MTD Products Inc v. Allpro Industries Limited / Vern Smith
Claim Number: FA1509001637190
Complainant is MTD Products Inc (“Complainant”), represented by Christopher A. Corpus, Ohio, USA. Respondent is Allpro Industries Limited / Vern Smith (“Respondent”), represented by Jenni Rutter of Kensington Swan, New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <remingtonpower.com>, registered with Crazy Domains FZ-LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 10, 2015; the Forum received payment on September 10, 2015.
On September 11, 2015, Crazy Domains FZ-LLC confirmed by e-mail to the Forum that the <remingtonpower.com> domain name is registered with Crazy Domains FZ-LLC and that Respondent is the current registrant of the name. Crazy Domains FZ-LLC has verified that Respondent is bound by the Crazy Domains FZ-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 September 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 2015 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@remingtonpower.com. Also on September 11, 2015, 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.
A timely Response was received and determined to be complete on September 28, 2015.
On October 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it first registered its trademark REMINGTON in 1972. The mark is used to market a range of power tools (gasoline, electric and pneumatic), such as chain saws, construction tools, gardening equipment, etc. Its Canadian mark, registered in 1992, is for space heaters, chain saws, and fastening systems.
Complainant alleges that it has been a market leader in the manufacture and sale of outdoor power equipment worldwide since 1952. The equipment includes lawnmowers, snow throwers, tillers, log splitters, chainsaws and other power tools. Complainant markets its equipment through a network of independent dealers.
According to Complainant, Respondent is not an authorized dealer for its products, and is not licensed or otherwise authorized to use Complainant’s marks. Respondent obtained design (but not word) marks for the stylized REMINGTON POWER logo in New Zealand (October 27, 2010) and Australia (June 3, 2015). The disputed domain name was registered on August 8, 2013. The disputed domain name is not being used.
Complainant alleges that the disputed domain name is confusingly similar to its mark because it incorporates the mark and adds the generic term “power,” which term is in Complainant’s trademarked class of goods. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. It is not licensed or otherwise authorized to use Complainant’s mark. It is not commonly known by the disputed domain name. It has not used its design mark REMINGTON POWER, and Complainant’s trademark long predates Respondent’s design mark. And it is not using the disputed domain name. Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent registered the disputed domain name in bad faith in the sense of Policy ¶ 4(b)(iii) because Respondent used the gTLD “.com” which is equated with a worldwide Internet presence; this will more likely than not disrupt the business of Complainant. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent confirms that it has registered in New Zealand the design mark REMINGTON POWER for power tools and garden power equipment, and also REMINGTON PREMIUM POWER TOOLS for power tools.
According to Respondent, the disputed domain name is not identical or confusingly similar to Complainant’s mark: the marks REMINGTON and REMINGTON POWER are different visually, phonetically, and conceptually.
Respondent states that it is a family-owned and operated company in New Zealand which imports and sells power equipment. The business was started in 1974. Since then it has grown steadily to become established as a leading supplier and innovator to the power tool and industrial equipment sector, with a sales and distribution network in Australia and New Zealand. Its website can be found at <www.euroquip.co.nz>.
Respondent confirms that is not licensed or authorized to use Complainant’s marks and that it does not sell Complainant’s products. Respondent was not aware of Complainant’s mark or its products until it received a cease-and-desist letter from Complainant’s counsel in February 2015. In approximately 2008, Respondent decided to expand into developing its own brands, so that it could provide exclusive product lines to various competing power tool and hardware store chains in New Zealand. Since there were no registered trademarks and no current use or reputation of the REMINGTON name for power tools in New Zealand, Respondent decided to use that name REMINGTON for a line of tool products to be supplied to large New Zealand hardware retail chains. Since 2008, Respondent has sold a range of products under the mark REMINGTON AIR (see <www.remingtonair.co.nz>). It has used its REMINGTON AIR mark extensively in the New Zealand market. In 2011, Respondent pitched a line of bench top tools under the brand REMINGTON POWER, but this was not successful. However, retailers have indicated interest in the last 12 months. Respondent also pitched a vacuum cleaner and high pressure washer under the REMINGTON POWER brand, but the retail chain that sold them requested that they be supplied under the REMINGTON AIR mark.
Respondent states that, as part of its intellectual property strategy, it acquires trademarks and domain names as early as possible in order to ensure maximum protection for its brands. It has secured the domain names <remingtonair.co.nz>, <remingtonair.nz>, and <remingtonair.com.au> as well as the REMINGTON AIR trademark. And it has applied the same strategy to its REMINGTON POWER mark: it has secured the <remingtonpower.co.nz>, <remingtonpower.nz>, <remingtonpower.com.au>, and <remingtonpower.com> domain names.
Further, says Respondent, it uses about half of its trademarks and domain names, while others are still evolving through the business development cycle. The disputed domain name was acquired as a typical step in Respondent’s intellectual property strategy. Respondent distributes its products internationally, and it is reasonable and appropriate for it to obtain multiple domain names to reflect this. The “.com” gTLD is universal and it is used by national and international companies of all kinds. It is often the first port of call for a web browser seeking a website. United States companies do not have a priority right to “.com” domain names purely because they are registered in the United States, or supply to the United States market. Further, an owner of a US trademark has no priority right to a “.com” domain name purely on the basis that it owns an allegedly similar US trademark, as is the case here.
Respondent submits that, under the UDRP, it suffices that Respondent can demonstrate it has legitimate trademark rights in its own jurisdiction. Respondent clearly has valid New Zealand trademark registrations that give it the right to own and use, and legitimate interests in, the disputed domain name as per Policy ¶¶ 4a(ii) and 4(c). There is no provision in the Policy for priority of trademark registrations, and no decisions that the Complainant can point to which provide any authority for the concept of a ‘junior’ or ‘senior’ user of a trademark on a worldwide basis — this is irrelevant and ignores the territorial nature of national trade mark rights. Respondent is the owner of the REMINGTON mark in New Zealand. It has validly registered trademarks, which it is using, and it has a legitimate interest in the disputed domain name.
Respondent alleges that it has been unable to find any evidence of Complainant having a reputation or goodwill in the REMINGTON mark in New Zealand. Complainant does not appear to be trading in New Zealand, and it does not own any New Zealand trademark registrations for REMINGTON. Respondent is the legitimate owner of the REMINGTON, REMINGTON AIR and REMINGTON POWER marks in New Zealand in respect of the goods covered under its registered trademarks.
According to Respondent, it originally developed the REMINGTON POWER mark as part of a REMINGTON family of marks to use on tools and hardware equipment for supply to New Zealand hardware stores. As part of this brand strategy, Respondent secured relevant REMINGTON trade mark registrations and domain names. The domain names were secured in order to sell, market, and provide information about REMINGTON-branded products. While REMINGTON POWER branded products have not yet reached the market in New Zealand, Respondent has pitched such products. Since 2011 Respondent has made demonstrable preparations to use a name (and its registered trademark) corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Respondent’s preparations to use its REMINGTON POWER mark clearly pre-date this dispute. It is clear from Respondent’s activities in the market, seen at its website <www.euroquip.co.nz>, and in respect of its use of the REMINGTON AIR brand at <www.remingtonair.co.nz>, that it is offering goods (specifically, power tools and industrial equipment) in good faith, in the same area of business that it has been operating in since 1974.
Respondent admits that it is not commonly known by the disputed domain name.
Respondent states that it did not register or use the disputed domain name in bad faith. Respondent was unaware of Complainant when it registered its REMINGTON trademarks and the disputed domain name. Respondent does not, and has no intention to, supply or sell power tools in the North American market. Respondent’s area of focus is New Zealand and Australia. Conversely, Complainant does not (and has not asserted it does) have a reputation in the Australasian market, and does not compete with Respondent in this market. The “.com” domain name is useful to Respondent’s strategy because it is a top-level domain used internationally, and is one consumers will often visit when looking for a company’s online presence.
Respondent confirms that it has not yet used the disputed domain name. When it does begin to use the disputed domain name, it will be for legitimate commercial purposes to promote its line of power tool products under its REMINGTON POWER trademarks. Such use is legitimate and justified. Respondent has no desire to cause confusion in the market. Any confusion that may occur is not intentional. Further, there could be no commercial gain for Respondent as a result of any confusion. Respondent and Complainant operate in different markets and if North American consumers did visit Respondent’s website in an attempt to find Complainant’s website, Respondent would not benefit from this.
Complainant first registered its trademark REMINGTON in 1972. That and subsequent registered marks are used to market a range of power tools (gasoline, electric and pneumatic), space heaters and fastening systems worldwide. The mark and Complainant’s products are well known.
Complainant has not licensed or otherwise granted permission to Respondent to use its mark
The disputed domain name was registered on August 8, 2013. It is not being used.
Respondent registered the domain name <remingtonpower.co.nz> on August 8, 2013; and the domain name <remingtonpower.nz> on March 11, 2015. Those domain names resolve to the parking page of the registrar, which offers various services for building and hosting web sites and E-Mail addresses.
Respondent registered the domain name <remingtonair.co.nz> on August 8, 2013. That domain name is used to market a range of pneumatic powered products, including drills, air hammers and chisels, etc.
Respondent uses the domain name <euroquip.co.nz> to market a range of industrial products: air compressors, welding equipment, generators, cleaning equipment, and heaters. That domain name was registered on January 5, 2007.
Some of the products marketed by Respondent compete with some of the products marketed by Complainant.
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.
The disputed domain name contains Complainant’s mark in its entirety, and adds the generic word “power.” Past panels have found that the addition of a generic word does little to mitigate confusing similarity between the domain name and the registered mark. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)).
Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s REMINGTON trademark pursuant to Policy ¶ 4(a)(i).
Respondent admits that it is not commonly known by the disputed domain name, that it is not licensed or authorized to sell Complainant’s products, and that it is not using the disputed domain name. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name where the respondent has failed to make any active use of the disputed domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent alleges that it has made demonstrable preparations to use a name (and its registered trademark) corresponding to the disputed domain name in connection with a bona fide offering of goods or services. However, Respondent does not allege, much less provide evidence to show, that it made preparations to use the disputed domain name itself. And the Panel does not find that the evidence provided by Respondent constitutes adequate evidence of preparations in connection with a bona fide offering of goods or services pursuant to Paragraph 4(c)(i), see the discussion below.
Respondent states repeatedly that it offers products for sale only in New Zealand and Australia, and that the “.com” domain name is useful to Respondent’s strategy because it is a top-level domain used internationally, and is one consumers will often visit when looking for a company’s online presence.
Respondent states that it has no desire to cause confusion in the market and that there could be no commercial gain for Respondent as a result of any confusion: Respondent and Complainant operate in different markets and if North American consumers did visit Respondent’s website in an attempt to find Complainant’s website, Respondent would not benefit from this.
The Panel finds that Respondent’s statements are contradictory: it admits that it registered a “.com” domain name because it is used internationally and that consumers will often visit it when looking for a brand, but denies that its use of the disputed domain name could create confusion. Respondent repeatedly points out that Complainant markets its products in North America, but fails to explain why it needs a “.com” domain name to market its products in New Zealand and Australia.
Given that some of Respondent’s products compete with Complainant’s products, the Panel finds that Respondent’s future use of the disputed domain name is likely to result in confusion. Consequently, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent argues that the fact that it has a registered trademark corresponding to the disputed domain name suffices to establish its rights in the disputed domain name. According to 2.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), panels have tended to recognize that a respondent's registration of a trademark which corresponds to a disputed domain name normally will, but does not necessarily, establish respondent rights or legitimate interests in that domain name for the purpose of the second element of the UDRP. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP. See Chemical Works of Gedeon Richter Plc v. Covex Farma S.L., D2008-1379 (WIPO, Oct. 31, 2008). While the facts in the cited case are different from the facts in the present case, the same principle applies: a trademark registration does not necessarily establish rights or a legitimate interest in a domain name. See also Société de Bains de Mer et du Cercle des Etrangers à Monaco limited v. Piranha Interactive Ltd, D-2000-1333 (WIPO, Dec. 18, 2000).
Further, where a respondent has registered and used a domain name in bad faith (see the discussion below), that respondent cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, D2002 0701 (WIPO, Sept. 6, 2002); see also AltaVista Company v. Saeid Yomtobian, D2000 0937 (WIPO, Oct. 13, 2000).
Thus, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent’s registration of the disputed domain name will more likely than not disrupt the business of Complainant. Complainant urges that Respondent’s attempt to encourage competition with Complainant through the misuse and unauthorized appropriation of Complainant’s mark is disruptive to Complainant’s business. The Panel agrees. Indeed, past panels have found that unauthorized use of a confusingly similar domain name may result in a finding of bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The disputed domain name is not being used. Nonetheless, some panelists have found that inactive use of a disputed domain name may still violate Policy ¶ 4(b)(iv). The guiding precedent is Telstra Corporation Limited v. Nuclear Marshmallows, D2000‑0003 (WIPO, Feb. 18, 2000). See also paragraph 3.2 of the cited WIPO Overview 2.0. Although there are significant differences in the facts of the present case and the facts of the Telstra case, nevertheless the inferences made by the panel in the Telstra case do appear relevant for the present case. (The reasoning and wording below are directly derived from those of the Telstra case.)
In particular, this Panel, as did the Telstra panel, must determine whether, in the circumstances of this particular case, the passive holding of the disputed domain name by Respondent amounts to Respondent acting in bad faith. It concludes that it does. The particular circumstances of this case which lead to this conclusion are:
(i) the Complainant’s trademark has a strong reputation and is widely known for the types of products in question here,
(ii) Respondent has not provided convincing evidence of contemplated good faith use by it of the disputed domain name,
(iii) it is difficult to conceive of any plausible actual or contemplated active use of the disputed domain name by Respondent that would not violate Policy ¶ 4(b)(iv), and this in particular because some of the products offered by Respondent compete with products offered by Complainant, and there is no obvious reason why Complainant would use a “.com” domain name to market products in New Zealand and Australia unless it wanted to take advantage of Complainant’s well known mark.
In light of these particular circumstances, the Panel concludes that Respondent’s passive holding of the disputed domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the disputed domain name is being used in bad faith by Respondent. See also Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); Capital One Financial Corp. v. Capital Group Srl Societ/Ditta Capital Group Srl Societ/Ditta, FA 1617695 (Nat. Arb. Forum June 16, 2015).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <remingtonpower.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 4, 2015
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