national arbitration forum

 

DECISION

 

Andreas Stihl AG & Co. KG v. Gavin Peake

Claim Number: FA1104001383905

 

PARTIES

Complainant is Andreas Stihl AG & Co. KG (“Complainant”), represented by Lutz Aye of Gleiss Lutz Rechtsanwaelte, Germany.  Respondent is Gavin Peake (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <stihl-direct.com>, registered with Webfusion Ltd.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2011; the National Arbitration Forum received payment on April 15, 2011.

 

On April 27, 2011, Webfusion Ltd. confirmed by e-mail to the National Arbitration Forum that the <stihl-direct.com> domain name is registered with Webfusion Ltd. and that Respondent is the current registrant of the name.  Webfusion Ltd. has verified that Respondent is bound by the Webfusion Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On May 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2011 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@stihl-direct.com.  Also on May 4, 2011, 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 May 25, 2011, 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <stihl-direct.com> domain name is confusingly similar to Complainant’s STIHL mark.

 

2.    Respondent does not have any rights or legitimate interests in the <stihl-direct.com> domain name.

 

3.    Respondent registered and used the <stihl-direct.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Andreas Stihl AG & Co. KG, sells motor saws, brush cutters, cutting-off machines, power-operated hedge clippers, blowers, and other power-operated tools for forestry and agriculture. Complainant owns trademark registrations for the STIHL mark with the German Patent and Trademark Office (“GPTO”), the United Kingdom Intellectual Property Office (“UKIPO”), and the European Union Office for Harmonization in the Internal Market (“OHIM”):

 

GPTO

Reg. No. 603,076                 issued December 6, 1950;

 

UKIPO

Reg. No. 1,063,486              issued December 2, 1975; and

 

OHIM

Reg. No. 001978626           issued April 18, 2002.

 

Respondent, Gavin Peake, registered the <stihl-direct.com> domain name on February 16, 2010.            The disputed domain name resolves to a commercial website advertising genuine STIHL products.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant owns trademark registrations for the STIHL mark with the GPTO, the UKIPO, and the European Union OHIM:

 

GPTO

Reg. No. 603,076                 issued December 6, 1950;

 

UKIPO

Reg. No. 1,063,486              issued December 2, 1975; and

 

OHIM

Reg. No. 001978626           issued April 18, 2002.

The Panel finds these trademark registrations around Europe demonstrate that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). 

 

Complainant alleges that Respondent’s <stihl-direct.com> domain name is confusingly similar to Complainant’s STIHL mark because it adds only the generic term “direct,” a hyphen, and the generic top-level domain (“gTLD”) “.com.” The Panel concludes that the addition of a generic term to Complainant’s mark does not prevent a finding of confusing similarity. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Dr. Ing. h.c. F. Porsche AG v. Anderson, D2004-0312 (WIPO July 2, 2004) (finding the <porschesales.com> domain name to be confusingly similar where the respondent added the generic term “sales” to the complainant’s PORSCHE mark). The Panel determines that neither a hyphen nor the gTLD has any effect on the Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel therefore holds that Respondent’s <stihl-direct.com> domain name is confusingly similar to Complainant’s STIHL mark pursuant to Policy ¶ 4(a)(i).

 

The Panel concludes Policy ¶ 4(a)(i) is met.

Rights or Legitimate Interests

 

In analyzing the rights and legitimate interests of Respondent, Policy ¶ 4(a)(ii) mandates that Complainant must present a prima facie case against Respondent before Respondent bears any burden of proving rights and legitimate interests. As Complainant has put forth the required prima facie case in the present proceeding, the burden has subsequently shifted to Respondent. In defaulting, Respondent has neither met this obligation to show rights and legitimate interests nor countered Complainant’s allegations. As a result, the Panel takes Complainant’s allegations and determines that Respondent lacks rights and legitimate interests. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed). In the interest of fairness, however, the Panel will still analyze the evidence against the Policy ¶ 4(c) factors to reach a conclusion on Respondent’s rights and legitimate interests.

 

Complainant asserts that it never had a business relationship with Respondent and that it never instructed or authorized Complainant to register the domain name. The WHOIS information, which lists the registrant as “Gavin Peake,” supports the Panel’s finding that Respondent is not commonly known by the disputed domain name and lacks rights and legitimate interests according 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). 

 

Complainant contends that Respondent offers Complainant’s goods for sale, without authorization, at the <stihl-direct.com> domain name. The Panel finds that this unauthorized selling of Complainant’s goods under Complainant’s mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use for the purposes of Policy ¶¶ 4(c)(i) and 4(c)(iii). See Polycom, Inc. v. Telcom & Data Inc, FA 1245498 (Nat. Arb. Forum Mar. 16, 2009) (“The Panel finds that Respondent’s unauthorized sale of Complainant’s goods is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) , nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).”); see also Johnson & Johnson v. Jorgenson Grp. of Cos., FA 1276264 (Nat. Arb. Forum Sept. 11, 2009) (concluding that Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) are not satisfied when Respondent uses the disputed domain name to host a website marketing and selling Complainant’s products).

.

Complainant alleges that Respondent’s resolving website duplicates Complainant’s STIHL mark and logo, features the dominant orange color used by Complainant, places Complainant’s mark in the same position on Respondent’s website as it is located on Complainant’s website, and uses Complainant’s original product images. The Panel finds that these facts indicate that Respondent is attempting to pass itself off as Complainant, which is evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).

 

The Panel holds that Policy ¶ 4(a)(ii) has been met.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s resolving website is a commercial website that advertises and offers for sale Complainant’s STIHL products without Complainant’s authorization. The Panel finds that as this commercial activity competes with Complainant and disrupts Complainant’s business, it shows bad faith registration and use on the part of Respondent according to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).    

 

Complainant argues that Respondent uses the STIHL mark in the <stihl-direct.com> domain name and on the resolving website to attract Complainant’s customers. Complainant asserts that the presence of Complainant’s mark combined with Respondent’s unauthorized commercial sale of Complainant’s products creates a misleading impression and likelihood of confusion that Respondent has a relationship with or is affiliated with Complainant in order to profit. The Panel finds this behavior demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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 Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).

 

Complainant asserts that Respondent creates a resolving website designed to foster the impression that Respondent is Complainant—or at least strongly connected to Complainant—by displaying Complainant’s STIHL mark and logo, using the same orange color as Complainant, placing the logo and mark in a similar position as Complainant’s website, and displaying Complainant’s product images. The Panel finds that Respondent’s efforts to pass itself off as Complainant prove Respondent’s bad faith registration and use under Policy       ¶ 4(a)(iii). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).

 

The Panel holds that Policy ¶ 4(a)(iii) has been met.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <stihl-direct.com> domain name be TRANSFERRED from Respondent to Complainant.

 

James A. Carmody, Esq., Panelist

Dated:  May 26, 2011

 

 

 

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