Shop Vac Corporation v. Md Oliul Alam / Quick Rank
Claim Number: FA1611001701026
Complainant is Shop Vac Corporation (“Complainant”), represented by Craig A. Beaker of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Md Oliul Alam / Quick Rank (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestshopvac.net> (“the Domain Name”), 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 2, 2016; the Forum received payment on November 2, 2016.
On November 3, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the Domain Name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the Domain Name. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 3, 2016, the Forum drew the attention of Complainant to a minor deficiency in the Complaint and invited Complainant to file an amended Complaint. Complainant did so that day, whereupon the Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 2016 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 firstname.lastname@example.org. Also on November 3, 2016, 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 November 22, 2016.
On November 28, 2016, the Forum received an Additional Submission from Complainant. On December 2, 2016 the Forum received an Additional Submission from Respondent. Both Additional Submissions were timely in accordance with the Forum's Supplemental Rule #7.
On November 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
For approximately 60 years, Complainant has manufactured and sold in the United States and around the world high-quality vacuum cleaners and related accessories under the federally registered trademark SHOP-VAC, which is well known and is registered in many countries. Complainant registered the domain name <shopvac.com> on July 31, 1997 and uses the “www.shopvac.com” website to promote its products under the SHOP-VAC mark.
The Domain Name was registered by Respondent on June 23, 2015. Through the website at <bestshopvac.net>, Respondent, without authorization from Complainant, uses the SHOP-VAC mark in connection with the review and marketing of vacuum cleaner products, including those of Complainant and of third-party competitors. The website provides links to amazon.com where Internet users can purchase these products. The website also states that Respondent is a participant in the Amazon Services LLC Associates Program. This program allows website owners to earn advertising fees. In sum, Respondent is using the Domain Name to lure traffic from Complainant’s website and to profit from the unauthorized use of the SHOP-VAC mark to advertise competing goods. Respondent’s actions prevent Complainant’s rightful registration and use of the Domain Name.
Respondent has no rights or legitimate interests in the Domain Name because Complainant owns prior rights in the SHOP-VAC mark; Complainant did not authorize Respondent to use that mark or a confusingly similar variation; Respondent does not use the Domain Name in connection with a bona fide offering of goods or services and is not commonly known by the Domain Name.
Despite not having any affiliation whatsoever with Complainant or being known by the Domain Name, Respondent registered a domain name which wholly incorporates Complainant’s registered SHOP-VAC mark and is using that mark to advertise competing products, thus intentionally attempting to trade on Complainant’s longstanding use of that mark, which predates any rights Respondent may claim in the Domain Name.
Hence Respondent has intentionally attempted to attract, for commercial gain, Complainant’s customers by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website; has intentionally attempted to disrupt Complainant’s business; and, as the website content shows, actually knew of Complainant’s rights in its SHOP-VAC marks.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Respondent’s website <bestshopvac.net> has been generating $500 to $600 in revenue per month from Amazon as an affiliate partner.
People search the term “best shop vac” on Google about 5000 times per month. Wishing to catch traffic from those visitors, Respondent chose the Domain Name solely because one of the key factors to rank the website on Google’s top 10 results page was Exact Match Domain. There was no bad faith involved nor any intention to divert traffic from Complainant.
C. Additional Submissions
Respondent’s statements regarding his knowledge of Internet traffic for “best shop vac” and his efforts to “catch those visitors,” demonstrates that Respondent knew of Complainant’s marks and sought to benefit improperly from confused or mistaken Internet users, knowing that consumers were referring to Complainant’s products when they searched the term “best shop vac”. Respondent sought to capitalize on mistaken or confused Internet users that believed Respondent was somehow endorsed by or otherwise affiliated with Complainant.
Respondent did not have authorization to use the SHOP-VAC mark and
never sought Complainant’s permission.
Respondent acknowledges that he is earning $500-600 monthly in affiliate fees through the Amazon Affiliate Program. Prior panelists have found that using a domain name to generate revenue via affiliate fees is not a bona fide offering of goods or services. See Aéropostale Procurement Co., Inc. v. Piscicelli, FA 1462788 (Forum Nov. 6, 2012) (finding bad faith where registrant used Amazon Affiliate Program to obtain profits).
The Response does not contest Complainant’s allegations concerning Complainant’s rights in the SHOP-VAC mark, Respondent’s lack of rights or legitimate interests in the Domain Name, and Respondent’s bad faith. In light of Respondent’s failure to refute these allegations, they should be construed in Complainant’s favor. Hence the Response proves that Respondent has no rights or legitimate interests in the Domain Name and that it was registered in bad faith.
The unauthorized and improper use of the SHOP-VAC mark by third parties does not excuse Respondent’s unauthorized use. Of the nine third-party uses cited by Respondent, six use “shop vacuum,” not “shop vac.” These uses are distinguishable from the SHOP-VAC mark. The remaining three isolated third-party uses of “shop vac” are insufficient to overcome Complainant’s registered trademark rights in the SHOP-VAC mark.
Complainant vigorously polices against infringement of its intellectual property, including unauthorized use of its SHOP-VAC mark, but it is unfortunately impossible to locate and object to every infringing use. This does not preclude Complainant from objecting to infringement of its mark in this case. See Google, Inc. v. Dot Name Commc’n, FA 114712 (Forum Aug. 18, 2002) (“The existence of other infringers, however, does not excuse Respondent’s bad faith use and registration of the Domain Name. Complainant vigorously defends its rights in the GOOGLE mark, but is under no obligation to act against every infringing use.”).
Accordingly, Respondent’s arguments concerning its right to use the Disputed Domain Name are unpersuasive.
If Respondent wishes to use “wet/dry vacuum” or “shop vacuum” (as is the case in most of the third-party uses cited by Respondent) in a domain name (e.g., <bestwetdryvacuum.com> or <bestshopvacuum.com>), Complainant would not take issue with that use. However, in light of the fact that Respondent profits from the goodwill that Complainant has laboriously generated in its mark over the past 60 years, and for the reasons stated above and in Complainant’s Amended Complaint, Complainant cannot permit Respondent’s continued use of the Domain Name.
The Domain Name was not registered in bad faith and Respondent does have rights or legitimate interests in the Domain Name.
Respondent built the website “www.bestshopvac.net” keeping in mind what searchers are actually looking to find on Google. When a lot of people search a specific term and various forms of that particular term, they cannot be called mistaken or confused internet users.
Respondent cites Google search volumes for the following terms, saying it can be clearly seen that people are searching for a specific type of vacuum cleaner and for specific types of vacuum cleaner parts and accessories:
ridgid shop vac: 9,900
ridgid shop vac 6 gallon: 140
ridgid shop vac filter: 1,600
ridgid shop vac hose: 390
ridgid shop vac accessories: 720
craftsman shop vac: 4,400
craftsman shop vac 16 gallon: 110
craftsman shop vac filter: 1,900
craftsman shop vac hose: 260
craftsman shop vac accessories: 320
Respondent denies seeking improperly to benefit from or to capitalize on confused or mistaken Internet users who believed Respondent was endorsed by or affiliated with Complainant; denies bad faith registration and asserts that he has rights and a legitimate interest in the Domain Name.
Complainant has failed to establish all elements necessary to entitle it to relief.
Rule ¶15(a) 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."
Policy ¶4(a) 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 has rights in the SHOP-VAC mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 647,763, registered July 2, 1957) and elsewhere. The Domain Name is confusingly similar to the SHOP-VAC mark because it contains the mark (without the hyphen) along with the generic term “best” and the inconsequential generic top-level domain “.net.”
Complainant has established this element.
In light of the Panel’s finding below, it is unnecessary to address this element.
Policy ¶ 4(a)(iii) sets out the conjunctive requirement that the Complainant establish both that the Respondent has registered the Domain Name in bad faith and that the Respondent is using the Domain Name in bad faith. The Complainant invokes Policy ¶4(b)(iv), which set out illustrative circumstances, which, though not exclusive, shall be evidence of both bad faith registration and bad faith use for purposes of Policy ¶4(a)(iii):
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.”
The Panel accepts that Respondent most likely knew of Complainant’s SHOP-VAC trademark before registering the Domain Name. The words “shop” and “vac” are not inherently distinctive however, and mere knowledge of a mark in such circumstances does not necessarily lead to a conclusion of bad faith registration. See Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151(January 4, 2001, <goldline.com>).
The Panel notes that Complainant has no objection to the use in a domain name by Respondent of the words “best” and “shop” but objects to their use coupled with the word “vac”.
Respondent has provided pictures and links related to Internet searches in order to demonstrate that the terms “shop vac” are commonly used in a generic manner to refer to wet/dry shop vacuum cleaners. To that end Respondent refers, inter alia, to the website “www.popularmechanics.com/home/g1976/best-shop-vacs/”, headed:
“We Test the 6 Best Shop Vacs
To find out which of these small vacuums could handle a workshop's worth of wreckage, we ran time trials as they pulled up two pounds of sawdust, two pounds of screened topsoil, and one gallon of water.”
Respondent also refers to the website “www.consumersearch.com/shop-vacs”, which is headed: “Shop Vac Reviews” and which contains the following text:
“Wet-dry vacs are the powerful vacuums that are up to the challenge of tackling the difficult and messy jobs your regular vacuum cleaner can't handle. Editors evaluate comprehensive, hands-on tests conducted by professional review sources and thousands of owner-written reviews to identify the best shop vacs for home and garage, top models for heavy-duty workshop use, and portable wet-dry vacs capable of handling your messiest cleaning tasks.
For heavy-duty cleanup tasks, standard vacuum cleaners sometimes don't cut it. For sucking up water, large piles of sawdust or heavier objects like wood chips or nails, you'll need a vacuum cleaner that's up to the task. And that means a shop vac. Note that Shop-Vac is a brand name for a line of wet dry vacs, however, in the same way that Kleenex and Xerox have become synonymous with all tissues and copy machines, many people simply call all wet dry vacuums shop vacs, regardless of who actually made the machine”.
Complainant, in its Additional Submission, exhibits examples of its recent attempts to prevent the use of its mark as a generic description of a type of vacuum cleaner, including correspondence in which it seeks the removal from Wikipedia of the statement: “Wet or wet/dry vacuum cleaners (commonly known by the generic trademark Shop-Vac)” and the removal of “Shop-Vac” from a Wikipedia list of generic trademarks. Other examples include communications on behalf of Complainant which refer to Complainant’s trademark as “Shop Vac” (without the hyphen) and to its corporate name as “Shop-Vac” (with a hyphen).
It is not clear whether or not Complainant has been or is likely to be successful in preventing use of the words “shop vac” to describe a type of vacuum cleaner. However, it appears on the material before the Panel that the word “vac” is commonly used in the industry as an abbreviation for “vacuum” and that the expressions “shop vac” and “best shop vac” are in common use with respect to vacuum cleaners other than those of Complainant. Accordingly, the Panel does not accept Complainant’s assertion that Respondent registered the Domain Name in order to capture web traffic seeking Complainant’s products.
Rather, the Panel finds that Respondent registered the Domain Name in order to capture web traffic for the specific search terms “best shop vac” so as to appear highly in search rankings, without any intention of diverting traffic away from Complainant. Hence the Panel finds that Complainant has failed to establish that Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on his website.
Complainant has failed to establish this element.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the Domain Name <bestshopvac.net> REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: December 10, 2016.
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