Andreas Stihl AG & Co. KG v. Vuttichai Saengthong
Claim Number: FA0810001230667
Complainant is Andreas Stihl AG & Co. KG (“Complainant”), represented by Gleiss
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <discountstihlchainsaws.com>, registered with Godaddy.com, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <discountstihlchainsaws.com> domain name is confusingly similar to Complainant’s STIHL mark.
2. Respondent does not have any rights or legitimate interests in the <discountstihlchainsaws.com> domain name.
3. Respondent registered and used the <discountstihlchainsaws.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Andreas Stihl AG
& Co. KG, holds several trademark registrations for the STIHL mark,
including with the German Patent and
Trade Mark Office (“DPMA”) (Reg. No. 603,076
Respondent registered the <discountstihlchainsaws.com>
domain name on
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’s registration of the STIHL mark with the DPMA,
OHIM, and USPTO establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
domain name consists of the elements “discount,” “stihl,” “chainsaws,” and
“.com.” The element “stihl” is
complainant’s entire and unaltered mark.
The generic top-level domain “.com” is irrelevant when comparing domain
names to trademarks to determine if Policy ¶ 4(a)(i)
is met. See Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
The initial burden under Policy ¶ 4(a)(ii)
is on Complainant to prove that Respondent does not have any rights or
legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden shifts to
Respondent to show that it does have rights or legitimate interests
pursuant Policy ¶ 4(c). See Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <discountstihlchainsaws.com>
domain name. Complainant asserts that
Respondent has no license or agreement with Complainant authorizing Respondent
to use the STIHL mark, and the WHOIS information identifies Respondent as “Vuttichai Saengthong.” Thus, Respondent has not established rights or
legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent is using the disputed domain name to resolve to a
commercial website that sells chainsaws made by Complainant and Complainant’s
competitors. Respondent’s use of
Complainant’s STIHL mark to redirect Internet users to its commercial website
is therefore not a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i); neither
is it a legitimate noncommercial use pursuant to Policy ¶ 4(c)(iii). See
Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <discountstihlchainsaws.com>
domain name, which is
confusingly similar to Complainant’s STIHL mark, to redirect Internet users to
Respondent’s commercial website. Respondent’s
website sells Complainant’s goods and those of Complainant’s competitors. The Panel finds that such use constitutes
disruption of Complainant’s business and is evidence of Respondent’s bad faith
registration and use under Policy ¶ 4(b)(iii).
See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Because Respondent’s domain name is confusingly similar to
Complainant’s STIHL mark, Internet users accessing Respondent’s disputed domain
name may become confused as to Complainant’s affiliation or endorsement of the
resulting website and the disputed domain name.
Respondent is seeking to profit from this confusion. Thus, Respondent’s use of the <discountstihlchainsaws.com> domain
name constitutes bad
faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb.
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <discountstihlchainsaws.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: December 17, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum