Milwaukee Electric Tool Corporation v. Deckerconstructions / Decker Dalgetty
Claim Number: FA2103001935361
Complainant is Milwaukee Electric Tool Corporation (“Complainant”), represented by Thomas A. Agnello of Michael Best & Friedrich LLP, Wisconsin, USA. Respondent is Deckerconstructions / Decker Dalgetty (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rnilwaukeetool.com> (the “disputed domain name”), registered with Hosting Concepts B.V. d/b/a Registrar.eu.
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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 3, 2021; the Forum received payment on March 3, 2021.
On March 4, 2021, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to the Forum that the <rnilwaukeetool.com> domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu 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 March 9, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2021 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 postmaster@rnilwaukeetool.com. Also, on March 9, 2021, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Founded in 1924, the Complainant is a manufacturer of power tools, hand tools, and related goods. Complainant has rights in the MILWAUKEE trademark through Complainant’s registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,624,843, registered September 24, 2002) (hereinafter the “MILWAUKEE Mark”).
Complainant contends that the <rnilwaukeetool.com> disputed domain name is confusingly similar to Complainant’s MILWAUKEE Mark as it includes most of Complainant’s MILWAUKEE Mark, with the letter “m” replaced by the homoglyph[i] “rn” (which is a combination of the letters “r” and “n”), adding the generic term “tool”, and then adding the “.com” generic top-level domain (“gTLD”).
Complainant also claims that Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the MILWAUKEE Mark. Moreover, the website to which the disputed domain name resolves contains third party sponsored pay-per-click hyperlinks that include the same or similar competing products as sold by the Complainant on its official website.
Finally, Complainant contends that Respondent registered and used the disputed domain name in bad faith since Respondent used typosquatting in that the letter “m” is replaced by the homoglyph “rn”. Another example of bad faith is that on one browser, the disputed domain name resolves to a pay-per-click site that contains hyperlinks to sellers of construction materials and on another, the resolving website contains malware. Finally, the Complainant contends that Respondent registered and is using the <rnilwaukeetool.com> disputed domain name in bad faith since it had actual knowledge of Complainant’s rights in the MILWAUKEE Mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant owns the MILWAUKEE Mark in the United States, that the disputed domain name is confusingly similar to Complainant’s MILWAUKEE Mark, that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and that Respondent registered and is using the disputed domain name 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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has rights in the MILWAUKEE Mark through Complainant’s registration of the Mark with the USPTO (e.g., Reg. No. 2,624,843, registered Sept. 24, 2002). Registration of a trademark with the USPTO is sufficient to demonstrate rights in that mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel also concludes that the <rnilwaukeetool.com> disputed domain name is confusingly similar to Complainant’s MILWAUKEE Mark pursuant to the Policy ¶ 4(a)(i). The disputed domain name consists of most of the MILWAUKEE Mark, although with a misspelling[ii] of MILWAUKEE, using the homoglyph “rn” instead of the letter “m”, adding the generic term “tool”, and then followed by the “.com” gTLD. Adding a homoglyph along with a generic term and a gTLD is generally insufficient to distinguish a disputed domain name from the trademark it incorporates, particularly when that change does not alter the meaning or overall impression of the domain name. See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (altering a letter in a domain name is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Western Alliance Bancorporation v. James Brandon, FA 1783001 (Forum June 5, 2018) (“Respondent’s <westernalliancebcorporation.info> domain name is confusingly similar to Complainant’s WESTERN ALLIANCE BANCORPORATION mark because it merely appends the gTLD ‘.info’ to a misspelled version of Complainant’s mark.”). Thus. the Panel concludes that the Complainant’s disputed domain name is confusingly similar to the MILWAUKEE Mark.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
In this case, Complainant has made such a prima facie case, yet Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint. Indeed, even if it had responded, given the facts of record, it seems implausible that Respondent would have been able to furnish availing arguments.
Specifically, Respondent is not commonly known by the disputed domain name, Complainant has not authorized, licensed, or otherwise permitted Respondent to use the MILWAUKEE Mark, and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because the disputed domain name resolves to a site where there are pay-per-click sponsored links. Use of a disputed domain name that is confusingly similar to a complainant’s mark to resolve to a pay-per-click website is not a use indicative of rights or legitimate interests per Policy ¶ 4(c)(i) or (iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Alternatively, Respondent also uses the disputed domain name to distribute malware to unsuspecting Internet users who arrive at the resolving website.
Using a disputed domain name to distribute malware is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”).
Finally, with the exception of the use of the homoglyph “rn” instead of the letter “m”, and the addition of the generic term “tool”, the composition of the disputed domain name is confusingly similar to the Complainant’s Mark, carrying a high risk of implied affiliation with the Complainant. Such use cannot constitute fair use by Respondent as the disputed domain name effectively suggests sponsorship by the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), 3.0, section 2.5.1. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
First, the Panel finds that Respondent registered and was using the disputed domain name in bad faith. Using a disputed domain name to feature unrelated pay-per-click hyperlinks can demonstrate a respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (finding Respondent uses the domain names to point to a site which offers links related to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”).
Second, the Panel finds that Respondent was using the disputed domain name in bad faith as Respondent was distributing malware on the disputed domain name’s resolving webpage. Registering a disputed domain name to divert Internet users to a resolving webpage that distributes malware is evidence of bad faith under Policy ¶ 4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that a disputed domain name which resolves to a landing page that distributes malware to Internet users’ computers demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv)).
Third, the Panel concludes that Respondent acted in bad faith under Policy ¶ 4(b)(iv) by typosquatting, as Respondent uses a confusingly similar, misspelled disputed domain name to falsely indicate an association with the Complainant. Here, Respondent created a likelihood of confusion with Complainant and its MILWAUKEE Mark by registering a disputed domain name that incorporates that mark, with the exception of using the homoglyph “rn” instead of the letter “m”, an example of typosquatting. Respondent’s use of typosquatting when registering and using the disputed domain name is demonstrative of Respondent’s bad faith registration and use. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”).
Finally, the use of typosquatting in the disputed domain name also demonstrates that the Respondent had actual knowledge of the Complainant’s Mark when registering the disputed domain name. A respondent’s use of typosquatting to create a confusingly similar domain name may demonstrate a respondent’s actual knowledge of a complainant’s rights to the mark per Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“[I]t is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). The Panel therefore concludes that it strains credulity to believe that Respondent had not known of the Complainant or its MILWAUKEE Mark when registering the disputed domain name and chose to misspell it and add the generic term “tool” to deceive Internet users.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rnilwaukeetool.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: April 12, 2021
[i] In orthography and typography, a homoglyph is one of two or more graphemes, characters, or glyphs with shapes that appear identical or very similar to another letter.
[ii] This misspelling is an example of typosquatting, a situation in which a disputed domain name includes a misspelled registered trademark.
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