Klein Tools, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1304001497397
Complainant is Klein Tools, Inc. (“Complainant”), represented by Eric R. Moran of McDonnell Boehnen Hulbert & Berghoff LLP, Illinois, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kleintool.com>, registered with INTERNET.BS CORP.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2013; the National Arbitration Forum received payment on April 30, 2013.
On May 8, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <kleintool.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 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@kleintool.com. Also on May 9, 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 June 6, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant’s Contentions
Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity
· Complainant has rights to the KLEIN TOOLS mark through United States Patent & Trademark Office (“USPTO”) trademark registrations (e.g., Reg. No. 1,653,472 registered on Aug. 13, 1991). Complainant uses the mark in its business of selling hand tools.
· Complainant has manufactured hand tools under the KLEIN and KLEIN TOOLS marks since 1857. Complainant has expanded its business continuously since that time, and not manufactures more than 3,000 tools.
· Respondent’s <kleintool.com> domain name is confusingly similar to the KLEIN TOOLS mark. It is well established that the deletion of a single letter from a mark is inconsequential.
Policy ¶4(a)(ii): Respondent Lacks Rights & Legitimate Interests
· Respondent is not commonly known by this domain name. Respondent has never been licensed to register domain names including Complainant’s mark. Respondent’s own WHOIS information lists “PPA Media Services / Ryan G Foo” as the registrant of the domain name.
· Respondent has not made a bona fide offering of goods through his use of the domain name. Respondent has used the domain name to host a website that features a generic template format, with no substantive content at all beyond an array of irrelevant and random hyperlinks. Complainant attempted to click on these links, but none of them seemed to work at all. Complainant does not believe that Respondent has any right to park this website indefinitely, and use it merely to host inactive or broken hyperlink advertisements.
· Respondent’s typosquatting behavior illustrates that he has no rights or legitimate interests. Respondent has merely deleted the letter “s” from Complainant’s mark in an attempt to siphon off Internet users that make simple spelling mistakes.
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration
· Respondent has been subject to numerous prior UDRP proceedings. In many of these proceedings it was concluded that Respondent had registered and used the disputed domain names in bad faith. This evidences a clear pattern of bad faith.
· Respondent has set up his domain name to function in a way that will allow him, at any time, to active or alter the hyperlinks therein. Respondent’s conduct amounts to a bad faith attempt to profit off of the confusion of Internet users, who will mistakenly believe that the domain name is offering them services that are endorsed by Complainant.
· Respondent is engaged in a clear case of typosquatting. The <kleintool.com> domain name does nothing more than embody a common misspelling of the KLEIN TOOLS mark. Such a blatant attempt to take advantage of spelling errors is evidence of bad faith.
Respondent’s Contentions
Respondent did not submit a Response.
1. Respondent’s <kleintool.com> domain name is confusingly similar to Complainant’s KLEIN TOOLS mark.
2. Respondent does not have any rights or legitimate interests in the <kleintool.com> domain name.
3. Respondent registered or used the <kleintool.com> domain name in bad faith.
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 claims that he has rights to the KLEIN TOOLS mark through USPTO trademark registrations (e.g., Reg. No. 1,653,472 registered on Aug. 13, 1991). Complainant claims that he uses the mark in its business of selling hand tools. The Panel finds that Complainant’s USPTO registrations are satisfactory showing of its rights in the KLEIN TOOLS mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). The Panel finds that Complainant’s Policy ¶ 4(a)(i) rights are not in any way affected by the fact that Respondent allegedly resides in Chile. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues that Respondent’s <kleintool.com> domain name is confusingly similar to the KLEIN TOOLS mark. Complainant argues that it is well established that the deletion of a single letter from a mark is inconsequential. The Panel notes that Respondent removed the mark’s spacing and added the generic top-level domain (“gTLD”) “.com” in forming the domain name. The Panel agrees that neither the deletion of spacing nor the addition of a gTLD is relevant to this analysis. See 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)). The Panel also concludes that the deletion of the letter “s” is not enough to distinguish this domain name, and therefore determines that the changes made to the <kleintool.com> domain name render it confusingly similar to the KLEIN TOOLS mark under Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it).
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 argues that Respondent is not commonly known by this <kleintool.com> domain name. Complainant claims that Respondent has never been licensed to register domain names that include Complainant’s mark. Complainant points out that the WHOIS information lists “PPA Media Services / Ryan G Foo” as the registrant of the domain name. The Panel concludes that the WHOIS information associated with the domain name demonstrates that Respondent cannot be found to be commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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 was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also argues that Respondent has not made a bona fide offering of goods through his use of the <kleintool.com> domain name. Complainant contends that Respondent has used the domain name to host a website that features a generic template format, with no substantive content at all beyond an array of irrelevant and random hyperlinks. Complainant states that its employee attempted to click on these links, but none of them seemed to work at all. Complainant does not believe that Respondent has any right to park this website indefinitely and use it merely to host inactive or broken hyperlink advertisements. The Panel notes that the <kleintool.com> domain name resolves to a website that includes an array of various unrelated hyperlink postings. See Compl.’s Ex. H. The Panel agrees that there is nothing bona fide about the use of a confusingly similar domain name to host a series of random hyperlinks, regardless of where they ultimately lead, and such a use is not a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Gen. Mills, Inc. v. Zuccarini, FA 97050 (Nat. Arb. Forum May 30, 2001) (“[U]nder the “Policy,” Respondent may not utilize close derivations of famous and distinctive trademarks and, thus, profit from Internet users’ misspelling the Internet destinations they desire.”); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant also argues that Respondent could never alternatively argue that the lack of functioning hyperlinks makes its use somehow legitimate. Complainant contends that parking a domain name to a website does not bestow any rights or legitimate interests within the meaning of Policy ¶ 4(a)(ii). The Panel again notes that the domain name resolve to a website that features hyperlinks and a search bar. See Compl.’s Ex. H. The Panel agrees that the generic nature of a parked website does not provide evidence of any rights or legitimate interests under Policy ¶ 4(a)(ii), regardless of whether or not Respondent or the registrar is responsible for the content. See Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008)(“the view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the respondent is also responsible for the sponsored links currently appearing on the website.”).
Complainant also contends that Respondent’s typosquatting behavior illustrates that it has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent has merely deleted the letter “s” from Complainant’s mark in an attempt to siphon off Internet users that make simple spelling mistakes. The Panel agrees that Respondent cannot have Policy ¶ 4(a)(ii) rights or legitimate interests in its use of the <kleintool.com> domain name when it merely registered the domain name to take advantage of the common mistake Internet users make in forgetting to add an “s” to the term “tool.” See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Complainant contends that Respondent has been subject to numerous prior UDRP proceedings. Complainant states that in many of these proceedings it was concluded that Respondent had registered and used the disputed domain names in bad faith. Complainant argues that these decisions evidence a clear pattern of bad faith. The Panel notes that Complainant provides several decisions as examples. See Bloomberg Finance L.P. v. PPA Media Servs. o, FA 1478654 (Nat. Arb. Forum Feb. 12, 2013); Target Brands, Inc. v. PPA Media Servs., FA 1478244 (Nat. Arb. Forum Feb. 14, 2013); Vera Bradley Inc. v. PPA Media Servs., FA 1480975 (Nat. Arb. Forum Mar. 4, 2013). The Panel agrees that Respondent’s pattern of bad faith registration and use is evident as a result these prior UDRP proceedings pursuant to Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Complainant argues that Respondent has set up his domain name’s website to function in a way that will allow him, at any time, to activate or otherwise alter the hyperlinks therein. Complainant claims that Respondent’s conduct amounts to a bad faith attempt to profit off of the confusion of Internet users, who will mistakenly believe that the domain name is offering them services that are endorsed by Complainant. The Panel again notes that the disputed domain name resolves to a website that is almost exclusively dedicated to hyperlink listings of generic and unrelated goods or services. See Compl.’s Ex. H. The Panel agrees that Respondent has registered and uses the <kleintool.com> domain name in bad faith under Policy ¶ 4(b)(iv) because it seeks to use the disputed domain name to confuse Internet users for Respondent’s own profit and purposes. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant argues that Respondent cannot avoid a finding of bad faith merely because the domain name is parked. Complainant states that Respondent is ultimately accountable for the content within a parked website, and thus the competing hyperlinks within the <kleintool.com> domain name’s websites are evidence of Policy ¶ 4(a)(iii) bad faith use and registration through parking. See Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007) (finding that, even though a respondent does not receive any revenue from the hyperlinks displayed on the website and that the revenues are received by the parking service, a respondent still registered and used the domain name in bad faith because a respondent still allowed the parking service to access the domain name, instead of resolving the webpage to a blank page).
Complainant argues that Respondent is engaged in a clear case of typosquatting. Complainant contends that the <kleintool.com> domain name does nothing more than embody a common misspelling of the KLEIN TOOLS mark. Complainant argues that such a blatant attempt to take advantage of spelling errors is evidence of bad faith. The Panel agrees and find that Respondent’s typosquatting of this domain name off of Complainant’s mark is evidence of Policy ¶ 4(a)(iii) bad faith use and registration. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kleintool.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 19, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page