Andreas Stihl AG & Co. KG v. xc2 c/o Internet Coordinator
Claim Number: FA0608000766645
Complainant is Andreas Stihl AG & Co. KG (“Complainant”), represented by Jan Zecher, of Gleiss Lutz Rechtsanwaelte, Maybachstr. 6, Stuttgart, Germany 70469. Respondent is xc2 c/o Internet Coordinator (“Respondent”), P.O. Box No. 71826, KCPO, Central 00000 HK.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <stilh.com>, registered with Enom, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 4, 2006.
On August 1, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <stilh.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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").
On August 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 31, 2006 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@stilh.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <stilh.com> domain name is confusingly similar to Complainant’s STIHL mark.
2. Respondent does not have any rights or legitimate interests in the <stilh.com> domain name.
3. Respondent registered and used the <stilh.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Andreas Stihl AG & Co. KG, is a producer of
various power tools, including its popular brand of saws. Complainant has used its STIHL mark since at
least 1948, and holds various trademark registrations throughout the world for
the mark, including with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 855,458 issued August 27, 1968).
Respondent registered the <stilh.com> domain name on May 19, 2004. Respondent’s disputed domain name resolves to a website that displays links to third-party websites. The third-party websites include related websites that compete with Complainant. Additionally, Respondent has been a participant in several other UDRP decisions in which Respondent’s disputed domain names were transferred from Respondent to the respective complainants in those cases.
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. 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 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 Panel finds that Complainant’s trademark registrations internationally and with the USPTO sufficiently establishes Complainant’s rights in the STIHL mark. Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The Panel finds that Respondent’s <stilh.com> domain name is confusingly similar to Complainant’s STIHL mark because it contains a simple misspelling of Complainant’s mark, as it switches the placement of the “h” and “l” in the mark. Furthermore, the disputed domain name is phonetically identical to Complainant’s mark. The Panel thus finds that Respondent’s transposing of two letters of Complainant’s mark is not enough to negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name. See Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to the complainant's PIER 1 mark); see also Pfizer Inc. v. Phizer's Antiques, D2002-0410 (WIPO July 3, 2002) (finding the <phizer.com> domain name phonetically equivalent and confusingly similar to the PFIZER mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests in the <stilh.com> domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).
Complainant asserts that Respondent is not authorized to use Complainant’s STIHL mark, and that Respondent is not associated with Complainant in any way. Furthermore, Respondent’s WHOIS information does not suggest that Respondent is commonly known by the <stilh.com> domain name. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel found that the respondent did not have rights in a domain name where the respondent was not known by the mark. Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). The Panel therefore finds that because Respondent is not commonly known by the disputed domain name, it lacks legitimate rights or interests in the domain name as provided for under Policy ¶ 4(c)(ii).
The evidence on record indicates that Respondent is using the <stilh.com> domain name to display links to related and unrelated third-party websites, the content of which includes Complainant’s competitors. Such use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Respondent is using the <stilh.com> domain name to divert Internet users to a website that displays links to third-party websites, some of which are in direct competition with Complainant. The Panel thus finds that such use constitutes disruption and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Respondent is using the disputed domain name to display
links to third-party websites that are both related and unrelated to
Complainant. Based on the uncontested
evidence presented by Complainant, the Panel infers that Respondent receives
click-through fees for diverting Internet users to these third-party
websites. Additionally, the disputed
domain name’s use of Complainant’s mark creates a likelihood of confusion as to
the source and affiliation of Complainant with the disputed domain name and
corresponding website. Such use of the
disputed domain name constitutes bad faith registration and use under Policy ¶
4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users seeking
Complainant’s website, but who end up at Respondent’s website, will be confused
as to the source, sponsorship, affiliation or endorsement of Respondent’s
website.”); see also Identigene,
Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith
where the respondent's use of the domain name at issue to resolve to a website
where similar services are offered to Internet users is likely to confuse the
user into believing that the complainant is the source of or is sponsoring the
services offered at the site).
Moreover, the Panel also finds bad faith registration and use under Policy ¶ 4(b)(ii) as Respondent has been involved in several previous UDRP decisions where the disputed domain names were transferred from Respondent to the respective complainants in those cases. See Hilton Hospitality, Inc. and Hilton Hhonors Worldwide, LLC v. XC2, FA 200662 (Nat. Arb. Forum Nov. 14, 2003). The Panel finds that such evidence demonstrates Respondent’s pattern of registering infringing domain names, which is evidence of bad faith under policy ¶ 4(b)(ii). See Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004)(“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established . . . by the public decisions of two different UDRP proceedings [against] Respondent.”); see also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stilh.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 20, 2006
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