DECISION

 

Illinois Tool Works Inc. v. Kam Yong

Claim Number: FA2403002088724

 

PARTIES

Complainant is Illinois Tool Works Inc. ("Complainant"), represented by Bradley L. Cohn, Esq. of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Kam Yong ("Respondent"), Singapore.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <itwinterns.com>, registered with Cosmotown, Inc.

 

PANEL

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 15, 2024; Forum received payment on March 18, 2024.

 

On March 20, 2024, Cosmotown, Inc. confirmed by e-mail to Forum that the <itwinterns.com> domain name is registered with Cosmotown, Inc. and that Respondent is the current registrant of the name. Cosmotown, Inc. has verified that Respondent is bound by the Cosmotown, Inc. 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 21, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2024 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@itwinterns.com. Also on March 21, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On April 11, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant and its predecessors-in-interest, for over a century have provided automotive, construction, food equipment, cleaning preparations, electronics, and welding products in the United States and worldwide. Due to Complainant's longstanding use and extensive promotion and use of the ITW mark, it represents an extremely valuable goodwill and is well recognized within Complainant's fields of interest. Complainant owns ITW marks, inter alia, based upon registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,158,408, registered May 19, 1998). The disputed domain name is confusingly similar to Complainant's mark because it fully incorporates the ITW mark, adding the generic term "interns" and the ".com" gTLD.

 

ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant's mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the disputed domain name to post pornographic content.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent registered the disputed domain name long after Complainant adopted, used, and registered the ITW mark, and after Complainant inadvertently had failed to renew the domain. Respondent had constructive notice of ITW's trademark rights in ITW as a result of Complainant's many trademark registrations. Respondent registered the disputed domain name to take advantage of the value and goodwill associated with the ITW mark. Respondent is using the disputed domain name to divert customers for commercial gain by charging to view certain pornographic content.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on February 8, 2024.

 

2. Complainant has established rights in the ITW mark based upon registration with the USPTO (e.g., Reg. No. 2,158,408, registered May 19, 1998).

 

3. The disputed domain name resolves to a website providing or promoting pornographic content.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 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.

 

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").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the ITW mark based upon registration with the USPTO (e.g., Reg. No. 2,158,408, registered May 19, 1998). Complainant has provided evidence of registration of the ITW mark with the USPTO. Therefore, the Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i).

 

Complainant contends the disputed domain name <itwinterns.com> is confusingly similar to Complainant's mark as it fully incorporates the ITW mark, merely adding the generic term "interns" and the ".com" gTLD. The addition of a generic and/or descriptive term and a gTLD to a complainant's mark does not sufficiently differentiate a disputed domain name from a mark under Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD."). The Panel thus finds that the disputed domain name is confusingly similar to the ITW mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed  domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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.").

 

Complainant contends that Respondent lacks rights or legitimate interests in the disputed  domain name since Respondent is not commonly known by the disputed  domain name and Complainant has not authorized or licensed to Respondent any rights in the ITW mark. WHOIS information may be used to determine whether a respondent is commonly known by a disputed  domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed  domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). In addition, a lack of authorization to use a complainant's mark may also indicate that a respondent is not commonly known by a disputed  domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as "Operi Manaha," and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The unmasked WHOIS information for the disputed  domain name lists the registrant as "Kam Yong." Therefore, the Panel finds Respondent is not commonly known by the disputed  domain name per Policy ¶ 4(c)(ii).

 

Complainant also argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to redirect users looking for Complainant and its offerings to an unrelated website providing or promoting pornographic content. Complainant provides a screenshot of the disputed domain name's resolving website displaying pornographic content. The Panel finds that the use of the disputed domain name to an unrelated website providing pornographic content does not create rights or legitimate interests under the Policy. See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA 1732665 (Forum July 7, 2017) (holding that "[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.").

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed  domain name.

 

Registration and Use in Bad Faith

Complainant asserts Respondent registered and uses the disputed domain name in bad faith as Respondent uses the disputed domain name to redirect users looking for Complainant and its offerings to an unrelated website providing or promoting pornographic content. The Panel recalls that Complainant provides a screenshot of the disputed domain name's resolving website displaying pornographic content. The Panel finds that Respondent uses the disputed domain name to provide or promote pornographic content for which Respondent would be expected to receive revenue. Therefore, the Panel concludes that such a use of the disputed domain name to attract users to a website hosting adult-oriented content constitutes bad faith registration and use of the disputed domain name per Policy ¶ 4(b)(iii) and (iv). See Dell Inc. v. hang'san z / zhang'san, FA 2057544 (Forum Sept. 13, 2023) ("There is no obvious explanation, and none has been provided by Respondent, for a party to register a domain name that consists of the registered DELL mark and a descriptive abbreviation and redirect it to a website offering adult content unrelated to any descriptive meaning of those terms absent any awareness of Complainant and its DELL mark. The Panel finds that Respondent registered and used the domain name in bad faith in order to resolve to a website that displays adult content for which Respondent would be expected to receive revenue. Use of a disputed domain name to attract users to a website hosting adult-oriented content may be evidence of bad faith per Policy ¶ 4(a)(iii).").

 

Complainant further contends that Respondent registered the disputed domain name with constructive knowledge of Complainant's mark long after Complainant adopted, used, and registered the ITW mark, and after Complainant inadvertently had failed to renew the domain. While constructive knowledge is insufficient for a finding of bad faith, nationwide prominence of a mark can demonstrate actual knowledge of a complainant's rights in a mark at registration and show bad faith under Policy ¶ 4(a)(iii). See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) ("Complainant contends that Respondent's knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant's mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii)."). The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain name that Respondent registered the disputed domain name with knowledge of Complainant's rights in the ITW mark, which constitutes bad faith registration per Policy ¶ 4(a)(iii).

 

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 <itwinterns.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: April 14, 2024