Master Appliance Corp. v. Steinel America, Inc. c/o Heidi Roche
Claim Number: FA1006001332932
Complainant is Master
Appliance Corp. (“Complainant”), represented by Katrina G. Hull, of Michael Best & Friedrich LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <masterappliance.org> and <masterappliance.net>, registered with Tucows 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2010.
On June 30, 2010, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <masterappliance.org> and <masterappliance.net> domain names are registered with Tucows Inc. and that Respondent is the current registrant of the names. Tucows Inc. has verified that Respondent is bound by the Tucows 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 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 2010 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@masterappliance.org and postmaster@masterappliance.net. Also on July 6, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 3, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" through submission of a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <masterappliance.org> and <masterappliance.net> domain names are identical to Complainant’s MASTER APPLIANCE mark.
2. Respondent does not have any rights or legitimate interests in the <masterappliance.org> and <masterappliance.net> domain names.
3. Respondent registered and used the <masterappliance.org> and <masterappliance.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Master Appliance Corp., manufactures and sells industrial heat tools. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MASTER APPLIANCE mark (e.g., Reg. No. 1,552,533 registered on August 22, 1989). Complainant uses its mark in association with flameless heat guns and flame producing torches, for applying heat to a variety of work pieces.
Respondent, Steinel America, Inc. c/o Heidi Roche, registered the <masterappliance.org> and <masterappliance.net> domain names on June 1, 2007. Respondent’s disputed domain names resolve to websites that are identical to Respondent’s official <steinel.net> website. The resolving websites offer for sale products that directly compete with Complainant’s products.
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 asserts rights in the MASTER APPLIANCE mark
through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 1,552,533 registered on
August 22, 1989). The Panel finds these
trademark registrations sufficiently prove Complainant’s rights in the mark
pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan,
FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark
is registered with the USPTO, [the] complainant has met the requirements of
Policy ¶ 4(a)(i).”); see also Reebok Int’l Ltd. v.
Complainant contends Respondent’s <masterappliance.org> and <masterappliance.net> domain names are identical to its
MASTER APPLIANCE mark. In both of the disputed domain names, Respondent fully
incorporates Complainant’s MASTER APPLIANCE mark and merely deletes the spaces
between the two words in the mark.
Respondent also adds the generic top level domain (“gTLD”) “.org” to the
<masterappliance.org> domain
name and the gTLD “.net” to the <masterappliance.net>
domain name. The Panel finds the
deletion of spaces between the words in a mark and the affixation
of a gTLD do not distinguish a disputed domain name from a mark. See Bond
& Co. Jewelers, Inc. v.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
The Panel notes Complainant must first show that Respondent lacks rights and legitimate interests in the <masterappliance.org> and <masterappliance.net> domain names pursuant to Policy ¶ 4(a)(ii). The burden then shifts to Respondent to demonstrate it has rights or legitimate interests in the disputed domain names See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Prior panels have interpreted a respondent’s failure to submit a response as evidence that the respondent does not have rights and legitimate interests. See 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). In this case, Respondent failed to submit a Response. However, the Panel will evaluate the record to determine whether Respondent possess rights or legitimate interests pursuant to the Policy ¶ 4(c) factors.
Complainant avers it did not authorize Respondent to use its mark in a domain name. Additionally, the WHOIS information lists “Steinel America, Inc. c/o Heidi Roche” as the registrant of the <masterappliance.org> and <masterappliance.net> domain names. Based on Complainant’s assertions, the WHOIS registrant information, and a lack of evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims Respondent also manufactures heat tools and is a direct competitor of Complainant. Complainant alleges Respondent’s disputed domain names resolve to websites that are identical to Respondent’s official <steinel.net> website, and that these sites sell products that compete with Complainant’s business. A screen shot of the resolving websites shows hyperlinks with titles like “Heat Guns,” “Glue Guns,” and “Gas Torches.” The site also contains text that reads “STEINEL offers a full line of heat tools: heat guns, butane torches, soldering irons, and glue guns.” The Panel finds Respondent uses domain names that are identical to Complainant’s mark to offer goods that compete with Complainant’s products. Therefore, the Panel finds Respondent does not use the disputed domain names to make 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); 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 Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent uses the disputed domain names in order to redirect Internet users seeking Complainant’s products to Respondent’s competing website. The Panel finds this diversion scheme disrupts Complainant’s business. Therefore, the Panel finds this behavior qualifies as registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also 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).
Complainant also argues Respondent registered and using disputed domain names that are identical to Complainant’s mark in an attempt to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s MASTER APPLIANCE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s products and website. The Panel agrees. Consequently, the Panel finds this behavior provides additional evidence of registration and use in bad faith 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 Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds Complainant has satisfied 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 <masterappliance.org> and <masterappliance.net> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 4, 2010
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