Illinois Tool Works Inc. v. Maple Roll
Leaf, Inc.
Claim Number: FA0508000547081
PARTIES
Complainant
is Illinois Tool Works Inc. (“Complainant”)
represented by Seth Rose, of Leydig, Voit & Mayer, Ltd. Two Prudential Plaza, Suite 4900,
Chicago, IL, 60601. Respondent is Maple Roll Leaf, Inc. (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <itwfoil.com> and <maplerollleaf.com>, registered with Tucows 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.
Hon.
Nelson A. Diaz as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
24, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 25, 2005.
On
August 24, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the <itwfoil.com> and <maplerollleaf.com> domain names are registered with Tucows
Inc. and that the Respondent is the current registrant of the domain name. Tucows Inc. has verified that Respondent is
bound by the Tucows 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 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
14, 2005 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@itwfoil.com, postmaster@maplerollleaf.com by
e-mail.
A
timely Response was received and determined to be complete on September 14,
2005.
On
September 19, 2005, the Forum received Complainant’s Additional Submission in
Accordance With National Arbitration Forum Supplemental Rule 7.
On
September 26, 2005, the Forum Respondent’s Additional Response to Complainant’s
Additional Submission in Accordance With National Arbitration Forum
Supplemental Rule 7.
On September 27, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Honorable Nelson A. Diaz as Panelist. The Panel considered
all of the Parties’ submissions in reaching the opinion set forth below.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is a diversified manufacturing company and the parent company of ITW Foils. In 1990 Complainant acquired a Canadian
company, Maple Roll Leaf Co., Limited and with it all right, title, and
interest to the mark “MAPLE ROLL LEAF”.
Complainant asserts that it has trademark interests in the domain names
<itwfoil.com> and <maplerollleaf.com>, and that the disputed domain names are
identical and/or confusingly similar to Complainant’s mark. Complainant further asserts that Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services, nor is Respondent commonly known by either domain
name. Next, Complainant asserts that
the disputed domain names were registered and are being used by Respondent in
bad faith. Finally, Complainant asserts
that it did not abandon the mark “MAPLE ROLL LEAF” at any time, but in fact has
used the mark continuously since 1981.
B.
Respondent
Respondent
is a seller of hot stamp foils and hot stamp foil products, including
Complainant’s products. Prior to July
6, 2005 Respondent operated under the name JTW Products. As of July 6, 2005 Respondent changed its
name to Maple Roll Leaf, Inc. In
response to Complainant’s Complaint, Respondent does not contest Complainant’s
claim for the domain name <itwfoil.com>
and agrees to transfer ownership. With
regard to the domain name <maplerollleaf.com>,
Respondent argues that Complainant has abandoned use of the mark “MAPLE ROLL
LEAF” and that Respondent currently owns all right, title, and interest in the
mark “MAPLE ROLL LEAF” and consequently the domain name <maplerollleaf.com>. Respondent also asserts that it did not act
with bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
Inasmuch as Respondent does not contest
Complainant’s claim for the domain name <itwfoil.com>, the Panel need not analyze Complainant’s claim to
that domain name. See Malev Hungarian Airlines, Ltd. V. Vertical Axis, Inc., FA
212653 (Nat. Arb. Forum Jan. 13, 2004).
Complainant
asserts common law rights in the MAPLE ROLL LEAF mark. Complainant has used the MAPLE ROLL LEAF
mark in connection with its foil stamping products and services since
1981. The Panel finds that Complainant
has established common law rights pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001)
(“[O]n account of long and substantial use of [KEPPEL BANK] in connection with
its banking business, it has acquired rights under the common law.”).
In response to Complainant’s claims of
common law rights in the MAPLE ROLL LEAF mark, Respondent asserts that
Complainant has abandoned the MAPLE ROLL LEAF mark. The Panel finds Respondent’s bald assertions, unsupported by any
factual evidence, to be unpersuasive.
While Respondent asserts that Complainant’s principals instructed its
sales force to cease use of the MAPLE ROLL LEAF mark, Respondent presents no evidence
on this point. Further, this assertion
is directly contradictory to the sworn Declaration provided by
Complainant. In light of Complainant’s
uncontradicted evidence, the Panel has no choice but to find that Complainant
did not abandon Complainant’s common law rights to the MAPLE ROLL LEAF mark.
With the exception
of addition of the generic top-level domain “.com”, Respondent’s domain name is
identical to Complainant’s mark. The Panel finds
that the addition of a gTLD fails to distinguish the domain name from the
mark. See 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); see
also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding
that the top level of the domain name such as “.net” or “.com” does not affect
the domain name for the purpose of determining whether it is identical or
confusingly similar). Thus, the Panel
finds that the domain name is confusingly similar to the mark under Policy ¶
4(a)(i).
Once
Complainant makes a prima facie case in
support of its allegations, the burden shifts to Respondent to show that it
does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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”); cf. Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Complainant asserts that Respondent is
using the <maplerollleaf.com> domain
name, which is confusingly similar to Complainant’s MAPLE ROLL LEAF mark, to
operate a website that offers goods and services that directly compete with the
business in which Complainant engages.
The Panel finds that such competing use is neither a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) nor a legitimate noncommercial nor fair use pursuant to Policy ¶
4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat.
Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for
commercial benefit by diverting Internet users to a website that sold goods and
services similar to those offered by the complainant and thus, was not using
the name in connection with a bona fide offering of goods or services
nor a legitimate noncommercial or fair use).
Furthermore, Complainant
asserts that Respondent is not commonly known by the <maplerollleaf.com> domain name, as
Respondent has repeatedly changed the name under which it operates, most
recently in July 2005. The Panel finds
that Respondent lacks rights or legitimate interests pursuant to Policy ¶
4(c)(ii). See Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) the respondent is not a
licensee of the complainant; (2) the complainant’s prior rights in the domain
name precede the respondent’s registration; (3) the respondent is not commonly
known by the domain name in question); see also Am. Online, Inc. v. World
Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002)
(finding that the respondent was not commonly known by <aolcamera.com> or
<aolcameras.com> because the respondent was doing business as “Sunset
Camera” and “World Photo Video & Imaging Corp.”).
Complainant
contends that Respondent is using the <maplerollleaf.com>
domain name, which is identical to Complainant’s mark, to operate a website
that offers competing goods and services.
The Panel finds that such competing use is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Surface Prot.
Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that,
given the competitive relationship between the complainant and the respondent,
the respondent likely registered the contested domain name with the intent to
disrupt the complainant's business and create user confusion); see also Lambros v. Brown, FA 198963 (Nat. Arb.
Forum Nov. 19, 2003) (finding that the respondent registered a domain name
primarily to disrupt its competitor when it sold similar goods as those offered
by the complainant and “even included Complainant's personal name on the
website, leaving Internet users with the assumption that it was Complainant's
business they were doing business with”).
Furthermore,
the Panel finds that the Respondent’s use of the identical <maplerollleaf.com>
domain name to offer competing goods and services will likely cause confusion
as to Complainant’s sponsorship of or affiliation with the resulting
website. The Panel concludes that
Respondent is taking advantage of such confusion to benefit commercially, which
is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”); see also Perot
Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding
bad faith where the domain name in question is obviously connected with the complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain).
Finally,
Complainant contends that Respondent registered the disputed domain name with
actual knowledge of Complainant’s rights in the trademark due to the obvious
similarity between the products and services offered through Respondent’s
website and the business in which complainant engages. The Panel finds that Respondent’s
registration of an identical domain name with such knowledge is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith,
when Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively”); see also Entrepreneur Media, Inc. v. Smith,
279
F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse."); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr.
24, 2002) (finding that because the link between the complainant’s mark and the
content advertised on the respondent’s website was obvious, the respondent
“must have known about the Complainant’s mark when it registered the subject
domain name”).
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 <itwfoil.com>
and <maplerollleaf.com>
domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________________
Hon. Nelson A. Diaz, Panelist
Dated: October 11, 2005
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