Stanley Logistics, Inc. v. Martial Maitam
d/b/a Marwest Access Controls, Inc.
Claim Number: FA0308000176551
PARTIES
Complainant
is Stanley Logistics, Inc., New
Britain, CT (“Complainant”) represented by Leo
M. Loughlin of Arent Fox Kintner Plotkin & Kahn.
Respondent is Martial Maitam d/b/a Marwest Access Controls, Inc., Chatsworth, CA (“Respondent”)
represented by Anthony M. Solis.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <stanley-garage-opener.com>
registered with Register.com.
PANEL
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Estella
S. Gold as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 31, 2003; the Forum received a hard copy of the
Complaint on August 4, 2003.
On
August 4, 2003, Register.com confirmed by e-mail to the Forum that the domain
name <stanley-garage-opener.com>
is registered with Register.com and that Respondent is the current registrant
of the name. Register.com has verified that Respondent is bound by the Register.com
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
DOCS_PH
1482564v1
On
August 6, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 26,
2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@stanley-garage-opener.com by e-mail.
A
timely Response was received and determined to be complete on September 12,
2003.
An
additional submission was received electronically from Complainant, which
electronic submission was timely. However, the additional submission did not
comply with Supplemental Rule 7 because the hard copy was not received until
September 22, 2003. Although technically this additional submission was not
timely under Supplemental Rule 7, the actual submission was timely received
electronically, and therefore has been reviewed to give the Complainant due
process and consideration of all arguments.
On September 22, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Estella S. Gold
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is a well-known manufacturer of garage door openers for residential and
commercial applications. Complainant owns the registered trademark STANLEY and
has used the mark in various applications continuously since 1920. Complainant
alleges that its mark is distinctive and famous.
Complainant
alleges that it has not licensed Respondent to use its name, its trade dress,
or its marks.
Complainant
alleges that Respondent’s use of its marks is confusingly similar to
Complainant’s use of its registered marks, and would mislead members of the
public into believing that Respondent’s website is affiliated with
Complainant’s and/or that Respondent is an authorized dealer of Complainant’s
products, which it is not.
In
Complainant’s Additional Submission, it supplies the Panel with evidence that
as recently as September 2003, following Complainant’s various correspondence
with Respondent objecting to Respondent’s website, Respondent continues to
state on its website, “Established in 1993, We [Respondent] are authorized
distributors for Stanley.”
B.
Respondent
Respondent
concedes that the domain name <stanley-garage-opener.com>
incorporates the registered trademark “Stanley”.
Respondent
argues that Complainant does not offer for sale, nor does itself continue to
manufacture the access control devices or spare parts, which Respondent markets
on its website. However, Respondent notes that the Stanley products which it
sells on its website are devices manufactured by Complainant’s licensees.
Respondent
argues that it has a legitimate interest in the domain name because it sells Stanley-branded
and Stanley-licensed products, as well as products of other Stanley
competitors.
Respondent
argues that it has never attempted to sell its domain name to Stanley, nor
engage in any activities which might justify allegations of “bad faith” under
the Policy.
C.
Additional Submissions
Complainant
has provided Additional Submissions which include a download of Respondent’s
website as of September 2003, which show that Respondent alleges that it is an
authorized dealer of Complaint’s.
FINDINGS
The Panel finds
(1)
that the domain name registered by the Respondent, <stanley-garage-doors.com> is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(2)
that the Respondent has no rights or legitimate interests with respect
to the domain name; and
(3)
that the Respondent has registered and has been using the domain name in
bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 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;
(2)
the
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.
It is undisputed that the domain name
“Stanley-Garage-Doors.com” incorporates the registered trademark of the
Complainant “Stanley”, plus the name of a product which the Complainant
licenses for manufacture within the scope of that trademark registration.
Complainant argues that Respondent’s <stanley-garage-opener.com> domain name is confusingly similar to
Complainant’s STANLEY mark because the disputed domain name incorporates
Complainant’s mark along with the generic or descriptive terms “garage” and
“opener.” The Panel concludes that Respondent’s addition of these generic or
descriptive terms does not serve to sufficiently distinguish the domain name
from the mark for purposes of Policy ¶ 4(a)(i). This is especially true because
the generic or descriptive terms relate to the types of products Complainant
provides. See Space Imaging LLC v.
Brownwell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar.
13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is
confusingly similar to Complainant’s MARRIOTT mark).
Complainant
avers that Respondent is not licensed or authorized to use Complainant’s
STANLEY mark in the disputed domain name. Complainant maintains that Respondent
is not named or commonly known by <stanley-garage-opener.com>. The Panel finds that Respondent has no
rights to or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
Respondent
is using the <stanley-garage-opener.com> domain name to sell Complainant’s products.
Complainant asserts that Respondent does not have permission from Complainant
to use the STANLEY mark as part of the disputed domain name. The Panel rules
that Respondent’s use of a domain name confusingly similar to Complainant’s
mark to sell Complainant’s products does not demonstrate a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii). See K&N
Eng’g., Inc. v. Weinberger, FA 114414 (Nat. Arb. Forum July 25, 2002)
(holding that Respondent, who was not an authorized distributor of
Complainant’s products, lacked rights or legitimate interests in a domain name
incorporating Complainant’s mark); see also Hewlett-Packard Co. v. Burgar, FA 93564 (Nat. Arb. Forum Apr. 10,
2000) (finding that Respondent has no rights or legitimate interests in the
<hewlettpackard.com> domain name, because Respondent is not a licensed
dealer of Hewlett-Packard products and has not demonstrated any right except to
declare that he is affiliated with a licensed re-seller of Complainant’s
products).
Complainant contends that Respondent’s unauthorized
use of the STANLEY mark in the <stanley-garage-opener.com> domain name
establishes bad faith registration and use of the domain name because
Respondent is capitalizing commercially on the likely confusion of Internet
users. The Panel decides that Respondent’s use of the disputed domain name
demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Procter & Gamble Co. v. Hlad, FA 126656 (Nat. Arb. Forum Nov. 20,
2002) (finding that the disputed domain name was registered and used in bad
faith where Respondent, a distributor of Complainant’s products who was not a
licensee of Complainant, used Complainant’s mark in its domain name, suggesting
a broader relationship with Complainant and fostering the inference that
Respondent was the creator of Complainant’s products rather than a mere
distributor); see also Stanley Logistics, Inc. v. Motherboards.com, FA
128068 (Nat. Arb. Forum Dec. 2, 2002) (finding that Respondent, through the use
of Complainant’s mark to redirect Internet users to a website selling
Complainant’s product, placed itself without Complainant’s consent in a
preferred position with respect to other distributors, which caused consumer
confusion and evidenced bad faith use of the domain name).
Moreover,
the Panel presumes that Respondent had actual knowledge of Complainant’s rights
in the STANLEY mark because Respondent sells Complainant’s goods. The Panel
finds that Respondent’s registration of the <stanley-garage-opener.com> domain name despite actual knowledge of Complainant’s rights in its mark
exhibits Respondent’s bad faith regsitration and use of the domain name. See
Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the link between Complainant’s mark and the content advertised on
Respondent’s website was obvious, Respondent “must have known about the
Complainant’s mark when it registered the subject domain name”); see also
G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002)
(“It can be inferred that Respondent had knowledge of Complainant’s rights in
the CELEBREX mark because Respondent is using the CELEBREX mark as a means to
sell prescription drugs, including Complainant’s CELEBREX drug”).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stanley-garage-opener.com>
domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________________
Estella S. Gold, Panelist
Dated: October 7, 2003
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