Andreas Stihl AG & Co. KG v. Guangzhou Winner Machinery Technology Ltd
Claim Number: FA0612000861131
Complainant is Andreas Stihl AG & Co. KG (“Complainant”), represented by Jan
Zecher, of Gleiss Lutz Rechtsanwaelte, Maybachstr.
6,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <stihl.cc>, registered with Web Commerce Communications Limited d/b/a webnic.cc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 2007 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@stihl.cc by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <stihl.cc> domain name is identical to Complainant’s STIHL mark.
2. Respondent does not have any rights or legitimate interests in the <stihl.cc> domain name.
3. Respondent registered and used the <stihl.cc> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Andreas Stihl AG & Co. KG, is a manufacturer and seller of power-operated tools for forestry and agriculture. Complainant and its predecessors in interest have used the STIHL trademark since 1926, and hold various trademark registrations for the mark worldwide. One of these registrations is with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 855,458 issued August 27, 1968).
Respondent registered the <stihl.cc>
domain name on
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 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 establish Complainant’s rights in the STIHL mark. See 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The Panel additionally finds that Respondent’s <stihl.cc> domain name is identical to Complainant’s STIHL mark as the disputed domain name contains Complainant’s mark in its entirety with the addition of the country code top-level domain (“ccTLD”) “.cc.” Previous panels have found, and this Panel finds, that the addition of a top-level domain is irrelevant when conducting a Policy ¶ 4(a)(i) analysis, as a top-level domain is a required part of all Internet domain names. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant initially must establish that Respondent lacks
rights or legitimate interests with respect to the <stihl.cc> domain name.
However, once Complainant makes 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
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide “concrete evidence that it has rights to or legitimate
interests in the domain name at issue”); see also G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum
Respondent’s WHOIS information does not indicate that
Respondent is commonly known by the disputed domain name and there is no other
evidence in the record to suggest that Respondent is commonly known by the <stihl.cc> domain name. Additionally, Complainant states that
Respondent is not authorized to use Complainant’s STIHL mark and that
Respondent is not associated with Complainant in any way. In Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the
panel found no rights or legitimate interests where the respondent was not
commonly known by the mark and had never applied for a license or permission
from the complainant to use the trademarked name. See RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum
Respondent is using the <stihl.cc> domain name to operate a website that sells goods that compete with Complainant, as well as hyperlinks to various third-party websites in competition with Complainant. Using Complainant’s well-known mark to attract Internet users to Respondent’s website in order to market goods in competition with Complainant 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). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
Moreover, Respondent’s lack of rights and legitimate
interests with regards to the <stihl.cc>
domain name is demonstrated by its offer to sell the disputed domain name to
Complainant for $5 million. Such an
offer to sell, which is for an amount greatly in excess of any out-of-pocket
costs, is evidence that Respondent lacks rights and legitimate interests in the
<stihl.cc> domain name under
Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar.
4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain
name is further evidenced by Respondent’s attempt to sell its domain name
registration to Complainant, the rightful holder of the RED CROSS mark.”); see
also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb.
Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <stihl.cc> domain name to operate a website that sells goods that compete with Complainant, as well as displaying hyperlinks to third-party websites in competition with Complainant. Such use constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See 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); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
The Panel also finds bad faith registration and use under Policy
¶ 4(b)(i) due to Respondent’s offer to sell the disputed domain name to
Complainant for an amount greatly in excess of any out-of-pocket costs. See
Little Six, Inc. v. Domain For
The Panel finds, based
on the uncontested evidence presented by Complainant, that Respondent is using
the <stihl.cc> domain
name for its own commercial benefit by selling
goods that compete with Complainant’s goods, as well as displaying hyperlinks
to third-party websites that also sell goods in direct competition with
Complainant. The Panel also finds that
Respondent’s disputed domain name is capable of creating a likelihood of
confusion as to the source and affiliation of Complainant with the disputed
domain name and corresponding website.
In Drs. Foster & Smith,
Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
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 <stihl.cc> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 19, 2007
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