Stanley Black and Decker, Inc., The Black & Decker Corporation, and Stanley Logistics, L.L.C. v. Christine K. Hoyer
Claim Number: FA1306001505159
Complainant is Stanley Black and Decker, Inc., The Black & Decker Corporation, and Stanley Logistics, L.L.C. (“Complainant”), represented by Rachel M. Hofstatter of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is Christine K. Hoyer (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stanleyblackanddecker.us> registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 17, 2013; the National Arbitration Forum received the hard copy of the Complaint on June 27, 2013.
On June 18, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <stanleyblackanddecker.us> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 28, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 18, 2013 by which Respondent could file a Response to the Complaint, was trasnmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”)
Having received no Response from Respondent, the Forum transmitted to the parties a notification of Respondent Default.
On July 23, 2013, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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’s Contentions
Stanley Black and Decker, Inc. is the parent of its affiliates The Black & Decker Corporation and Stanley Logistics, LLC. The term “Complainant” refers to all three of these companies.
i. Complainant owns the STANLEY mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 67, 119 registered on Jan. 14, 1908).
ii. Complainant owns the BLACK & DECKER mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 517,319, registered November 8, 1949).
iii. The STANLEY mark has been used in U.S. commerce since 1949 in connection with tools, hardware, home products, and related goods and services.
iv. The BLACK & DECKER mark has been used in commerce in the U.S. since 1910, also for tools, hardware, home products, and related goods and services.
v. Stanley Black and Decker, Inc. is one of the largest corporations in the world and was created by the merger of The Black & Decker Corporation and Stanley Logistics, LLC. Complainant continues to use the STANLEY and BLACK & DECKER marks for tools, hardware, home products, and related goods and services. Complainant has continued to advertise and promote the sale of STANLEY and BLACK & DECKER products and services such that the marks have garnered valuable goodwill and are famous in the United States.
vi. Complainant’s principle symbol of corporate identification is STANLEY BLACK & DECKER. For almost four years, Complainant has used the domain name <stanleyblackanddecker.com> to advertise and sell its tools, tool accessories, and other products online.
i. Policy ¶ 4(a)(i)
1. The disputed domain name is confusingly similar to Complainant’s STANLEY and BLACK & DECKER marks as the disputed domain consists of Complainant’s marks with the mere alteration of the country-code top-level domain (“ccTLD”) “.us” and substitutes the ampersand symbol “&” in Complainant’s BLACK & DECKER mark with the word “and.”
ii. Policy ¶ 4(a)(ii)
1. Respondent has never been commonly known by the BLACK & DECKER or STANLEY marks, or the domain <stanleyblackanddecker.us>. The WHOIS record does not suggest Respondent is known as such. Further, Complainant has no relationship with Respondent.
2. Respondent’s use of the <stanleyblackanddecker.us> domain name does not constitute a bona fide offering of goods or services, or a legitimate non-commercial or fair use.
3. Respondent uses the disputed domain name to provide links to other websites, which suggests Respondent is receiving click-through fees.
iii. Policy ¶ 4(a)(iii)
1. Respondent offered to sell the <stanleyblackanddecker.us> domain name to Complainant on two occasions for $5,000.00, an amount that far exceeds the minimal out-of-pocket costs directly related to registration and maintenance of the domain name.
2. Respondent is a pattern cybersquatter as evidenced by previous UDRP decisions adverse to Respondent. Further, Respondent has registered the <stanleyblackanddecker.fr> domain name.
3. Respondent uses the disputed domain name to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks, with intent for commercial gain through click-through fees.
4. Respondent had actual knowledge of Complainant’s rights in the marks, revealing Respondent’s bad faith.
[The Panel notes that the Complaint is prepared in tiny font, rendering it greatly difficult to read. Complainant is advised to present documents in appropriately larger and more legible font in any future UDRP/usDRP proceedings]
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are three Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” There are three Complainants in this matter: Stanley Black and Decker, Inc., The Black & Decker Corporation and Stanley Logistics, LLC. Stanley Black and Decker, Inc. is the parent of its affiliates, The Black & Decker Corporation and Stanley Logistics, LLC. The Black & Decker Corporation owns the BLACK & DECKER mark and Stanley Logistics, LLC owns the STANLEY mark.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and will treat them herein as a single entity.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant owns the STANLEY mark through its trademark registrations with the USPTO (e.g., Reg. No. 3,668,282, registered August 18, 2009). Complainant also owns the BLACK & DECKER mark through its trademark registrations with the USPTO (e.g., Reg. No. 517,319, registered November 8, 1949). Previous panels have found that a complainant’s USPTO registrations are sufficient to establish complainant’s right in the mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel finds that Complainant’s USPTO registrations establish its Policy ¶ 4(a)(i) rights in the STANLEY and BLACK & DECKER marks.
Complainant argues that the <stanleyblackanddecker.us> domain name is confusingly similar to Complainant’s STANLEY and BLACK & DECKER marks as the disputed domain consists of Complainant’s marks with the mere addition of the ccTLD “.us” and substitutes the word “and” for the ampersand symbol “&” in Complainant’s BLACK & DECKER mark. Previous panels have determined that the inclusion of a ccTLD such as “.us” is irrelevant to the Policy ¶ 4(a)(i) analysis. See Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). Previous panels have also determined that the replacement of an ampersand symbol “&” with “and” is inconsequential for the purposes of the Policy ¶ 4(a)(i) analysis. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol “&” is not reproducible in a URL). The Panel notes that the disputed domain name is comprised of two of Complainant’s marks. Previous panels have determined that the combination of marks does not differentiate the disputed domain name from a complainant’s marks. See 3M Co. v. Silva, FA 1429349 (Nat. Arb. Forum Mar. 30, 2012) (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to the complainant’s LITTMANN and CARDIOLOGY III marks). The Panel therefore finds that the <stanleyblackanddecker.us> domain name is confusingly similar to Complainant’s STANLEY and BLACK & DECKER marks under Policy ¶ 4(a)(i).
The Panel notes that Respondent did not submit a Response, and therefore there is no affirmative evidence in the record that Respondent is the owner of any trademarks or service marks that are identical to the <stanleyblackanddecker.us> domain name. As such, the Panel finds that Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant contends that Respondent has never been commonly known by the BLACK & DECKER or STANLEY marks, or the domain <stanleyblackanddecker.us>, as demonstrated by the WHOIS record. The Panel notes that the WHOIS information identifies the registrant of the disputed domain as “Christine K. Hoyer / Four Leaf Inc.” and not by some name that contains Complainant’s mark or combination of marks. Further, Complainant contends that it has no relationship with Respondent. The Panel notes that Respondent did not submit a response to refute Complainant’s contentions. Therefore, the Panel accepts Complainant’s allegation that Respondent is not commonly known by the disputed domain name pursuant Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent’s use of the <stanleyblackanddecker.us> domain name does not constitute a bona fide offering of goods or services, or a legitimate non-commercial or fair use. Complainant asserts that Respondent uses the disputed domain name to provide links to other websites. Complainant infers that Respondent is receiving click-through fees. The Panel notes that Complainant includes a screenshot of the resolving page, which shows that the resolving page provides links to online surveys and other links unrelated to Complainant, such as the hyperlink “MaryKay.com/BeautyProducts.” In Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002), the panel held that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee, did not evidence rights or legitimate interests in the domain name. This Panel determines that Respondent’s use of the disputed domain name to redirect users to websites unrelated to Complainant, from which Respondent likely receives click-through fees, does not constitute a bona fide offering of goods or services pursuant to Policy ¶(c)(ii), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).
Thus, Complainant has also satisfied Policy ¶(a)(ii).
Complainant argues that Respondent’s bad faith is demonstrated through Respondent’s offer to sell the <stanleyblackanddecker.us> domain name to Complainant on two occasions for $5,000.00. Complainant asserts that the offered amount far exceeds the minimal out-of-pocket costs directly related to registration and maintenance of the domain name. The Panel agrees that these sale offers constitute evidence of bad faith pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Complainant argues that Respondent uses the disputed domain name to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks, with intent for commercial gain through click-through fees. The Panel notes that Complainant includes a screenshot of the resolving page, which shows that it provides links unrelated to Complainant, such as links to online surveys, and various hyperlinks such as “MOVIE REVIEWS FOR PARENTS” and “MaryKay.com/BeautyProducts.” Previous panels have found evidence of bad faith where the resolving page of a confusingly similar domain displays unrelated hyperlinks, from which the respondent presumably profits. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent uses the confusingly similar domain name to direct Internet traffic to unrelated hyperlinks in order profit from click-through fees.
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stanleyblackanddecker.us> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: August 6, 2013
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