The W.J. Baker Company v. c/o BAKERTUBULAR.COM
Claim Number: FA1301001481278
Complainant is The W.J. Baker Company (“Complainant”), represented by James D. Liles of Porter Wright Morris & Arthur LLP, Ohio, USA. Respondent is c/o BAKERTUBULAR.COM (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bakertubular.com>, registered with DOMAIN.COM, LLC.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 21, 2013; the National Arbitration Forum received payment on January 21, 2013.
On January 23, 2013, DOMAIN.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <bakertubular.com> domain name is registered with DOMAIN.COM, LLC and that Respondent is the current registrant of the name. DOMAIN.COM, LLC has verified that Respondent is bound by the DOMAIN.COM, LLC 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 January 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 2013 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@bakertubular.com. Also on January 23, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel issues 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.
1. Complainant has common law rights in the BAKER TUBULAR METAL PRODUCTS mark.
a. Complainant has registered the BAKER TUBULAR METAL PRODUCTS mark with the Commonwealth of Kentucky.
b. Complainant has been a well-known provider of metal products and using its mark for over 100 years.
2. Respondent’s <bakertubular.com> domain name is confusingly similar to Complainant’s BAKER TUBULAR METAL PRODUCTS mark.
a. The combination of “baker” and “tubular” is readily perceived by the public as Complainant.
b. Complainant uses the term “baker tubular” to promote its products.
3. Respondent has no rights or legitimate interests in the <bakertubular.com> domain name.
a. Respondent is attempting to pass itself off as Complainant.
b. Respondent is not commonly known by the <bakertubular.com> domain name.
c. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
d. Respondent is intentionally misleading and diverting Internet users to Respondent’s website for commercial gain.
4. Respondent’s <bakertubular.com> domain name was registered and is being used in bad faith.
a. Respondent registered its domain name in August, 2000.
b. Respondent is misleading the public and financially profiting, and disrupting Complainant’s business.
c. Respondent is intentionally trying to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark.
d. Respondent purports to provide services to customers who believe they are doing business with Complainant.
e. Respondent is passing itself off as Complainant through its website presence.
f. Respondent lists similar address, telephone, and fax numbers as Complainant’s actual information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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."
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.
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.”).
Complainant does not present any evidence that it owns trademark registrations with any national trademark agency for the BAKER TUBULAR METAL PRODUCTS mark. Previous UDRP cases have held that Complainant need not own a valid trademark registration for its mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i). See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). The Panel agrees and finds accordingly.
Complainant presents the Panel with evidence of rights in its BAKER TUBULAR METAL PRODUCTS mark through its registration with the Kentucky Secretary of State (Filing date May, 1, 2012). Complainant also claims common law rights in the United States for its BAKER TUBULAR METAL PRODUCTS mark. Complainant claims that it has operated under the BAKER TUBULAR METAL PRODUCTS name for over 100 years, and is a well-known provider of metal products. Complainant claims that it has established substantial goodwill in its products and the BAKER TUBULAR METAL PRODUCTS mark. Complainant presents examples of its business literature, business cards, letterhead, and invoices all featuring the BAKER TUBULAR METAL PRODUCTS mark. Previous panels have found that evidence of a state registration is sufficient to establish rights in a given mark. See Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003) (finding evidence that the complainant had established rights in the BILLINGS GAZETTE mark through registration with the Montana and Wyoming state trademark officials). Based on the previous contentions, the Panel also finds that Complainant has common law rights in the BAKER TUBULAR METAL PRODUCTS mark.
Complainant claims that Respondent’s <bakertubular.com> domain name is confusingly similar to Complainant’s BAKER TUBULAR METAL PRODUCTS mark. Complainant argues that the disputed <bakertubular.com> domain name is a combination of the term “baker” and “tubular” which when combined is readily perceived and recognized as Complainant’s brand. Complainant also claims that “baker tubular” is an abbreviation of the BAKER TUBULAR METAL PRODUCTS mark. The Panel notes that Respondent removes the spaces in Complainant’s mark as well as eliminates the terms “metal” and “products.” The Panel also notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Previous panels have found that these variations are insufficient to distinguish a disputed domain name from a given mark under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <bakertubular.com> domain name is confusingly similar to Complainant’s BAKER TUBULAR METAL PRODUCTS mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <bakertubular.com> domain name. The Panel notes that the WHOIS information lists “c/o BAKERTUBULAR.COM” as Registrant. The Panel also notes that there is no further evidence indicating a relation between the disputed domain name and Respondent. Previous panels have found that although a respondent is listed as the WHOIS registrant, if there is no other evidence to suggest that the respondent was actually commonly known by the domain name, the respondent is not actually commonly known by the disputed domain name. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). The Panel agrees, and therefore finds that Respondent is not commonly known by the disputed <bakertubular.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not making a legitimate noncommercial or fair use of the <bakertubular.com> domain name and is intending to divert and mislead Internet users for Respondent’s commercial gain. Complainant claims that Respondent is attempting to pass itself off as Complainant by providing an almost identical website when compared to what Complainant’s website used to be. Complainant claims that Respondent’s website falsely states that the entity operating the website was started in 1899 by “William J. Baker” and that it sells, “split seam spacers, sleeves and bushings” as its primary products. Complainant contends that the only difference between its website and Respondent’s resolving website is the contact information. Complainant contends that the address, telephone number, and fax number are very similar with a few varying digits. Previous panels have found evidence of a respondent attempting to pass itself off as a complainant is an indication that the respondent lacks rights and legitimate interests in the disputed domain name. See MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names). The Panel agrees and finds that Respondent has no rights or legitimate interests in the <bakertubular.com> domain name under Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant argues that Respondent is using the <bakertubular.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). Complainant claims that Respondent is diverting Internet traffic intended for Complainant’s website to Respondent. Complainant claims that this disrupts Complainant’s business and will harm its reputation and the goodwill it has established in its mark and products. Complainant further claims that it is prevented from reflecting its identity on the Internet because of Respondent’s use of the disputed domain name. Previous panels have found that using a confusingly similar domain name to divert a complainant’s consumers to the respondent’s competing website is bad faith registration and use. 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). Therefore, the Panel finds that Respondent is using the <bakertubular.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant claims that Respondent is using the <bakertubular.com> domain name to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s BAKER TUBULAR METAL PRODUCTS mark. Complainant claims that Respondent is profiting due to the confusion of customers thinking they are dealing with Complainant’s legitimate business. Complainant provides a screenshot of Respondent’s resolving website featuring headings such as, “Baker Tubular Metal Products,” and “W.J. Baker Company Receives ISA 9001:2000 Without Design Certification.” Complainant claims that Respondent’s resolving site is identical to Complainant’s previous website. Previous panels have found that using a confusingly similar domain name to resolve to a site featuring similar services to those offered by a complainant is bad faith use and registration. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). The Panel finds that Respondent’s use of the confusingly similar <bakertubular.com> domain name to resolve to a site representing itself as Complainant, is bad faith use and registration under Policy ¶ 4(b)(iv).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bakertubular.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: February 26, 2013
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