Stanley Logistics, Inc. v. M Delvin
Claim Number: FA0610000825623
Complainant is Stanley Logistics, Inc. (“Complainant”), represented by David S. Modzeleski, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is M Delvin (“Respondent”), 1112 Bramble Ave., Bolingbrook, IL 60490.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bostitchstaplers.com>, registered with Dstr Acquisition Vii, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 23, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 24, 2006.
On October 23, 2006, Dstr Acquisition Vii, Llc confirmed by e-mail to the National Arbitration Forum that the <bostitchstaplers.com> domain name is registered with Dstr Acquisition Vii, Llc and that Respondent is the current registrant of the name. Dstr Acquisition Vii, Llc has verified that Respondent is bound by the Dstr Acquisition Vii, Llc 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 October 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 15, 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@bostitchstaplers.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant holds numerous registrations with the United States Patent and Trademark Office for the BOSTICH mark (e.g. Reg. No. 135,920 issued October 26, 1920; Reg. No. 226,587 issued April 12, 1927).
Complainant uses the BOSTICH mark in connection with its business as a manufacturer and marketer of tools and hardware, including industrial staplers.
Complainant has registered the <bostitch.com> domain name to provide Internet users with online access to its products.
Respondent registered the disputed domain name on June 20, 2002.
Respondent is using the disputed domain name to redirect Internet users to its website located at the <officemart.com> domain name.
Respondent’s website sells Complainant’s products as well as those of Complainant’s competitors.
Respondent’s <bostitchstaplers.com> domain name is confusingly similar to Complainant’s BOSTICH mark.
Respondent does not have any rights or legitimate interests in the domain name <bostitchstaplers.com>.
Respondent registered and uses the <bostitchstaplers.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
It is undisputed that on the record before us
that Compainant’s BOSTITCH mark is registered with the pertinent national
authorities. Previous panels have
consistently found that the registration of a mark with a government authority
establishes a complainant’s rights pursuant to Policy ¶ 4(a)(i). For example, in Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004), a panel held
that, “registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.” Thus
Complainant’s registrations of the BOSTITCH mark establish its rights in the
mark pursuant to Policy ¶ 4(a)(i).
It is also undisputed that Respondent’s <bostitchstaplers.com> domain name is confusingly similar to Complainant’s BOSTITCH mark. The disputed domain includes Complainant’s mark in its entirety. In Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), a panel held that:
[T]he 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.
The disputed domain name merely adds the generic term “staplers,” which describes Complainant’s products and does not distinguish the disputed domain name from Complainant’s mark. The panel in Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001), held that the <hoylecasino.net> domain name was confusingly similar to a complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which that complainant engaged, did not take the disputed domain name out of the realm of confusing similarity.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant’s assertion establishes a prima facie case pursuant to the Policy, shifting the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name. By not submitting a Response, Respondent has failed to present to the Panel any evidence or argument to suggest that it does have rights or legitimate interests in the disputed domain. See 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.
Respondent’s failure to respond means that Respondent has not presented any
circumstances that would promote its rights or legitimate interests in the
subject domain name under Policy ¶ 4(a)(ii).
See also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, a respondent failed to invoke any circumstance which could demonstrate rights or legitimate interests in a domain name).
Despite Respondent’s failure to respond, the Panel will evaluate the available evidence to determine whether there is any basis for concluding that Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
We
begin by observing that it appears that Respondent is not using the domain
name <bostitchstaplers.com>
either in connection with a bona fide
offering of goods or services as outlined in Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use as outlined in Policy ¶ 4(c)(iii). Rather Respondent uses the disputed domain
name to redirect Internet users to Respondent’s commercial website, located at
<officemart.com>, which offers office supplies, tools and hardware in
direct competition with Complainant’s products. In Ameritrade Holdings Corp. v. Polanski, FA 102715
(Nat. Arb. Forum Jan. 11, 2002), a panel found that a respondent’s use of a
disputed domain name to redirect Internet users to a financial services
website, which competed with that of a complainant, was not a bona fide
offering of goods or services. Likewise, a panel in Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003), held that a
respondent was not using domain names for a bona fide offering of goods
or services nor a legitimate noncommercial or fair use because that respondent
used the names to divert Internet users to a website that offered services
competing with those offered by a complainant under its marks. On the facts before us, we are forced to
conclude similarly.
In
addition, there is no evidence in this record showing that Respondent is commonly
known by the <bostitchstaplers.com> domain name. Indeed,
Respondent’s WHOIS information identifies it as “M Delvin.” The panel in Tercent Inc. v. Lee
Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), stated that the fact that
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” was a factor in determining that Policy ¶
4(c)(ii) did not apply. Similarly, the
panel in Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003), found that, “given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.” Thus, we conclude that Respondent is not
commonly known by the disputed domain name as contemplated by Policy ¶
4(c)(ii).
For these reasons, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
There is no dispute that Respondent is exploiting the <bostitchstaplers.com> domain name, which is confusingly similar to Complainant’s BOSTITCH mark, to profit from the resulting confusion of Internet users. In TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001), a panel found bad faith registration and use where a respondent used a domain name, for commercial gain, to attract users to a direct competitor of a complainant. Similarly, in Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), a panel found that a respondent’s use of the <saflock.com> domain name to offer goods competing with a complainant’s illustrated respondent’s bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv). On the facts here presented, we agree.
Moreover, it is evident that Respondent registered the
contested domain name with actual or constructive knowledge of Complainant’s
rights in the BOSTITCH mark by virtue of Complainant’s prior registration of
its mark with the USPTO. Registration
of a confusingly similar domain name despite such actual or constructive
knowledge evidences bad faith registration and use of the domain name pursuant
to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <bostitchstaplers.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 29, 2006
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