interests in the domain
names.”).
However, no response has been filed in this case. Therefore, the Panel may presume that
Respondent lacks rights and legitimate interests in the disputed domain
name. Nonetheless, the Panel will determine
whether or not the elements of Policy ¶ 4(c) have been met. See Broadcom Corp. v. Ibecom PLC, FA
361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the
Complaint functions as an implicit admission that [Respondent] lacks rights and
legitimate interests in the disputed domain name. It also allows the Panel to accept all
reasonable allegations set forth…as true.”); see also Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that the complainant’s allegations are true unless
clearly contradicted by the evidence).
Complainant states that Respondent has not been licensed or otherwise authorized by Complainant to use the SIDCHROME mark in connection with the disputed domain name. Moreover, there is nothing else in the record that indicated that Respondent is or ever was commonly known by the disputed domain name. Without any additional information, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name).
Complainant contends that the disputed domain name is being
used commercially and in competition with Complainant while referencing a
variety of products sold under the SIDCHROME mark. The <sidchrome.com> domain name
sells products in direct competition with those sold under Complainant’s
SIDCHROME mark. The Panel finds this to
be neither 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Glaxo Group Ltd. v. WWW Zban, FA
203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not
using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii)
because the respondent used the domain name to take advantage of the
complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
The disputed domain name commercially offers products of Complainant’s competitors with significant reference to Complainant’s own products under the SIDCHROME mark. The Panel finds this competitive and disruptive use sufficient to establish Respondent’s bad faith registration and use of the <sidchrome.com> domain name pursuant to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise and offer goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
The fact that the <sidchrome.com> domain name
is identical to Complainant’s mark and commercially offers competitive products
strengthens the Panel’s findings that Respondent registered and is using the
disputed domain name under Policy ¶ 4(b)(iv).
See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (finding that the respondent’s use of the
<saflock.com> domain name to offer goods competing with the complainant’s
illustrates the respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also MathForum.com, LLC v. Weiguang
Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶
4(b)(iv) where the respondent registered a domain name confusingly similar to
the complainant’s mark and the domain name was used to host a commercial
website that offered similar services to those offered by the complainant under
its mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sidchrome.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 14, 2008
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