MTD Products Inc v. New Beginnings Management Company Inc / Michael F. Fowler
Claim Number: FA1509001637215
Complainant is MTD Products Inc (“Complainant”), represented by Christopher A. Corpus, Ohio, USA. Respondent is New Beginnings Management Company Inc / Michael F. Fowler (“Respondent”), represented by Matthew D. Kendall of Gardner, Linn, Burkhart & Flory, LLP, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <remingtonchainsaw.com>, registered with GoDaddy.com, 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.
Eduardo Machado 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, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <remingtonchainsaw.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 September 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 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@remingtonchainsaw.com. Also on September 15, 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 October 5, 2015.
Complainant’s Additional Submission was timely received by the Forum on October 9, 2015.
Respondent’s Additional Submission was received by the Forum on October 14, 2015
On October 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eduardo Machado 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, MTD Products Inc., acquired the rights to the REMINGTON mark from Desa Industries Inc. (“Desa”) in 2009. Complainant, and previously Desa, uses the REMINGTON mark in connection with its business as a worldwide leader in design, manufacture, and sale of outdoor power equipment including chainsaws. Complainant’s rights in the REMINGTON mark stem from registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 929,505, registered February 22, 1972).
Respondent’s disputed <remingtonchainsaw.com> domain name is confusingly similar to Complainant’s REMINGTON mark because the domain includes the mark in its entirety and merely adds the generic term “chainsaw” and the generic top-level domain (“gTLD”) “.com.” These additions to Complainant’s REMINGTON mark do not alleviate the similarity between the domain and the mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s REMINGTON mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent’s use of the domain name, to host links which redirect users to a website which is used to sell Complainant’s products and other products from different owners, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the disputed domain name in bad faith. Respondent’s registration of a domain name that is confusingly similar to Complainant’s REMINGTON mark, for the purposes of redirecting users to a website where Respondent sells parts for Complainant and third-party products, demonstrates a bad faith attempt to attract and confuse users for commercial gain. In addition, Respondent had actual or constructive knowledge of Complainant’s rights in the REMINGTON mark at the time of registration.
B. Respondent
Respondent does not dispute that in 2009 Complainant acquired rights in the REMINGTON trademark. Respondent’s <remingtonchainsaw.com> domain name is descriptive of the services offered at the domain name. In addition, based on Respondent’s relationship with the former owner of the REMINGTON mark, and a lack of contact with the current owner for a period of six years, Respondent’s domain should not be considered confusing similar to the REMINGTON mark.
Respondent has rights and legitimate interests in the disputed domain name. Respondent has been known by the <remingtonchainsaw.com> domain name for the last sixteen years.
Respondent has not registered the disputed domain name for the purpose of preventing Complainant from reflecting its mark in commerce. Additionally, Respondent’s inclusion of a disclaimer mitigates a finding of bad faith.
C. Complainant’s Additional Submission
Respondent fails all four requirements of the Oki Data Test and has no rights or legitimate interests in the disputed domain name per the following:
Respondent is not authorized to sell REMINGTON brand products.
Complainant reaffirms its previous arguments of bad faith and denounces the assertion of laches as it is not recognized in UDRP proceedings and Complainant recently became aware of Respondent’s infringing use.
D. Respondent’s Additional Submission
The descriptive nature of the domain name as it relates to the sale of parts for Remington brand chainsaws is evidence that the domain name's use is a bona fide offering of goods or services, which is a legitimate interest as defined under Paragraph 4(c) of the Policy.
The disclaimer provided on Respondent's website prominently and clearly specifies the manufacture information for the parts to avoid confusion with the Complainant and to explain that they are genuine Remington brand parts being offered for sale.
Respondent's resale of parts for REMINGTON chainsaws via its domain is a legitimate interest under the Policy.
Further, it was upon the request of DESA IP, LLC ("Desa") that Respondent included the disclaimer and removed the assumed name "Master Distributors" from its website, as Respondent had previously displayed the assumed name prominently across the top of the website. Complainant's statement that it was not aware that Respondent used the assumed named is surprising in view of such information being readily accessible both in the Michigan Business Entity Directly under Respondent's business name and in the internet archives for the subject domain.
Respondent argues that even if its status as an "authorized" reseller was relevant to the present analysis, Complainant's actions are sufficient to show that Respondent's commercial activities are authorized to the extent required for it to have a legitimate interest in the continued ownership and operation of the disputed domain.
Respondent further replies to Complainant's assertions made with respect to the Oki Data criteria, as follows:
1. Although the www.PartsFor.com website provides a secure shopping cart portal for the part customers of <RemingtonChainsaw.com>, the www.RemingtonChainsaw.com is the website offering the REMINGTON brand chainsaw parts for sale. The specific part number purchase links on the disputed domain name are clearly provided as an offer to sell the REMINGTON chainsaw parts, thereby meeting the first requirement of the Oki Data test.
2. The only parts offered for sale on <RemingtonChainsaw.com> are for REMINGTON brand chainsaws. The Complainant's suggestion that the Respondent is attempting to bait and switch customers to buy parts for other products is unsupported. The links on the www.PartsFor.com website to parts for heaters and other natural gas burning equipment sold by non-competitive or otherwise defunct companies is irrelevant to the Oki Data analysis. Accordingly, Respondent submits that it also meets the second requirement of the Oki Data test.
3. Respondent states that the disclaimer provides a prominent, clear, and accurate description of the relationship of the parties, plainly distinguishing the <RemingtonChainsaw.com> as being separate and independent from the Complainant and Desa International. Respondent submits that it meets the third requirement of the Oki Data test.
4. Respondent incorporates its remarks from the Response and further submits that it meets the fourth requirement of the Oki Data test.
Respondent submits that no weight should be given to Complainant's unsubstantiated statement regarding what is allegedly "understood" in the field with respect to the term "authorized.”
Respondent disagrees with Complainant's challenge to the relevance of Desa's acquiescence to Respondent's use of the domain name when it was the REMINGTON mark owner, and Complainant's six (6) year delay in approaching Respondent. Respondent submits that these facts should be given due consideration, especially in showing that Respondent has not used the disputed domain name in bad faith.
At the end, Respondent reaffirms its previous arguments and states that the Complaint should be denied.
In 2009, MTD acquired certain assets from Desa Industries Inc (“Desa”), namely, the REMINGTON brand and associated trademarks.
Complainant has obtained numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) and Canadian Intellectual Property Office for the REMINGTON mark with a date of first use back to 1972.
The disputed domain name was registered on July 29, 1999.
In 2005, Respondent discussed with counsel for Desa adding a disclaimer to the remingtonchainsaw.com website among other changes to the website that would clarify Respondent's business and that of Desa for visitors to the site.
In a recent visit to the remingtonchainsaw.com website, it was verified that if an internet user clicks on the “Order Parts” link located on the left side of the home page, the Internet user is redirected to a another website site, namely, PartsFor.Com. If an Internet user clicks on the “Chainsaws” link located on the left side of the home page, the Internet user stays within the disputed domain name and is taken to a listing of various model chainsaws – designed and manufactured by Desa and Complainant.
If the Internet user clicks on one of the chainsaw models, the Internet user stays within the disputed domain name and is taken to a webpage with a breakdown of the component parts that comprise that particular chainsaw.
If the Internet user clicks on the first component part, Trigger Switch, then the Internet user is again re-directed to PartsFor.Com website to purchase the component part.
The Frequently Asked Questions link on the Disputed Domain Name’s home page also states that “all replacement parts can be purchased [through] our www.PartsFor.com online shopping cart.”
And, if an Internet User clicks on the Contact Link on the disputed domain name’s home page, the Internet user is redirected to the Frequently Asked Questions page which contains a Contact Us link at the bottom of the page.
If an Internet user clicks on the Contact Us link, the Internet user is redirected to PartsFor.Com.
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.
Complainant, MTD Products Inc., claims to have acquired rights to the REMINGTON mark from Desa Industries Inc. (“Desa”) in 2009. Complainant, and previously Desa, uses the REMINGTON mark in connection with its business as a worldwide leader in design, manufacture, and sale of outdoor power equipment. Complainant contends that its rights in the REMINGTON mark stem from various registrations of the mark, including the USPTO Reg. No. 929,505, registered on February 22, 1972.
Respondent’s domain differs from the REMINGTON mark through the mere addition of the term “chainsaw” and the gTLD “.com.” Previous panels routinely find that the gTLD “.com” is irrelevant to an analysis of confusing similarity. The fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. E.g., EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (WIPO Apr. 9, 2000) (“parts” added to mark EAUTO in <eautoparts.com>), Caterpillar Inc. v Off Road Equipment Parts, WIPO Case No. FA0095497 (NAF Oct. 10, 2000) (“parts” added to mark CAT in <catparts.com>).
Therefore, the Panel finds that Complainant has rights in the REMINGTON mark under Policy ¶ 4(a)(i) and that the dispute domain name is confusingly similar to its registered mark.
The Panel finds that this is one of these cases where the issue of rights or legitimate interests and bad faith can be more conveniently dealt with together.
The Panel finds that the facts in this case are clear. Although Respondent is using a domain name that incorporates Complainant`s REMINGTON mark to sell genuine REMINGTON chainsaw parts for many years, it is also using it to redirect internet users to another website, partsfor.com, where Respondent is offering other products, namely, gas heaters, gas fireplaces, related natural gas burning heat sources, among others, that, according to Respondent, were formerly made by Desa and now are made by other companies.
In accordance to paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview”), the Panel verifies that the predominant view among panelists accept that “a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”
In view of this Panel, the Oki Data criteria are capable of applying regardless of whether or not a respondent is an authorized distributor.
In this sense, it is extremely important to look at the use actually made of the disputed domain name and the nature of the website that operates from it to see whether the registration and use is abusive or not.
In the present case, Respondent has sought to raise an Oki Data type argument. However, the Panel finds that the website linked to the disputed domain name does not sell any goods but links to a different website, namely, PartsFor.com, that does not only sell REMINGTON branded parts but also parts for other products from different companies.
In light of this, the main point for that conclusion of this case is not Complainant's delay in enforcement against Respondent, nor the acquiescence to Respondent's use of the domain name by the prior owner of the REMINGTON mark (though it can be considered relevant in some cases), but the fact that the website operating from the disputed domain name offers links to a different website which is used to sell and promote REMINGTON goods along with other goods, including parts for heaters and other natural gas burning equipment , from different companies.
From the point of view of the Policy, the activity of selling genuine products that bear the trademark of another is not per se abusive. Nevertheless, when someone’s mark is used in a domain name to impersonate the trademark owner (so as to benefit from initial interest confusion created by the domain name itself) or to promote the sale of competing or even unrelated products, it can be considered abusive.
Moreover, Respondent’s disclaimer is not entirely clear, leaving the Internet user with an impression that Respondent is somehow associated or affiliated with Complainant. It should be noted that a UDRP panel held that a disclaimer on a website is insufficient to avoid a finding of bad faith. Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000). This is because a disclaimer does nothing to dispel initial interest confusion.
Therefore, considering all the above, the Complainant has made out the requirements of paragraph 4(a)(ii) and (iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <remingtonchainsaw.com> domain name be TRANSFERRED from Respondent to Complainant.
Eduardo Machado, Panelist
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